Caesars World, Inc. v. Milanian (247 F. Supp. 2d 1171, 2003)

United States District Court for the District of Nevada 2003-02-19

Citations

Full opinion text

FINDINGS OF FACT, CONCLUSIONS OF LAW AND JUDGMENT

HUNT, District Judge.

This matter having come on for trial before the bench on January 21-23, 2003, and the Court having heard the testimony of witnesses and received evidence, the Court makes the following Findings of Fact, and Conclusions of Law, and enters Judgment thereon as follows:

FINDINGS OF FACT

A. The Parties

1. Plaintiff Caesars World, Inc. (“CWI”) is a Florida corporation, with its principal place of business at 3930 Howard Hughes Parkway, Las Vegas, Nevada 89109.

2. Plaintiff Park Place Entertainment Corporation (“PPE”) is a Delaware corporation, with its principal place of business at 3930 Howard Hughes Parkway, Las Vegas, Nevada 89109. CWI is a wholly owned subsidiary of PPE.

3. Defendant Cyrus Milanian is an individual domiciled in New Jersey who transacts business in the State of Nevada.

4. Defendant The New Las Vegas Development Company, LLC, is a Nevada limited liability corporation.

B. Plaintiffs Claims For Relief

5. Plaintiffs’ initial complaint included five causes of action. Count One seeks declaratory judgment that Plaintiffs are not infringing any rights of Defendants by virtue of their use of the mark COLOSSEUM for a new entertainment venue at Caesars Palace in Las Vegas.

6. Count Two alleges that Defendants are infringing Plaintiffs’ rights in their COLOSSEUM common law trademark in violation of the Lanham Act.

7. Count Three alleges that Defendants are infringing Plaintiffs’ rights in their COLOSSEUM common law trademark in violation of the Nevada law.

8. Count Four alleges that Defendants are violating Plaintiffs’ rights in their EMPIRE family of marks, in violation of the Lanham Act.

9. Count Five alleges that Defendants are violating Plaintiffs’ rights in their EMPIRE family of marks, in violation of Nevada law.

10. At the conclusion of Plaintiffs’ case the Court granted Plaintiffs’ motion to amend the Complaint to conform to the evidence under Rule 15(b) of the Federal Rules of Civil Procedure. (Tr. 473-474). Plaintiffs are filing an Amended Complaint, which adds Count Six seeking a declaratory judgment that Plaintiffs have not violated any claims Defendant Milani-an may have either for breach of contract, theft of trade secret, misappropriation or conversion, based on Milanian’s purported 1996 proposal to CWI with respect to the construction at Caesars Palace of a replica of the ancient Roman Coliseum. While the Amended Complaint still includes the claims against NLVD (Counts 1-5), NLVD has been dismissed from this action.

C.The Plaintiffs

11. PPE is the world’s largest gaming company owning, managing or having an interest in 27 properties operating under various trademarks including the famous CAESARS, BALLY’S, GRAND CASINO, PARIS, and FLAMINGO brands. (Tr. 49). In 1999, PPE acquired CWI in a transaction that included Caesars Palace, located in Las Vegas, Nevada, CWI’s trademarks, and other CWI assets. (Tr. 51). In addition to gaming services, both PPE and CWI provide hotel and restaurant services, convention facilities and services, sporting events, concerts, and other entertainment to the public. (Tr. 66).

12. Plaintiffs’ premiere property is Caesars Palace in Las Vegas, Nevada, which opened on August 6, 1966. (Tr. 49, 51). Caesars Palace has an opulent Roman-Grecian theme, with marble statuary, and stylized designs that reflect the theme, and facilities that bear the names associated with ancient Rome and Greece. (Tr. 51).

13. CWI is the owner of several marks registered with the United States Patent and Trademark Office (“USPTO”), relating to this Roman-Grecian theme, including, but not limited to: CAESARS (Reg. No. 0954684-incontestable (Ex. 463-K); Reg. No. 0983525-incontestable (Ex. 463-N); Reg. No. 1527770-incontestable (Ex. 463-AL); Reg. No. 1988107-incontestable (Ex. 463-BB)), CAESARS (stylized) (Reg. No. 1001363-incontestable (Ex. 463-0); Reg. No. 0954637-incontestable (Ex. 463-AC); Reg. No. 1527771-incontestable (Ex. 463-AM)), CAESARS PALACE (Reg. No. 0907693-incontestable (Ex. 463-A), Reg. No. 0951262-incontestable (463-T); Reg. No. 0963820-incontestable (Ex. 463-R); Reg. No. 0963656-ineontestable (Ex. 463-U); Reg. No. 1091551-incontestable (Ex. 463-AR)), CAESARS PALACE (stylized) (Reg. No. 0907696-incontestable (Ex. 463-D); Reg. No. 0968212-incontestable (Ex. 463-V); Reg. No. 1090494-incontestable (Ex. 463-F); Reg. No. 1004058-incontestable (Ex. 463 — S); Reg. No. 1158035-incontestable (Ex. 463-AG)), I, CAESAR (Reg. No. 0907694-incontestable (Ex. 463-B); Reg. No. 0966734-incontestable (Ex. 463-W)), CIRCUS MAXIMUS (Reg. No. 0965251-incontestable (Ex. 463-E)), THE PALACE (Reg. No. 1096310 — incontestable (Ex. 463-G); Reg. No. 1128428-incon-testable (Ex. 463-M)), A CAESARS WORLD RESORT (Reg. No. 1063525— incontestable (Ex. 463-H)), Roman Edging Paper Design (Reg. No. 0947706-incon-testable (Ex. 463-1); Reg. No. 1194868-incontestable (Ex. 463-AJ)), CAESARS WORLD (Reg. No. 0995419-incontestable (Ex. 463-Y)), CAESARS WORLD (stylized) (Reg. No. 0995418-incontestable (Ex. 463-X)), THE PALACE COURT (Reg. No. 1128000-incontestable (Ex. 463-AD)), CLEOPATRA’S BARGE (Reg. No. 0979106-incontestable (Ex. 463-P); Reg. No. 1138113-incontestable (Ex. 463-AF)), SPANISH STEPS (Reg. No. 1146922-in-contestable (Ex. 463-AH)), CAESARS TAHOE (Reg. No. 1263220-incontestable (Ex. 463-AK); Reg. No. 1191413-incontestable (Ex. 463-AW)), CAESARS TAHOE (stylized) (Reg. No. 1186958-incontestable (Ex. 463-AU); Reg. No. 1201555-incontestable (Ex. 463-AV); Reg. No. 1201511-incon-testable (Ex. 463-AX)), CAESARS WOMAN (Reg. No. 1532553-incontestable (Ex. 463-AQ)), CAESARS WOMAN (stylized) (Reg. No. 1531548 — incontestable (Ex. 463-AN)), CAESARS MAN (Reg. No. 1531549 — incontestable (Ex. 463-AO)), CAESARS MAN (stylized) (Reg. No. 1538771 — incontestable (Ex. 463-AP)), CAESARS PALACE LAS VEGAS — NEVADA with Grape Girl Design (Reg. No. 1168663 — incontestable (Ex. 463-AS)), TOGA TEDDY (Reg. No. 1676542 — incontestable (Ex. 463-AT)), CAESARS MAGICAL EMPIRE (Reg. No. 2630525 (Ex. 463-AY)), EMPERORS CLUB (Reg. No. 1743663 — incontestable (Ex. 463-AZ)), FERENTINA (Reg. No. 2022361 — incontestable (Ex. 463-BA)), EMPERORS EVERYDAY GIVEAWAY (Reg. No. 1837096 — incontestable (Ex. 463-BQ), THE FORUM SHOPS AT CAESARS (Reg. No. 1829004 — incontestable (Ex. 463-BD)) LA PIAZZA (Reg. No. 1649800 — incontestable (Ex. 463-BE)), and CAESARS PALACE AT SEA (Reg. No. 1663829 — incontestable (Ex. 463-BF)), Grape Girl Design (Reg. No. 0884317— incontestable (Ex. 463 — C)), PALACE RESERVE (Reg. No. 1644190-incontestable (Ex. 463-AB)).

