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Case 2:09-cv-01258-PMP-PAL Document 1 Filed 07/13/2009 Page 1 of 6

1 Mark G. Tratos (Bar No. 1086)


Peter H. Ajemian (Bar No. 9491)
2 GREENBERG TRAURIG, LLP
3773 Howard Hughes Parkway
3 Suite 400 North
Las Vegas, Nevada 89169
4 Telephone: (702) 792-3773
Facsimile: (702) 792-9002
5
Counsel for Plaintiff
6

7
8 UNITED STATES DISTRICT COURT
9 DISTRICT OF NEVADA
10 WYNN RESORTS HOLDINGS, LLC a
Nevada limited liability company, Case No.
11
Plaintiff, COMPLAINT FOR DECLARATORY
Suite 400 North, 3773 Howard Hughes Parkway

12 RELIEF
v.
Las Vegas, Nevada 89109

13
Greenberg Traurig, LLP

(702) 792-9002 (fax)

NYLO HOTELS, LLC a Delaware limited


(702) 792-3773

14 liability company,

15 Defendant.

16
17 Plaintiff Wynn Resorts Holdings, LLC (“Wynn”), for its Complaint against Defendant
18 NYLO Hotels, (“NYLO”), hereby alleges as follows:
19 NATURE OF CLAIMS
20 1. Wynn seeks a declaratory judgment that its use of the XS trademark for
21 restaurant, bar, nightclub, entertainment or other services or goods has not infringed or
22 otherwise violated NYLO’s alleged trademark or other rights in XS for hotel, hotel
23 management, restaurant, bar, spa or any other services or goods.
24 2. Wynn further seeks damages, attorneys’ fees, costs, and preliminary and
25 permanent injunctive relief.
26 JURISDICTION
27 3. This case arises under the Federal Declaratory Judgments Act, 28 U.S.C. §§
28 2201 and 2202, and the Lanham Act, 15 U.S.C. § 1051 et seq., related to trademark
1.
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1 infringement, unfair competition, and/or deceptive trade practices.

2 4. This Court has jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331

3 and 1338.

4 5. This Court has personal jurisdiction over NYLO because it: (a) attempted to

5 contract with Wynn, whom they knew was located in the State of Nevada, by offering

6 licensing opportunities; (b) solicit or have solicited business in the State of Nevada; and (c)

7 have sent threatening correspondence to Wynn in the State of Nevada threatening to take

8 action if Wynn does not comply with their demands.

9 6. NYLO has created an actual case and controversy and a reasonable

10 apprehension of litigation by, among other things, sending letters threatening to file suit

11 against Wynn on April 22, 2009 and May 28, 2009.


Suite 400 North, 3773 Howard Hughes Parkway

12 THE PARTIES
Las Vegas, Nevada 89109

13 7. Plaintiff, WYNN RESORTS HOLDING, LLC is a limited liability company


Greenberg Traurig, LLP

(702) 792-9002 (fax)


(702) 792-3773

14 doing business in the State of Nevada.

15 8. Defendant, NYLO HOTELS, LLC, upon information and belief is a Delaware

16 limited liability company with a principal place of business at 260 Peachtree Street, NW,

17 Suite 2301, Atlanta, Georgia 30303.

18 ALLEGATIONS COMMON TO ALL COUNTS


19 9. Plaintiff Wynn Resorts Holdings, LLC, is the sole member of Wynn Las

20 Vegas, LLC, a Nevada limited liability company that owns and operates the “Wynn Las

21 Vegas” resort hotel casino in Las Vegas, Nevada.

22 10. The “Wynn” name and mark, as seen in “Wynn Resorts” and “Wynn Las

23 Vegas” is attributed to the President and Chief Executive Officer of Wynn Resorts, Stephen

24 A. Wynn (“Mr. Wynn”), who is world-renowned as a creator, developer and operator of

25 destination casino resorts.

26 11. Before “Wynn Las Vegas,” Mr. Wynn was responsible for conceiving,

27 developing and managing several prominent resort hotel casinos in Las Vegas, namely

28 “Golden Nugget”, “The Mirage”, “Bellagio”, and “Treasure Island”, as well as the “Golden
2.
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1 Nugget” in Atlantic City, New Jersey, “Golden Nugget” in Laughlin, Nevada and “Beau

2 Rivage” in Biloxi, Mississippi.

3 12. Mr. Wynn and his related companies have also developed and built a highly

4 publicized casino resort in Macau called “Wynn Macau,” and built an enormous new resort

5 adjacent to the “Wynn Las Vegas” resort called “Encore Wynn Las Vegas” (hereinafter

6 “Encore”).

