Kramer Levin’s IP Department has obtained an important summary judgment ruling, for its clients Orient-Express Hotels (“OEH”) and Hotel Cipriani SrL (“HC”), in trademark opposition proceedings before the U.S. Patent and Trademark Office (“USPTO”). Asserting the world famous mark and name “HOTEL CIPRIANI”, OEH and HC (the proprietor of the renowned Hotel Cipriani in Venice, Italy) have thus prevented the rival Cipriani family from registering “CIPRIANI” as a trademark in the U.S.
The Kramer Levin team consisted of George Snyder, Ted Mlynar, Carole Klinger and Ashley Roberts.
The ruling is a watershed in the long-running battle by OEH/HC to prevent the Cipriani family companies, headed by Arrigo Cipriani, from misappropriating “CIPRIANI” in the hospitality industry. In granting summary judgment, the USPTO has recognized that the Cipriani companies are subject to a broad prohibition against procuring registration of “CIPRIANI” alone in the U.S. This may pave the way for favorable rulings in companion legal action outside the U.S. as well.
The current opposition proceedings grow out of a 1997 litigation-settlement in which various Cipriani companies, and Arrigo Cipriani personally, agreed to cease use of “CIPRIANI” by itself in the U.S. Despite that settlement agreement, in 2005 at least one of the Cipriani companies filed new applications to register the term “CIPRIANI” in the USPTO. OEH and HC lodged oppositions, alleging (inter alia) that the Cipriani companies are contractually estopped from registering CIPRIANI alone by the settlement agreement.
On motion for summary judgment by OEH and HC, the USPTO held that:
[The] settlement agreement ... [contains] a very plain restriction of applicant’s [Cipriani company’s] right to use the term CIPRIANI, and flatly prohibits applicant’s use of the term CIPRIANI without the identity of the product or service or other descriptive term or name. We see no basis in the words of the agreement for applicant’s contention that it may use the term alone without opposers’ consent. Based on our construction of the settlement agreement, applicant is barred from use of the term CIPRIANI alone. Because applicant may not seek registration of a mark which it cannot use, opposers are entitled to judgment on its contract estoppel claim.