14. These registered trademarks are used in interstate commerce, are valid and all but one, CAESARS MAGICAL EMPIRE, is incontestable. (Tr. 264). Because of CWI’s outstanding reputation in the hospitality industry and the millions of dollars dedicated to its promotion, the CAESARS name is among the most famous in the industry and is world-renowned. (Tr. 119).

D. CWI’s COLOSSEUM Mark

15. When it opened in August 1966, CAESARS PALACE included 680 guest rooms, a 980-seat showroom branded as CIRCUS MAXIMUS, a GARDEN OF THE GODS pool-spa complex, and a 35,-000 square foot convention center called THE COLOSSEUM Convention Complex. (Tr. 51). Newspaper articles describing the opening of CAESARS PALACE property included references to THE COLOSSEUM convention center. (Tr. 54). At the time of the opening, Caesars Palace produced and distributed brochures and press releases that identified THE COLOSSEUM convention center. The materials use the same stylistic devices to distin- ■ guish THE COLOSSEUM (e.g. Italics or all caps) as used to distinguish designations such as CAESARS PALACE or CIRCUS MAXIMUS that would become federally registered. (Tr. 60-61, 73-74, Ex. 124, 126). Those brochures and press releases were circulated in interstate commerce. This COLOSSEUM convention center in no way resembled the ancient Roman Coliseum. It did not have elevated seating and was rectangular in shape. (Tr. 51-53; Ex. 115)

16. THE COLOSSEUM has been used to designate many different services offered in relation to the convention center at Caesars Palace. (Ex. 124). Based on the testimony and exhibits admitted at trial, it is clear that these services include entertainment services such as headliner acts, televised events, live boxing and other sports events. (Tr. 99-103). THE COLOSSEUM was also used in connection with casino and gaming services such as annual slot tournaments and sports betting services. (Tr. 98-101, 105-108, Ex. 118, 442-M, 442-N, 442-L).

17. For instance, Exhibit 121 and 122 are examples of a ticket and invitation sent to select people on CWI’s mailing list promoting its Super Bowl party. Such Super Bowl parties were held, with perhaps one or two exceptions, each year in THE COLOSSEUM facility and featured gaming services. (Tr. 98-100, Ex. 121, 122). In order to comply with Nevada State gaming regulations, one portion of THE COLOSSEUM facility was specially remodeled to include overhead cameras and other security to comply with Nevada gaming regulations. (Tr. 98). THE COLOSSEUM brand was also used in connection with food and banquet services. (Tr. 96-102, Tr. 104-108 Ex. 121, 122, 442-A, 118, 442-L, 442-M, 442-N). Since August of 2001, Plaintiffs have also offered for sale coffee mugs, bar soap and candles in various sizes bearing THE COLOSSEUM mark.. (Tr. 121-122, Ex. 442-0).

18. Since the opening of Caesars Palace in April of 1966, it is estimated that at least 10,500,000 people have enjoyed some service offered under THE COLOSSEUM trademark at Caesars Palace. (Tr. 117).

19. Caesars Palace has received multiple awards for the convention services offered under THE COLOSSEUM mark. For instance, Meeting & Conventions Magazine awarded Caesars Palace the Gold Key Award for its hotel and convention services. This is an annual award given to the finest meeting properties worldwide, with winners nominated and chosen by Meetings & Conventions corporate, incentive and association meeting planner subscribers. Meetings in the West voted Caesars Palace one of the top 50 properties in the West for meetings based on a readers survey. Caesars Palace was also awarded the 2000 Award of Excellence for its services for corporate meetings and incentive travel by subscribers to Corporate & Incentive Travel Magazine. (Tr. 117-121). The advertisements placed by CWI heralding these accomplishments included prominent references to THE COLOSSEUM mark. (Tr. 117-118, Ex. 113,137).

20. Since the opening in 1966 CWI has spent many millions of dollars promoting CAESARS PALACE. Deborah Munch, Vice President of Public Relations, testified that because THE COLOSSEUM mark is usually used in combination with CAESARS PALACE or another version of the CAESARS mark, it is difficult for CWI to provide an exact estimate of the amount of monies expended promoting THE COLOSSEUM mark. (Tr. 132). Based on reliable estimates, the Court finds that CWI expended at least some amount over $19 million in promoting THE COLOSSEUM mark since the opening of CAESARS PALACE in 1966 until 2000. (Tr. 133).

21. The showroom at the Caesars Indiana gaming vessel bears the name COLOSSEUM. It in no way resembles the ancient Roman Coliseum. Like the COLOSSEUM Convention Center at Caesars Palace, it is rectangular in shape and does not have elevated seating. (Tr. 123). When CWI opened that showroom in November 2000, it issued promotional materials for the entertainment services offered in THE COLOSSEUM showroom in interstate commerce, and the opening was reported in the press. (Tr. 125-127, Ex. 132, 133,134,135,136).

22. CWI also established a series of four hotels in Pennsylvania known as the Caesars Pocono Resorts. The main restaurant at Cove Haven, one of the 4 resorts constituting Caesars Poconos, was and is called THE COLOSSEUM. (Tr. 128-129). When PPE acquired CWI in 1999, it did not acquire Caesars Poconos. However, as part of the transaction, CWI has licensed the buyer to use certain trademarks, including the CAESARS and COLOSSEUM marks. (Tr. 128). THE COLOSSEUM dining room at Caesars Poconos has an exterior whose high arches and columns resemble the original Coliseum amphitheatre from the ancient Roman Empire. (Ex. 151). The dining room is advertised on the Internet as THE COLOSSEUM dining room. (Tr. 130, Ex. 131). Ms. Munch testified that the licensee reports that from the opening in approximately 1980 until 1999, over $50 million has been spent in promoting Cove Haven, including the restaurant services offered under THE COLOSSEUM mark. Ms. Munch also testified, based on information provided to her in the normal course of business, the Caesars Poconos resort has served more than 1,000,000 customers in THE COLOSSEUM dining room since its opening. (Tr. 128-132). The Court credits this testimony, which was not rebutted in any way.