7 13. Wynn has spent a significant amount of time, resources and money in

8 developing and promoting a restaurant, bar, nightclub and indoor and outdoor

9 entertainment venue at Encore under the XS mark.

10 14. In furtherance of the development and promotion of Wynn’s XS mark, and to

11 protect its trademark rights nationally, on February 4, 2008 Wynn filed two federal
Suite 400 North, 3773 Howard Hughes Parkway

12 trademark applications for the marks XS as follows: (1) U.S. Application Serial No.
Las Vegas, Nevada 89109

13 77/388300 for XS in International Class 41 for “special event planning; arranging and
Greenberg Traurig, LLP

(702) 792-9002 (fax)


(702) 792-3773

14 conducting nightclub entertainment events; arranging for reservations for shows and other

15 entertainment events; night club services;” and (2) U.S. App. Serial No. 77/388304 for XS

16 in International Class 43 for “restaurant and bar services; cocktail lounges.” (See Printouts

17 of Electronic Records of Federal Trademark Application Serial Nos. 77/388300 and

18 77/388304, attached hereto as Exhibit 1.)

19 15. Additionally, to further develop and promote Wynn’s XS mark, on August 19,

20 2008 Wynn acquired through assignment prior U.S. Registration No. 2,158,323 for the

21 mark XS in International Classes 41 for “entertainment in the nature of indoor and outdoor

22 amusement complexes” and 42 for “restaurant services, namely, restaurant and bar

23 services” (the “XS Registration”) from XS Entertainment, Inc., Wynn’s predecessor in

24 interest in the XS Registration. (See Printouts of Electronic Records of Federal

25 Registration No. 2,158,323, attached hereto as Exhibit 2.)

26 16. On November 28, 2008, Wynn successfully renewed the XS Registration in

27 its name, and as such, through its predecessor in interest Wynn’s date of first use of the XS

28
3.
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1 mark in commerce for the identified services relates back December 22, 1996. (See id.)

2 That registration is now incontestable.

3 17. NYLO filed an “Intent to Use” Federal Trademark Application for the mark XS

4 in International Classes 35, 43 and 44 for, hotel, bar and restaurant services, among

5 various other services, on February 6, 2007 (“NYLO’s XS Mark”). (See Printout of

6 Electronic Records of Federal Trademark Application Serial No. 77/100257, attached

7 hereto as Exhibit 3.)

8 18. Because NYLO’s XS mark was filed on an “Intent to Use” basis, there is no

9 first date of use of the mark in commerce, and upon information and belief, to date NYLO

10 has not begun using its XS mark in commerce for any of the services identified in its

11 Federal Trademark Application Serial No. 77/100257. (See id.)


Suite 400 North, 3773 Howard Hughes Parkway

12 19. On April 22, 2009, NYLO sent a cease and desist letter to Wynn, claiming
Las Vegas, Nevada 89109

13 exclusive rights in the XS mark for the identified services and demanding that Wynn
Greenberg Traurig, LLP

(702) 792-9002 (fax)


(702) 792-3773

14 “immediately cease [its] use of ‘XS’ to avoid any conflict with NYLO, or contract NYLO’s

15 General Counsel…to discuss licensing opportunities.” (See Correspondence from David E.

16 Rogers, dated April 22, 2009, attached hereto as Exhibit 4.)

17 20. By and through the undersigned counsel, Wynn responded to NYLO’s April

18 22, 2009 correspondence by teleconference with NYLO’s counsel David E. Rogers, Esq.,

19 and directed his attention to Wynn’s valid ownership of its prior XS Registration and its

20 actual use of the XS mark in commerce at Encore. Mr. Rodgers responded by requesting

21 additional time to investigate Wynn’s assertion of priority of use of the XS mark, which

22 request was granted by the undersigned.

23 21. On May 28, 2009, after having ample opportunity to investigate the facts

24 surrounding Wynn’s ownership of the XS Registration and priority of use of the XS mark,

25 NYLO sent correspondence to Wynn’s counsel, again demanding that Wynn cease all use

26 of the XS mark, or enter into a licensing agreement with NYLO, and basing its second

27 demand on the allegations that Wynn’s XS Registration was invalid because (1) its renewal

28 was wrongly accepted by the United States Patent and Trademark Office; (2) the original
4.
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1 application was impermissibly broadened; and (3) the mark had been abandoned. (See

2 Correspondence from David E. Rogers, dated May 28, 2009, attached hereto as Exhibit 5.)

3 22. Based upon NYLO’s allegations that Wynn’s XS Registration is invalid, NYLO

4 has asserted that Wynn only has common law trademark rights in the XS mark stemming

5 from its actual use of the mark in commerce at Encore beginning in January of 2009, and

6 NYLO claims that “[t]he filing date of NYLO’s ‘XS’ application predates these common-law

7 rights and, when NYLO’s use commences, it would clearly have the right to enjoin Wynn’s

8 use.” (See id.)

