Small LV hotel alleges trademark infrigement by Hilton Hotels

Alana Roberts

Monday, Aug. 8, 2005 | 10:58 a.m.

This is a tale of two Conrads.

On the one hand, there's the Conrad Hotel, a two-story, 30-room downtown hotel at S. 7th Street and Carson Avenue which has operated since 1969 and offers weekly rentals for about $120.

On the other, is a planned $350 million hotel/condominium project, part of which bears the Conrad Hotel name, the luxury brand of the Hilton Hotels Corp.

The similarity has caused confusion among customers looking to make reservations for the Hilton Hotels Corp.'s Conrad Hotel and instead end up calling the smaller Conrad Hotel, said Liko Smith, one of the smaller hotel's owners.

As a result a federal lawsuit was filed by the Genevieve Ramirez Trust, the entity that owns the existing Conrad Hotel. The lawsuit was filed on April 11; a counterclaim was filed by Hilton Hotels Corp. on May 25.

"It's simple," Smith said. "If you come into a city and you want to open a place called 'Jack's Coffee' and there's already a place called 'Jack's Coffee,' you either have to buy the rights to that name or locate somewhere else."

Kathy Shepard, a Hilton Hotels Corp. spokeswoman, along with lawyers for the company, declined to comment because of the pending litigation.

The Genevieve Ramirez Trust is named for Smith's mother-in-law, a trustee of the ownership group. She helps operate the hotel. Smith said the hotel is meant to provide Ramirez, 64, a place to work and a comfortable existence after she retires.

The luxury project is being developed by Majestic Resorts and includes a 378-suite Conrad Hotel and 286 luxury condominiums to be located just south of the Riviera on the Las Vegas Strip. The project is set for completion in December 2006.

The smaller Conrad Hotel offers daily, weekly and monthly room rentals. In the complaint, the trust alleges that it has the exclusive rights to the Conrad name in connection with hotel services in Nevada.

Smith said the hotel has had its name since 1969, and the lawsuit noted that the Conrad Hotel advertised in telephone directories as early as 1970.

According to Nevada Secretary of State records the trade name for the smaller Conrad Hotel was registered in July 2004. The lawsuit said Smith purchased the the smaller hotel from Seventh Street Hotel Company in 2000 and the ownership of the hotel was transferred to the trust in 2004.

The suit characterizes Hilton Hotels Corp.'s Conrad Hotel brand as a, "more powerful junior user of the names and marks Conrad Hotels and Conrad." The suit also said the confusion will cause customers to assume that the smaller Conrad Hotel is violating Hilton Hotels Corp.'s Conrad Hotel name.

Smith said before filing the lawsuit, he sent three letters to Conrad Hotels executives informing them that the trade name had been in continuous use and asking them to resolve the dispute. He said all three letters were ignored. The lawsuit alleged that Hilton Hotels Corp. has known about the smaller Conrad Hotel since April 2, 2004.

In the Hilton Hotels Corp.'s answer and counterclaim the company admits that the Genevieve Ramirez Trust did file an application for a trade name -- after learning the Hilton was planning on building a Conrad Hotel in Las Vegas in July 2004. The company also admitted that it received the three letters from Smith and failed to respond. The hotel giant denied some of Smith's other allegations such as the assertion that customers are confused about the two hotels and that the smaller Conrad has the exclusive right to the trade name.

Hilton Hotels Corp. also noted in its counter suit that through a subsidiary it co-owns federal trademark registrations for Conrad and Conrad International Hotels. Hilton Hotels Corp. also denies that the Genevieve Ramirez Trust has exclusive trademark rights to the Conrad name because it is a first name and is not descriptive.

Smith said Hilton Hotels Corp. ignored their letters because of the Genevieve Ramirez Trust's smaller size.

"If people think if there's a small-business person they don't have the money for a long, lengthy lawsuit," Smith said. "To us it's a matter of principal. They should have come to us first."

He said Hilton Hotels Corp. has expressed a willingness to settle the case out of court, which he said he is willing to do.

"I'm willing to mediate," Smith said. "I don't want to take it through a long, drawn-out trial. I'd rather sit down with somebody who's a human being and work it out."

Michael McCue, a trademark lawyer with the Lewis and Roca law firm, said the trust's lawsuit makes some strong points because it alleges that it has continuously operated using the Conrad name. He said it doesn't matter that the Hilton Hotel Corp. owns a federal trademark.

"The plaintiffs' claim has some merit," McCue said. "If someone is using the Conrad name for hotel services in the same market then that's a potential infringement."

However, he said the case could also hinge on whether or not the Hilton Hotels Corp. knew about the potential trade name infringement ahead of time.

"Whether they knew or not might affect whether an infringement was willful and whether damages may be awarded," McCue said.