23.As a result of the thousands of people who have utilized the various services offered at the convention center in Las Vegas under THE COLOSSEUM trademark, eaten at THE COLOSSEUM dining room in Pennsylvania, attended a performance at THE COLOSSEUM showroom in Indiana, purchased merchandise sold in connection with THE COLOSSEUM trademark, and the extensive promotion by CWI of THE COLOSSEUM mark in connection with the services referenced above, the Court finds there is considerable association by the public of COLOSSEUM with CWI, and Caesars Palace in particular.

24. The strength of THE COLOSSEUM mark is also reflected by the extensive use by third parties of THE COLOSSEUM mark in association with CWI. Since 1981, THE COLOSSEUM has been referred to in association with CAESARS properties in numerous articles in news journals nationally and internationally. (Tr. 328-334, Ex. 181-186, Ex. 188-276, Ex. 280, 288, 299-320, 326-334, 337-357, 360-416, 418-419).

E. CWI’s EMPIRE Family of Marks

25. CWI has used several marks with respect to their properties that incorporate the EMPIRE mark. The marks EMPIRE (Ex. 441-AU), and THE ROMAN EMPIRE (441-X), (together with other marks identified below, the “EMPIRE Family of Marks”) have been used synonymously with CAESARS PALACE and the services offered there from since at least 1968, as evidenced by a wide variety of promotional materials.

26. Since at least the early 1990’s, the EMPIRE and ROMAN EMPIRE marks have been used on maps of the Caesars property entitled “GUIDE TO THE EMPIRE.” (Tr. 64-66, Ex. 114, 441-E, 441-D). The EMPIRE mark has also been used in promotional materials in numerous ways including ONWARD TO THE EMPIRE (Ex. 125), EXPERIENCE AN EMPIRE (Ex. 441-AJ), and BEHOLD THE EMPIRE (Ex. 441-P). Until recently, Caesars Palace offered special entertainment at CAESARS MAGICAL EMPIRE (Ex. 463-AY). As a large public facility, Caesars Palace is constantly renovating, modifying, or simply maintaining its physical structure. Whenever this occurs, CAVI — as does virtually every public facility — places a sign apologizing for any inconvenience. However, CWI customizes these notices to fall within its Roman-Grecian theme and headlines these notices with the trademarks REBUILDING AN EMPIRE (Ex. 441-Y) or THE EMPIRE EXPANDS (Ex. 441-AM, 441-AL). For the past three years, a neon sign reading AVELCOME TO THE EMPIRE hangs above an entrance at Caesars Palace. (Tr. 141-142, Ex. 441-AX). CWI has also used the mark THE JEWEL OF THE EMPIRE to distinguish Caesars Palace from its other Caesars properties. (Tr. 67-68, 124,134).

27. CWI uses the EMPIRE Family of Marks at its other Caesars facilities. Caesars Indiana distinguishes itself from its sister properties as THE GLORY OF THE EMPIRE (Tr. 124), inviting people to EXPERIENCE AN EMPIRE (Ex. 441-AJ) and watch THE EMPIRE’S TOUGHEST GLADIATORS (Ex. 441-AO, 441-AP). CAESARS ATLANTIC CITY offers guests a guide to RESTAURANTS OF THE EMPIRE, as well as pamphlets, which say WELCOME TO THE EMPIRE CAESARS ATLANTIC CITY (Tr. 67, Ex. 441-E). Caesars Tahoe identifies itself within the group of Caesars properties as the MOUNTAIN EMPIRE (Tr. 134).

28. CWI is also the owner of three additional relevant registrations namely CAESARS MAGICAL EMPIRE (Registration No. 2,630525) (Ex. 463-AY), the EMPERORS CLUB (Registration No. 1,743663) (Ex. 463-AZ), and EMPERORS EVERYDAY GIVEAWAY (Registration No. 1,837096) (Ex. 463-BC).

29. The foregoing demonstrates Plaintiffs’ use of the EMPIRE Family of Marks dates back to at least 1968, and that the amount Plaintiffs have invested in using and promoting the EMPIRE Family of Marks in interstate commerce is a multiple of the substantial amounts expended on behalf of THE COLOSSEUM mark. (Tr. 134-149, Ex. 441-A & B, 441D-F, 441-K-M, 441-P, 441-X & Y, 441-AE, 441-AI— AS, 441-AU & AV, 441-AX)

F. Plaintiffs’ Decision to Build a New Entertainment Center in Las Vegas.

30. In the 1990s, CWI began to face serious competition as the industry leader in Las Vegas as properties such as the Venetian, Bellagio and Mandalay Bay opened. (Tr. 149). All these new properties were targeting the same' customers that Caesars Palace had developed over its many years. (Tr. 149-150). In order to maintain the prestigious reputation of CAESARS in Las Vegas and solidify the perception of PPE as the premiere gaming company in the world, PPE (which by then owned CWI) decided to build a new entertainment complex at CAESARS PALACE. (Tr. 150).

31. PPE and CWI were already in discussions at this time with Celine Dion, the well-known Canadian singer, concerning the creation of a new production in which she would star. (Tr. 151). Ms. Dion and her husband/manager (Rene Angelil) had already begun discussions with Sceno Plus, a Canadian firm specializing in designing and building unique venues. (Tr. 386).

32. PPE and CWI, together with Ms. Dion and Mr. Angelil, described the requirement of this space for the type of show that was contemplated as well as the site within the Caesars Palace property where this venue would be constructed. (Tr. 386-387).

33. Sceno Plus took this information and using its own creative talents developed a place for a building that would fit within the existing Roman-Grecian theme permeating Caesars Palace. (Tr. 385-396, Ex. 475, 476, 477).

34. It was Sceno Plus that developed the idea of constructing a building resembling the ancient Roman Coliseum and suggested naming it COLISEUM, and then presented the idea to PPE. Sceno Plus’s concept has a large circular shape with columns and arches mimicking the inside of the ancient Roman Coliseum. The stage has been built to have lifts from under the stage to bring up sets and performers the same way that there were lifts in the ancient Roman Coliseum to bring animals and gladiators to the center stage. However, the audience will not totally encircle the stage as it did at the ancient Roman Coliseum. (Tr. 391-396, Ex. 476, 477).

35. PPE and CWI approved the selection of the name (with a modified spelling to dovetail the spelling used for THE COLOSSEUM convention complex at Caesars Palace) because the name was consistent with the well-known Roman-Grecian theme associated with CWI. (Tr. 398-399).

36. Plaintiffs closed the original COLOSSEUM convention center in August of 2000. (Tr. 177). On April 10, 2001, PPE publicly announced plans to build a new 4,000 seat theater connected to, and incorporated within, CAESARS PALACE, also to be called THE COLOSSEUM AT CAESARS PALACE, but which will from time to time be referred to only as COLOSSEUM. (hereinafter, “THE COLOSSEUM”) (Tr. 150-151, Ex. 37).