9 23. Due to NYLO’s threats and demands against Wynn, Wynn has a reasonable

10 apprehension that NYLO will file legal action against it.

11 CLAIMS FOR RELIEF


Suite 400 North, 3773 Howard Hughes Parkway

12 FIRST CLAIM FOR RELIEF


Las Vegas, Nevada 89109

13 Declaration as to Rights Pursuant to 28 U.S.C. § 2201 and Trademark Infringement


Greenberg Traurig, LLP

(702) 792-9002 (fax)


(702) 792-3773

14 under The Lanham Act, 15 U.S.C. § 1125(a)


15 24. Wynn incorporates the allegations in the preceding paragraphs as if set forth

16 fully herein.

17 25. Declaratory relief actions are available when an actual case or controversy

18 exists between two parties.

19 26. Beginning on April 22, 2009, NYLO has asserted that Wynn’s use of the XS

20 mark constitutes an infringement of trademark rights allegedly held by NYLO in violation of

21 The Lanham Act, and demanding, inter alia, that Wynn immediately cease and desist all

22 use of the XS mark and similar variations thereof.

23 27. Wynn maintains that its use of the XS mark is lawful and does not infringe

24 upon the rights of NYLO.

25 28. Therefore, an actual case or controversy exists between the parties.

26 29. Wynn has no adequate remedy at law under administrative law and before

27 the United States Patent and Trademark Office.

28 30. NYLO’s assertions that Wynn is violating its legal rights irreparably injures
5.
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1 and adversely affects Wynn and, unless prevented by this Court, will continue to so affect

2 Wynn's business and the immense investment it has made in the XS mark and attendant

3 good will. To resolve the legal and factual questions raised by NYLO and to afford relief

4 from the uncertainty and controversy which NYLO’s assertion has precipitated, Wynn is

5 entitled to a declaratory judgment of its rights under 28 U.S.C. §§ 2201-02. Wynn’s use of

6 the XS mark is not in violation of any rights NYLO might have pursuant to 15 U.S.C. §

7 1125(a).

8 31. Wynn hereby seeks a judicial declaration of its continued right to use the XS

9 mark free and clear of interference or harassment by NYLO and without any obligation or

10 liability to NYLO.

11 32. Wynn additionally seeks reimbursement of its attorneys’ fees and costs from
Suite 400 North, 3773 Howard Hughes Parkway

12 NYLO associated with bringing the action at hand.


Las Vegas, Nevada 89109

13 PRAYER FOR RELIEF


Greenberg Traurig, LLP

(702) 792-9002 (fax)


(702) 792-3773

14 WHEREFORE, Wynn respectfully requests that the Court grant the following relief:

15 A. A determination and adjudication of the rights and liabilities of the parties with

16 regard to the XS marks as they relate to this dispute;

17 B. A declaration that Wynn’s use of the XS mark is lawful and does not infringe

18 upon any rights of NYLO;

19 C. A permanent injunction prohibiting NYLO from further vexing conduct or

20 harassment of Wynn;

21 D. An award of interests, costs, and attorneys’ fees incurred by Wynn in

22 prosecuting this action; and

23 E. All other relief to which Wynn is entitled.

24 GREENBERG TRAURIG, LLP

25 /s/ Mark G. Tratos


26 Mark G. Tratos (Bar No. 1086)
Peter H. Ajemian (Bar. No. 9491)
27 3773 Howard Hughes Pkwy, Suite 400N.
Las Vegas, NV 89169
28
6.
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EXHIBIT 1
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United States Patent and Trademark Office

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Word Mark XS
Goods and IC 041. US 100 101 107. G & S: special event planning; arranging and conducting nightclub
Services entertainment events; arranging for reservations for shows and other entertainment events;
night club services
Standard
Characters
Claimed
Mark Drawing
(4) STANDARD CHARACTER MARK
Code
Serial Number 77388300
Filing Date February 4, 2008
Current Filing
1B
Basis
Original Filing
1B
Basis
Owner (APPLICANT) Wynn Resorts Holdings, LLC LTD LIAB CO NEVADA 3131 Las Vegas Blvd.
South Las Vegas NEVADA 89109
Attorney of Record Lauri S. Thompson
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead
LIVE
Indicator

