Thank you for sharing!

Your article was successfully shared with the contacts you provided.
It will probably take a trial to decide whether the New York Stock Exchange’s registered logo can be co-opted by a Las Vegas casino. The 2nd U.S. Circuit Court of Appeals gave new life Monday to a claim by the exchange that its logo, a picture of the exchange’s building fa�ade bearing the words “New York Stock Exchange,” had been illegally usurped by the New York-New York Hotel and New York-New York Casino in Nevada. But the court, in New York Stock Exchange v. New York-New York Hotel, 99-9276, also upheld Southern District of New York Judge Miriam Goldman Cedarbaum’s decision granting the hotel summary judgment on several claims brought by the exchange. The replica of the exchange’s fa�ade that graces the New York-New York Casino’s gambling floor is near other signs reading “New York $lot Exchange,” a player’s club for frequent gamblers that is part of what the hotel terms its “financial district.” The $lot Exchange is only part of the hotel and casino’s larger setting including city streetscapes, the “Greenwich Village” food court, and large-scale replicas of the Statute of Liberty and the Brooklyn Bridge. Cedarbaum found that the casino did not infringe upon the exchange’s marks under the Lanham Act. She also found that the exchange could not prove its trademark was being “diluted” by the Casino, ruling that the logo was a “famous” mark that had acquired a secondary meaning and, therefore, could not be considered “distinctive,” under the Lanham Act. And the judge rejected a claim by the exchange that associating gambling with stock trading amounted to “tarnishment” under New York law. On the appeal to the 2nd Circuit, the NYSE argued that Cedarbaum erred in her consideration of the eight factors to be weighed in deciding whether a defendant’s mark is likely to cause confusion with a plaintiff’s trademark. The NYSE said the lower court ignored other facts in applying the eight-factor test outlined in Polaroid Corp. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). But writing for the court, Senior Judge Ralph K. Winter said Cedarbaum did not evaluate the Polaroid factors too narrowly. “The district court’s Polaroid analysis yielded the conclusion that the ‘obvious pun’ would not cause any confusion among consumers,” Winter said. “We agree.” The exchange also argued that New York-New York’s Web site and brochure advertising increased the chance that consumer’s might not comprehend the Casino’s modification of the NYSE mark. But Judge Winter said that the mark was so “obviously modified that any viewer would understand that the Casino was engaged in a parody or humorous play on words.” Besides, Winter said, the Web site and brochure advertisements “include other playful uses of the New York City theme that would further underline the obvious,” such as a Las Vegas showgirl dressed as the Statute of Liberty. ONE EXCEPTION The 2nd Circuit then agreed with Judge Cedarbaum that the NYSE’s marks, “with one exception” have “only acquired, rather than inherent, distinctiveness,” leaving them outside the protection of the Lanham Act. The one exception, he said, was the NYSE logo bearing a picture of the exchange’s fa�ade. “The district court concluded that NYSE’s architectural fa�ade was not distinctive because many other well-known buildings, such as the United States Supreme Court building and the Brooklyn Museum, employ a similar design,” Winter said. “We think that logic is flawed.” Applying the principle that a mark is arbitrary if there is no logical relationship whatsoever between the mark and the product on which it is used, Winter said “this principle seems applicable to the NYSE’s architectural logo.” “A stock exchange can be housed in any of a variety of buildings, and the combination of particular architecture with the New York Stock Exchange name might be found by a trier of fact to be rather arbitrary,” he said. “Such an image is certainly neither generic nor descriptive of a stock market.” Therefore, “because NYSE’s mark consisting of its architectural fa�ade and name is inherently distinctive, or so a trier of fact might find,” Winter said the court was remanding that dilution claim to the district court for further proceedings. The court then addressed Judge Cedarbaum’s dismissal of the exchange’s dilution claim for “tarnishment,” under New York law. Cedarbaum had granted summary judgment because the NYSE had already associated itself with gambling by listing gambling businesses on the exchange. But Winter said the “listing of companies relates solely to NYSE’s role as a pricing and financial monitoring intermediary, not as an associate engaged in the underlying commercial activity of listed firms.” While the casino wants to draw a humorous analogy between its business and that of the exchange, he said, the NYSE wants to tend a reputation for integrity and transparency, as well as being the medium for investments that are safer than gambling. “A reasonable trier of fact might therefore find that the Casino’s humorous analogy to its activities — deemed by many to involve odds stacked heavily in favor of the house — would injure NYSE’s reputation,” he said. “As we have stated before, ‘tarnishment is not limited to seamy conduct.’” Chief Judge John M. Walker and Judge Dennis Jacobs joined in the opinion. Representing the stock exchange were William R. Golden Jr. and Michelle M. Graham of New York’s Kelley Drye & Warren; and Joseph D. Garon and Doreen L. Costa of Houston-based Baker & Botts. Kenneth A. Plavan, Bruce J. Goldner and Scott D. Brown of Skadden, Arps, Slate, Meagher & Flom in New York, and Mark G. Tratos of Quirk & Tratos in Las Vegas represented the hotel.

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.