37. THE COLOSSEUM is located at the apex of Las Vegas and Flamingo Boulevards, where it can be seen from virtually anywhere on the Las Vegas Strip, and is positioned prominently in front of CAESARS PALACE. The decision to build such a prominent building is part of PPE’s strategic competitive response to the “New Las Vegas.” (Tr. 387-391). THE COLOSSEUM mark was also prominently featured on the actual construction site at Caesars Palace. For instance, one of the signs stated “Battles Raged There. Chariots Roared There. Beasts Ravaged There. (And Now Celine Will Play There.) COLOSSEUM. The World’s First Stage. Coming Soon To The Empire.” (Tr. 240, Ex. 28).

38. Construction began shortly after the April 2001 announcement. PPE expects the facility will cost approximately $95 million to construct. (Tr. 239). On May 22, 2002, PPE gave details of the premiere engagement at THE COLOSSEUM, announcing that Celine Dion will be appearing 200 nights a year in a Franco Dragone production for the next three years. The announcement stated that THE COLOSSEUM would open in March 2003. (Tr. 152, Ex. 68).

39. As part of the May 22, 2002 announcement, Celine Dion appeared at THE COLOSSEUM with the construction crew, an event that attracted significant nationwide media coverage in both print and televised media. (Tr. 153).

40. THE COLOSSEUM mark will not only be used to designate the entertainment services offered by Plaintiffs as the new performance home for Celine Dion, it will also be used to designate numerous other services, including T.V. specials, boxing events, concerts, conventions, and parties for special occasions like the Super Bowl. (Tr. 184). In addition to the goods noted above, after the May 22nd announcement CWI commenced use of THE COLOSSEUM at Caesars Palace mark on t-shirts and anticipates expanding the goods to be branded with this mark. (Ex. 34).

41. PPE and CWI have already spent $2 million in marketing and promoting THE COLOSSEUM AT CAESARS PALACE and the services to be offered in connection therewith. (Tr. 159). These promotion efforts include pop-up advertisements on the Caesars web site and advertisements in the print media. (Tr. 155, Ex. 27). In her testimony, Ms. Munch reliably estimated that over 1,000,-000 visitors have accessed the Caesars web site since it began THE COLOSSEUM promotions. (Tr. 155-156). In all, PPE has spent or committed to spend $4 million in promoting the new COLOSSEUM. (Tr. 156).

42. If PPE and CWI are prevented from using THE COLOSSEUM mark, they would suffer financially and through loss of goodwill. Ms. Munch testified that the cost to PPE and CWI in having to redo the signs, the tickets, and all of CWI’s promotional material would be very significant. (Tr. 159) In addition, PPE and CWI could not recapture the favorable media exposure already obtained if they could not use this mark. (Tr. 159-160; 335-36).

43. If they cannot use THE COLOSSEUM mark, Plaintiffs also stand to lose considerable goodwill with: (a) customers and others in the public who associate THE COLOSSEUM mark with CWI in general, and Caesars Palace in particular including the services to be offered at the new entertainment complex; and (b) their business partners involved in the March 2003 opening at THE COLOSSEUM and who have promoted the entertainment services to be offered at this new facility under THE COLOSSEUM mark. (Tr. 160; 335-36)

G. Cyrus Milanian’s Business and His Claim of Trademark Rights.

44. As explained below, Milanian was barred from testifying for refusing to appear at his deposition. Therefore there is little evidence about his background. A self-described “Internettor,” the only business connected to him operates under his personal name and purports to offer telephone and ISP services. (Tr. 291-292, Ex. 7). Milanian owns at least one domain name, jimcrow.com, that has been offered for sale. (Tr. 293-295, Ex. 1, 4). There is no evidence that Milanian has any meaningful experience in the casino or resort hotel business. Indeed, according to a Dun & Bradstreet report, on May 26, 2002, Milanian told an interviewer that he operated a telephone communications company under his personal name. (Ex. 7) Thus, it appears that as of May 26, 2002, only days before he contacted Plaintiffs for the first time, that Milanian did not describe himself as a consultant for the hotel or casino industry. (Ex. 7). He does have considerable experience in filing trademark applications, having filed approximately 156 of them since 1998. (Tr. 295-296, Ex. 158).

45. Based on the testimony offered by Plaintiffs, the Court finds that Milanian’s business model is to apply for a series of trademarks for a particular theme that he anticipates (or expects) will be a theme for a casino or resort hotel. The vast majority of these applications have been filed on an intent-to-use basis. (Tr. 296).

46. For example, Milanian applied for numerous trademarks relating to a Titanic themed casino and a casino themed after the city of San Francisco. (Ex. 153). Significantly, Milanian did not claim an intent to use these marks in connection with casino or hotel services, but rather in connection with “Business Management of Resorts Hotels [sic], Casinos and Theme Parks for Others and Products Merchandising [sic] Services.” (Kg., Ex. 170).

47. The Court finds that this description of services was an intentional misrepresentation and that, in fact, these trademarks were filed for the purpose of assigning them to casinos and hotels for those businesses to use in connection with their services. For instance, on one website, a printout of which was submitted by Milanian in connection with his Statement of Use to substantiate his use of the mark “The New Las Vegas” for “Business management of resort hotels, casinos and theme parks for others in International Class 25; Product merehan-dising in International Class 35; and Real estate development, in International Class 37,” he stated quite clearly that:

“Cyrus Milanian offers for sale and or rent/lease in the United States of Amer-ica and/or Global marketplace, and/or internet; license rights and/or buyout rights for goods and services advertising for sale or rent/lease in exchange for royalties/compensationary for the following trademarks, servicemarks.” (Ex. 163, emphasis added).

48. The examiner found that this specimen was unacceptable because it did “... not show use of the service mark in relation to the identified service.” Subsequently, Milanian amended the language. Six months later, the same web-site, submitted as a specimen for a different mark, stated:

Cyrus Milanian offers for a fee his services, namely, business management of resort hotels, casinos and theme parks for others and merchandising services for others internationally, and/or in the United States of America, under one or more of the following trademark/service marks mentioned under its own title. (Ex. 159).

49. The Court finds this change in the wording of his website an example of Mila-nian’s bad faith intent in attempting to register marks, for which he has neither trademark usage nor a bona fide intent to use.

50. There is other evidence that Mila-nian’s claim of intended use of consulting services was a sham. Milanian owns patents relating to the creation of a Titanic-themed resort and casino. For instance, patent number 6,073,403 includes the following statement:

“A fully integrated building complex comprising a body of water, a first housing structured to resemble the Titanic and a generally domed-shaped second housing structured to resemble an iceberg. The first and second housings are each situated within the body of water, resting on the bottom thereof, and a second portion is disposed above the body of water. The interior of the first and second housing are divided into a plurality of levels and may include an entranceway/lobby, guest quarters, restaurant and entertainment facilities, a casino and other hotel amenities, such as health clubs, swimming pools, beauty salons, retail shops, etc. Access between the first housing and the shore is provided by a generally tubular-shaped enclosed gangway having at least one conveyor belt-like people mover. Access between the second housing and the shore is provided by a generally tubular-shaped enclosure having one or more motorized or tram-like vehicles operating therein. Access between the first and second housings is provided by a generally tubular-shaped tunnel having one or more motorized or tram-like vehicles operating therein.” (Defs. Ex. 0, emphases added).