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Word Mark XS
Goods and Services IC 043. US 100 101. G & S: Restaurant and bar services; Cocktail lounges
Standard Characters
Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 77388304
Filing Date February 4, 2008
Current Filing Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) Wynn Resorts Holdings, LLC LTD LIAB CO NEVADA 3131 Las Vegas Blvd.
South Las Vegas NEVADA 89109
Attorney of Record Lauri S. Thompson
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

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EXHIBIT 2
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Typed Drawing

Word Mark XS
Goods and IC 041. US 100 101 107. G & S: entertainment in the nature of indoor and outdoor amusement
Services complexes. FIRST USE: 19961222. FIRST USE IN COMMERCE: 19961222

IC 042. US 100 101. G & S: restaurant services, namely, restaurant and bar services. FIRST
USE: 19961222. FIRST USE IN COMMERCE: 19961222
Mark Drawing
(1) TYPED DRAWING
Code
Serial Number 75193932
Filing Date November 6, 1996
Current Filing
1A
Basis
Original Filing
1B
Basis
Published for
February 24, 1998
Opposition
Change In
CHANGE IN REGISTRATION HAS OCCURRED
Registration
Registration
2158323
Number
Registration Date May 19, 1998
Owner (REGISTRANT) XS ENTERTAINMENT INC. CORPORATION DELAWARE 877 Supreme Drive
Bensenville ILLINOIS 60106

(LAST LISTED OWNER) WYNN RESORTS HOLDINGS, LLC LIMITED LIABILITY COMPANY
NEVADA 3131 LAS VEGAS BLVD. SOUTH LAS VEGAS NEVADA 89109
Assignment
ASSIGNMENT RECORDED
Recorded
Attorney of
Peter H. Ajemian
Record
Type of Mark SERVICE MARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20081128.
Renewal 1ST RENEWAL 20081128
Live/Dead
LIVE
Indicator

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EXHIBIT 3
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United States Patent and Trademark Office

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Word Mark XS
Goods and IC 035. US 100 101 102. G & S: Providing facilities for business meetings; Managing and operating
Services hotels, resort hotels and business conference centers; Franchising, namely, offering technical
assistance in the establishment and/or operation of hotels and resorts; Offering technical assistance in
the establishment and/or operation of restaurants; On-line business directories featuring hotels, resorts,
restaurants, bars and spas; Restaurant franchising

IC 043. US 100 101. G & S: Hotels; Resort Hotels; Resort Lodging services; Motels; Tourist homes;
Reservations for hotel rooms; Providing travel lodging information services and travel lodging booking
agency services for travelers; Travel agency services, namely, making reservations and booking for
temporary lodging; Hotel, bar and restaurant services; Preparation of food and beverages; Serving of
food and drink/beverages; Cafe Restaurants; Delicatessens; Restaurant reservation services; Self
service restaurants; Carry out/take out restaurants; Bar services; Coffee house and snack-bar services;
Wine bars; Providing convention facilities; Provision of conference, exhibition and meeting facilities;
Providing banquet and social function facilities for special occasions; Catering for the provision of food
and beverages; Arena services, namely, providing facilities for sports, concerts, conventions and
exhibitions; Health resort services, namely, providing food and lodging that specialize in promoting
patron's general health and well being

IC 044. US 100 101. G & S: Health spa services for health and wellness of the body and spirit offered
at a health resort; Health spa services, namely, cosmetic body care services; and providing sauna, hot
tub and Turkish bath facilities
Standard
Characters
Claimed
Mark
Drawing (4) STANDARD CHARACTER MARK
Code
Serial
77100257
Number
Filing Date February 6, 2007
Current
1B
Filing Basis
Original

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Case 2:09-cv-01258-PMP-PAL Document 1-2
Filing Basis 1B
Filed 07/13/2009 Page 11 of 17
Published
for July 31, 2007
Opposition
Owner (APPLICANT) NYLO Hotels, LLC LIMITED LIABILITY COMPANY DELAWARE 260 Peachtree Street,
NW, Suite 2301 Atlanta GEORGIA 30303
Attorney of
David E. Rogers
Record
Type of
SERVICE MARK
Mark
Register PRINCIPAL
Live/Dead
LIVE
Indicator

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EXHIBIT 4
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