51.The Court finds that the filing of this and other patents (Defs. Ex. L, M) indicates that Milanian had developed a concept for what he believed to be an innovative business method. It strains credibility to believe that Milanian was intending to offer consulting services under numerous Titanic-themed trademarks at the same time that he had invested in the registration of three patents relating to the operation of a Titanic-themed resort. The statements on his website clearly evidence that these Titanic trademarks were intended to be part of the “package” sold or licensed to an interested company with the ability to implement the patent claims under the related trademarks. Indeed, Milanian’s counsel implicitly conceded this connection when he asked Plaintiffs Vice President of Corporate Law, Mark Clayton, “... it [isn’t] reasonable to you that someone who had invented and obtained patents on a complex that could take the form of a replica of the Titanic would want to apply for trademarks to try to protect that concept further?” (Tr. 366).

52. Milanian’s pattern of bad faith is further evident by the fact that, with respect to Titanic-themed marks, Milanian filed his first application six weeks after being told by Cunard that it was not interested in licensing its trademarks. See Cunard Line Limited v. Cyrus Milanian, Opp. No. 116,277 (T.T.A.B. July 28, 1998). (Ex. 5). To quote the T.T.A.B.:

A final comment is in order. It has not gone without notice that applicant filed the involved application some six weeks after receipt of the letter advising him that opposer was not inclined to license or lease any of its trademarks. Opposer contends that is was not even aware from the business plan and the parties’ discussions that applicant desired to use and register this mark. Of course, applicant contends otherwise. However, if, as applicant maintains, opposer knew that applicant desired to use an register the flag design mark, the June 1, 1998 letter from opposer should have at least raised a question in applicant’s mind as to whether the flag design mark was one of the trademarks opposer was not inclined to license or lease. Stated differently, there should have been a question in applicant’s mind as to whether oppo-ser was claiming rights in the flag design mark. (Ex. 5).

53. As indicated above, Milanian’s applications are filed on an intent-to-use basis, which requires a good faith bona fide intent to use the marks in connection with the sale of goods or services. The Court finds that Milanian deliberately misstated the claimed services as consulting because he knew there was no way he would ever be able to show proof of use in connection with an actual hotel or casino. On the other hand, it appears that Milanian believed he could prove use of the marks in consulting services by creating a website offering these services and displaying the marks on the website.

54. When the trademark office refused to accept the website quoted above as evidence of use for consulting services, (see Ex. 163), Milanian modified the website. There were subsequent revisions, presumably to address other issues raised by the various Examining Attorneys at the U.S. Patent and Trademark Office. For instance, the website resortscenter.com now reads:

Cyrus Milanian offers for a fee his services, namely, business management of resort hotels, casinos and theme parks for others and merchandising services for others internationally, and/or in the United States of America, under one or more of the following trademark/service marks mentioned under its own title. Cyrus Milanian also offers for a fee to consult on business management of resort hotels, casinos, and theme parks and product merchandising services for others under one or more of the following trademarks mentioned under its own title. (Ex. 485)

55. The web site then lists over a hundred trademarks, including the ones for which he is attempting to show use. (Ex. 485).

56. Milanian’s business model has not been successful. There is no evidence that he has generated any sales of his business management services offered through his web sites. Indeed, Milanian’s approach— filing for many related trademarks for a theme for a prospective casino or resort hotel and then offering “business management services” under those trademarks— is inconsistent with the approach used by experienced developers or consultants who provide services in connection with a new resort hotel or casino.

57. Donald Chandler, PPE’s Vice President of Architecture and Design, testified that he worked with several consulting companies with respect to PPE’s casino business. Indeed, prior to being employed by PPE, Mr. Chandler has experience offering consulting services (Tr. 231). Mr. Chandler testified that he was not aware of any company that offered pre-registered trademarks as part of its services. (Tr. 241-245).

58. No evidence refutes this testimony. Thus, this Court finds on the credible testimony and evidence presented at trial that the accepted and standard industry practice is to provide consulting or management under the firm’s own name, not under one or many trademarks that would be used by the consultant’s clients in its business.

H. Milanian’s Claim of Trademark Rights in COLOSSEUM and EMPIRE

59. On April 23, 2001, less than two weeks after PPE announced the imminent commencement of construction of a new 4,000 seat showroom to be called THE COLOSSEUM, Milanian filed an intent to use application with the USPTO (Serial No. 78/059,830) for THE COLOSSEUM, for “business management of resort hotel, casinos, and theme parks for others and product merchandising services.” (Ex. 154).

60. Based on Milanian’s efforts, however unsuccessful, to market his services to hotels and casinos such as those operated by PPE and CWI, as well as the timing of this filing, the Court finds that at the time Milanian filed this application he had knowledge of Plaintiffs’ use of its COLOSSEUM marks and their intent to use COLOSSEUM in connection with the services to be offered at the new entertainment complex. The Court also finds that Milanian knew that the use of THE COLOSSEUM mark for these services would also inevitably lead to the use of the mark on merchandise such as souvenirs and related goods including slot machines.

61. On August 21, 2001, Milanian filed another intent to use application with the USPTO (Serial No. 76/302,255) for ROME LAS VEGAS COLOSSEUM, for “resort hotels, casinos, and theme park business management, development, and product merchandising services.” (Ex. 157). Notwithstanding these filings, Milanian took no steps to contact Plaintiffs. The Court concludes that this failure to contact Plaintiffs was not accidental, but was intentional. Milanian’s pattern of conduct and obvious interest in assigning his rights to Plaintiffs support the conclusion that Mila-nian believed that the longer he waited to contact Plaintiffs, the more time and money Plaintiffs would expend in the mark thereby raising the value to any claim made by Milanian.

62. On April 18, 2001, Milanian filed an intent to use application for THE EMPIRE mark (Serial No. 78/059,056) for “business management of resort hotels, casinos and theme parks for others and products merchandising services.” (Ex. 159). Thereafter, on October 21, 2001, Milanian filed an intent to use application for THE ROMAN EMPIRE mark (Serial No. 78/090,495) for “business management and development or casinos, hotel resorts, restaurants, shopping malls, convention centers, theme parks, real estate, and product merchandising.” (Ex. 156).

63. As noted above, Plaintiffs own the EMPIRE Family of Marks. Milanian’s applications for the Empire marks, for which Plaintiffs had not obtained federal registrations but held strong common law rights, appears to have been part of an effort to increase the value of any settlement to Milanian. Indeed, while subsequently withdrawn, on October 27, 2001, Milanian filed an intent to use application (Serial No. 78/090,499) for JULIUS CAESAR for “business management and development of casinos, hotel resorts, restaurants, shopping malls, convention centers, theme parks, and products merchandising services.” Outside trademark counsel for Park Place Entertainment wrote a cease and desist letter to Milanian on May 3, 2002. (Tr. 316-317, Ex. 469). Milanian later abandoned the application. (Tr. 317). Nevertheless, the timing of this application together with the other EMPIRE and COLOSSEUM applications supports the Court’s finding that Milanian was purposefully seeking to obtain as much leverage as possible in the negotiations he would shortly commence. The Court also finds that this pattern of conduct further demonstrates Milanian’s pattern of registering marks for which he has no legitimate use, but for the sole purpose of interfering with the rights of others.

64. It was not until after PPE’s May 22, 2002 announcement that Celine Dion would be appearing for a long-running opening engagement at THE COLOSSEUM opening in March of 2003 that Milani-an contacted Plaintiffs regarding his alleged rights in The COLOSSEUM mark. On or about June 1, 2002, Milanian telephoned PPE’s corporate headquarters in Las Vegas, Nevada and demanded to speak with its CEO, CFO or other senior management personnel alleging that PPE was violating his trademark rights in the term COLOSSEUM. (Tr. 289-291).

65. During the next ten days, Milanian filed two new intent to use applications for THE COLOSSEUM, namely Serial No. 78/134,219 for business development services (Ex. 158) and Serial No. 78/132,978 for slot machines (Ex. 155), even though he neither had a gaming license nor filed an application for a gaming license, which is required in order to manufacture or distribute slot machines. Defendants have admitted that they lacked a bona fide intent to use THE COLOSSEUM mark for slot machines because they did not have and had not applied for a gaming license. (See Answer at ¶ 14).

66. On or about June 11, 2002, representatives of PPE and CWI held a telephone conference with Milanian and his first attorney, Nicholas Karamanos of Pennsylvania. During this June 11, 2002 conference call, Plaintiffs were informed by Milanian’s counsel that he had filed a Statement of Use for THE COLOSSEUM (Serial No. 78/059,830) on June 6, 2002, and that the evidence of use was a copy of the “resortscenter.com” web site which, as discussed above, listed COLOSSEUM as one of the trademarks under which Milani-an purports to offer business management services. (Tr. 316, Ex. 154). Plaintiffs understood that Milanian and his counsel highlighted the fact that a Statement of Use had just been filed because an action for trademark infringement cannot be commenced until a mark has been used in commerce. (Tr. 418-421).

67. Plaintiffs advised Milanian of CWI’s well-established common law trademark rights in THE COLOSSEUM dating back to 1966, and demanded that Milanian abandon any claims to THE COLOSSEUM, including his applications for THE COLOSSEUM, as well as any corresponding domain names. (Tr. 317). Plaintiffs made several further attempts to convince Milanian to abandon his claim in THE COLOSSEUM mark. He did not respond to those overtures, and has refused to accede to Plaintiffs’ requests. (Tr., 322-323, Ex. 11).

68. Meanwhile, on June 5, 2002, CWI filed an intent to use application with the PTO for COLOSSEUM (Serial No. 76/417,751, Class 41) for “education and entertainment services, namely operating a sports, entertainment, concert, convention and exhibition arena and the production or co-production of sports and entertainment events, concerts, conventions and exhibitions for public exhibition, viewing and for radio, television and cable broadcasts.” (Tr. 273; Ex. 14). This application was filed on an intent to use basis because PPE wanted to make its claims a matter of public record but needed to review its archives for specimens illustrating its use of COLOSSEUM since the COLOSSEUM convention center, as noted above, had already closed. (Tr. 274). CWI subsequently filed an Amendment to Alleged Use claiming August 6, 1966 as the date of first use. (Tr. 274).

69. The USPTO issued an office action refusing registration of this mark because it found THE COLOSSEUM mark to be merely descriptive of the services. It also questioned whether the specimens submitted were sufficient. CWI explained that the one specimen submitted to the USPTO did not include all of the exhibits made available at this trial. CWI has until May 29, 2003 to respond to the USPTO and has not yet responded. (Tr. 273-275, Ex. 14). The Court notes that the USPTO did not find CWI’s mark to be generic. (Ex. 14)

70. On September 24, 2002, Plaintiffs’ outside counsel received a demand on behalf of defendants from the law firm of Brinks, Hoffer, Gilson and Lione indicating that Milanian continued to believe he had potential claims against PPE and CWI. (Ex. 11). While the letter was written on behalf of New Las Vegas Development, LLC, Brinks Hoffer indicated to Plaintiffs’ outside counsel that Milanian was connected to this entity. (See Tr. 324).

71. Plaintiffs concluded as a result of this letter that in order to protect their $95 Million dollar investment in THE COLOSSEUM that they needed to be proactive. (Tr. 354). On October 2, 2002, Plaintiffs filed this declaratory judgment action, alleging that Defendants violated the Lan-ham Act and committed unfair competition under Nevada law with respect to COLOSSEUM and EMPIRE trademarks. Plaintiffs sought a declaration of their superior rights in those marks, an order enjoining defendants from using the marks, and for a consolidation of the trial on the merits under Rule 65.

72. Defendants filed an answer on November 26, 2002 through the law firm of Hunterton & Associates. The answer denied the salient allegations in the complaint except it admitted- that Milanian lacked a bona fide intent to use THE COLOSSEUM on gaming machines, namely slot machines and gambling devices because he does not have and has not taken steps to obtain a gaming license. (See Answer at ¶ 14). While the Answer did not include any counterclaims, it did assert two affirmative defenses of particular relevance: affirmative defense No. 5 that Plaintiffs are estopped from asserting claims to the trademarks, and affirmative defense No. 6 that defendants possess common law and/or contractual rights to the trademarks. No facts were pled to support these defenses.

73. During a conference held by the Court on December 19, 2002, Hunterton & Associate’s Motion to Withdraw as Counsel was granted. Pursuant to the Order entered that same day, the Court ordered a consolidated trial on the merits to commence on January 21, 2003.

I. Defendants Submit The 1996 Documents.

74. On January 9, 2003, the last day by which Defendants were to file a trial brief, Gregory F. Buhyoff, Esq., on behalf of both Defendants, filed a Motion for Summary Judgment, arguing that Plaintiffs were using the mark COLOSSEUM as a generic term and thus had no standing to assert the claims in their Complaint.

75. This motion also included as exhibits certain documents purporting to show that in May 1996, Milanian submitted a proposal to ITT, the then-owner of CWI, concerning the development at Caesars Palace of a replica of the ancient Roman Coliseum and other ancient landmarks. This proposal specifically states, “[t]he following are trade secrets and intellectual properties of Mr. Cyrus Milanian.” (Def. Trial Brf., Ex. H).

76. Buhyoffs Affidavit also included two other documents purporting to show that CWI apparently lost this proposal, and had agreed to maintain the confidentiality of any mental impressions revealed in Milanian’s proposal. (Def. Trial Brf., Exs. I, J). Milanian emphasized his intellectual property rights multiple times, both in the letter he sent to Rand Araskog, then Chairman of CWI and ITT, where he asks to, “Please regard them all as the Trade Secrets,” then at the end of his Marlania proposal where he writes “ *TWSM Marks: properties of Cyrus Milanian. Copyright © 1990-1996 Cyrus Milanian, all rights reserve under U.S. and/or international laws, no part of this proposal may be copies or reproduced, duplicated, in any manner, shape or form without the prior written agreement, from Mr. Cyrus Mila-nian. Violaters are subject to civil and criminal prosecutions.” (Def. Trial Brf., Ex. H)

77. ITT subsequently sold CWI to Starwood in approximately 1998. (Tr. 50). As noted above, CWI was then acquired by PPE on December 31,1999.

78. Witnesses employed by PPE and CWI stated that they had no knowledge of any of these documents and had never heard of any proposal from Mr. Milanian until they saw these documents. (Tr. 157, 241). The testimony also established that each CWI person involved with these documents was no longer working with CWI when Plaintiffs began discussions with Patrick Bergé with respect to the showroom for Celine Dion. (Tr. 158).

79. In addition, PPE had reviewed CWI’s building proposals in 2000 (after PPE bought CWI) and found nothing in those files about a building a replica of the ancient Roman Coliseum. (Tr. 232). PPE’s in-house counsel, Mark Clayton, testified that he had reviewed the current legal files and found no copies of any of these documents. (Tr. 314). Of course, this would be consistent with the fact that they had been lost some seven years ago.

80. At trial, Plaintiffs called Patrick Bergé of Sceno Plus who testified that as early as 1991 — five years before CWI was contacted by Milanian — he had been retained by CWI to design a facility to house what became known as Cirque de Soleil’s “O”. The facility that Bergé designed was also to be a replica of the ancient Roman Coliseum and that he suggested calling the building Coliseum. The project, however, did not proceed. (Tr. 381).

81. Bergé further testified that he was retained by CWI again in 2000 to develop a new venue in which Plaintiffs would host a show featuring Celine Dion. Bergé’s testimony, which was unrebutted by Defendants and which the Court credits, establishes that he developed the concept of designing this showcase for Celine Dion as a replica of the Roman Coliseum and the idea of calling it “Coliseum.”. This testimony was supported by the plans and submissions Bergé and his company made to PPE and CWI. (Tr. 389-391, Ex. 475, 476, 477).

J. Milanian''s Failure To Appear For Deposition And The Aborted Settlement.

82. On December 31, 2002, Plaintiffs noticed the deposition of Mr. Milanian for Monday, January 13, 2003. Mr. Milanian failed to appear at this deposition and did not notify Plaintiffs that he would not be appearing until that day.

83. On January 14, 2003, the Court held a court conference with respect to this missed deposition and was advised that the parties were discussing settlement. The parties were directed by noon on January 15, 2003 to either settle this matter or agree to a new mutually acceptable time for the Milanian deposition.

84. On January 15, 2008, the Court was advised that no settlement had been reached. Mr. Milanian’s counsel provided the Court and Plaintiffs’ counsel with a letter from a physician, Doctor Robert W. Brenner, stating that Mr. Milanian could not testify due to “generalized anxiety, panic attacks and depression.”

85. The Court held that this physician’s letter was not sufficient to justify Milani-an’s failure to attend his deposition. The letter did not indicate when Milanian’s condition commenced or what treatment was being provided. The Court therefore directed that Milanian would be barred from testifying at trial and that it would consider favorably an application from Plaintiffs for its fees in connection with preparing for the deposition. The Court also indicated that the motion for summary judgment was untimely but accepted these papers in lieu of a trial brief.

86. On January 16, 2008 the parties believed that they had settled this matter, and were prepared to call the Court that morning to put the settlement on the record. However, on January 17, 2003, Mila-nian refused to settle this matter because of an alleged disagreement over whether the settlement would include a general release by him of all claims or just the trademark claims.

87. Apparently, Milanian believed that after settling his “trademark” claims, he should still be entitled to bring a claim or claims based on the events in 1996.

88. On January 17, 2003, Plaintiffs moved orally to enforce the claimed settlement, which the Court denied. At that same time, Mr. Buhyoff moved to withdraw as counsel in favor of Melvin Silver-man. Melvin Silverman advised the Court that “many days” would be required to prepare for trial and again represented, without any further medical substantiation, that Milanian was not able to attend the trial.

89. The Court refused Mr. Buhyoffs motion to withdraw on the eve of trial and also ruled that the trial would go forward as scheduled. Later that day, Mr. Silver-man filed an appearance and papers to be admitted pro hac vice.

90. On January 20, 2003, Mr. Buhyoff advised Plaintiffs’ counsel that Mr. Milani-an was in Nevada and requested Plaintiffs’ consent to allow him to testify. Plaintiffs refused.

K. The Parties’ Motions During The Trial.

91. On January 21, 2003, Defendants moved this Court to reconsider its order banning Mr. Milanian from testifying. The affidavit submitted in support of this motion by Mr. Milanian contradicted his previous statements. Indeed, a second doctor’s letter was attached in further support of the January 14, 2003 letter. Inexplicably, this letter was dated January 13, predating the letter it sought to explain. This submission only reinforced this Court’s conclusion that the decision to bar Mr. Milanian from testifying was correct.

92. Defendant also moved to stay this trial in order to allow the question of the parties trademark rights to be adjudicated by the Trademark Trial and Appeal Board. Thus, Milanian continued to assert some rights in THE COLOSSEUM and to contest Plaintiffs’ rights. The Court denied this motion.

93. Plaintiffs moved to bar Defendants from presenting any witnesses in light of these new facts, a motion the Court also denied.

94. Plaintiffs also filed a motion to reconsider their request for the Court to enforce the purported settlement. That motion was also denied.

95. Finally, Plaintiffs moved this Court for a finding that any claims by Milanian with respect to the 1996 events be deemed barred as compulsory counterclaims that were not raised. The Court took that motion under submission and will address it below.

96. Defendants’ witness list identified Peter Boynton, the former CEO of CWI, who wrote one of the letters attached to Mr. Buhyoffs affidavit in support of Defendant’s Motion for Summary Judgment and then submitted to the Court as a trial brief. On January 22, 2003, defendants advised that Mr. Boynton would not be able to appear in Las Vegas and requested that he testify by telephone. (Tr. 368). The Court indicated that it was not inclined to permit such a last-minute arrangement. (Tr. 370).

97. Plaintiffs advised the Court that they had learned that one of the lawyers assisting Defendants’ counsel of record had been in direct contact with Mr. Boyn-ton and had questioned him about the 1996 events. According to representations made by this attorney, Michael Santucci, Mr. Boynton represented that he knew nothing about Mr. Milanian or the proposal contained in the 1996 documents. (Tr. 373-374).

98. The Court found that this contact with Mr. Boynton was a violation of the Nevada Rules of Professional Conduct which prohibit ex parte contact with employees or former employees. See Palmer v. Pioneer and Associates, Ltd., 69 P.3d 1237 (2002); (Tr. 371). The Court ruled that, as a result, Mr. Boynton was barred from testifying.

99.At the conclusion of trial on January 23, 2003, the Court issued certain preliminary rulings including finding that Mi-lanian had acted in bad faith in asserting rights to COLOSSEUM and EMPIRE. The Court also required additional briefs on the issues of whether the 1996 claims were compulsory and, if not, whether there was sufficient evidence in this case to rule on the new claim in Plaintiffs amended complaint for declaratory judgment as to the 1996 counterclaims. The Court also requested a submission from the parties on attorneys’ fees and damages.

CONCLUSIONS OF LAW

1. This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331, 1338(a), 1367 and 2201.

2. This Court has personal jurisdiction over the defendants, and venue is proper pursuant to 28 U.S.C. § 1391.

3. The Court has authority under Federal Rule of Civil Procedure 65 to conduct a final trial on the merits consolidated with the Plaintiffs’ request for preliminary relief.

I. Count One: Declaratory Judgment on THE COLOSSEUM Trademark.

4. The Declaratory Judgment Act provides:

[i]n a case of actual controversy within its jurisdiction ... any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interest party seeking such declaration, whether or not further relief is or could be sought. 28 U.S.C. § 2201 (1988).

5. In order to obtain declaratory relief, a plaintiff must establish that there is an actual controversy present that is ripe for adjudication. Chiron Corp. v. Advanced Chemtech, Inc., 869 F.Supp. 800, 801 (N.D.Cal.1994) (citing Shell Oil Co. v. Amoco Corp., 970 F.2d 885, 887 (Fed.Cir.1992)). In making its determination, a court must consider “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” Central Montana Elec. Power Co-op., Inc. v. Administrator of Bonneville Power Admin., 840 F.2d 1472, 1474 (9th Cir.1988) (citation omitted). In an infringement context, a plaintiff can meet this burden by showing it has a reasonable apprehension of being sued. Id.; see also Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 736 (Fed.Cir.1988); Topp-Cola Co. v. Coca-Cola Co., 314 F.2d 124 (2d Cir.1963).

6. In this case, Milanian’s conduct clearly caused Plaintiffs to have a reasonable apprehension of being sued. The Court concludes that Milanian knew of Plaintiffs’ press release with respect to the building of THE COLOSSEUM and filed his applications in order to capitalize on the Plaintiffs’ failure to have a federal registration for that mark. The timing of his June 1, 2002 call to PPE’s headquarters and his refusal to respond to Plaintiffs’ request that Milanian abandon his claim of rights in THE COLOSSEUM leads the Court to conclude that Milanian intended to wait until the eve of The Colosseum’s opening to file an action against Plaintiffs. Certainly, the September 24, 2002 letter from the law firm of Brinks Hoffer to Plaintiffs’ outside counsel requesting support for PPE’s claims of priority signifies that Milanian continued to believe that he had claims of infringement.

7. In order to adjudicate this claim for relief, the Court will first consider whether Milanian had any basis to claim a superior right to THE COLOSSEUM mark. The evidence indicates that Milanian relied primarily on the fact that he had filed three intent to use applications before Plaintiffs and that therefore he had priority.

8. Milanian’s reliance on his intent-to-use applications is completely misplaced. Section 1(b) of the Lanham Act was amended by Trademark Law Revision Act of 1988 (the “TLRA”), effective November 16,1989, to allow for the filing of a trademark application by an individual with “a bona fide intention, under the circumstances showing the good faith of such person” to use the mark on the goods or services listed. The U.S. Trademark Association’s official commentary to the TLRA observed that although the Act contains no precise definition of bona fide intent to use, a requirement of “good faith” is a precondition to such registration. See U.S.T.A., “The Trademark Law Rev. Act of 1988,” comment on § 1(b) at p. 43 (1989).

9. There is little case law with respect to what constitutes bona fide intent to use a mark in commerce. However, in order to prevent the intent to use amendments from being abused, the Lanham Act was also amended to clarify that “use in commerce” means “the bona fide use of the mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127.

10. Based on the legislative history behind the TLRA, the test of “bona fide” intent has been interpreted to require “objective” evidence of circumstances showing “good faith.” See Lane Ltd. v. Jackson Int’l Trading Co., 33 U.S.P.Q.2d 1351, 1355, 1994 WL 740491 (Trademark Tr. & App. Bd.1994) (“[Applicant’s mere statement of subjective intention, without more, would be insufficient to establish applicant’s bona fide intention to use the mark in commerce.”) As one commentator noted, “[t]his intention must be more than a “wish list’ W. Bouchard, How to Get and Keep a Trademark, Trademarks and the Arts (2nd Ed.2000) reprinted in J. Ginsburg, Trademark and Unfair Competition Law 215 (3d Ed.2001).

11. The legislative history to these amendments provide significant guidance to this Court in evaluating whether Milani-an had a bona fide intent to use THE COLOSSEUM and EMPIRE marks in commerce at the time he filed those applications. See generally S.Jud.Comm.Rep. on S. 1883, S. Rep. No. 100-515, pp. 23, 24 (Sept. 15, 1988), U.S.Code Cong. & Admin.News 1988, pp. 5577, 5586; reprinted in TLRA Leg. Hist., supra, 23, 24. Indeed, among the examples provided of evidence that would disprove a bona fide intent to use a mark, the Senate Report included the following two which are particularly relevant to the facts of this case:

“numerous intent to use applications for a variety of desirable trademarks intended to be used on [a] single new product ... [and] an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce under the applied-for marks during the pendency of the applications.”

Id.

12. Milanian points to the fact that he has obtained several business method patents relating to a Titanic-themed casino as evidence that he had a good faith intent to use these marks in commerce.

13. While under other circumstances the holding of a patent might constitute evidence of a bona fide intent to use a mark related to the patent in commerce, this case is not the usual case. As noted above in the Court’s Findings of Fact, Milanian deliberately misrepresented the nature of the services he intended to offer in connection with his applications for consulting services. As is evident from the various websites Milanian has submitted to the USPTO to substantiate his use of his marks, Milanian was trafficking in trademarks, i.e. reserving what he perceived to be desirable names with the intent to sell or license them to others. The patent filings in this case actually further support this conclusion, for they show that Milani-an was, as his counsel admitted by virtue of his questioning of Plaintiffs in-house counsel, filing his intent to use trademark applications to further protect the business ideas embodied in those patents.

14. The Court also concludes that this business model of registering numerous trademarks to assign them to others is not the normal business model used by consultants in the hotel and gaming industries. Indeed, the Court finds the Dun & Bradstreet report as evidence that as of May 2002 Milanian made no mention of his casino, hotel and related consulting services. In light of the revisions made in the TLRA to the definition of the term “use i