Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA191210
`ESTTA Tracking number:
`02/06/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91176217
`Defendant
`Cipriani Group, Inc.
`MARVIN S. GITTES
`MINTZ LEVIN COHN FERRIS ET AL
`666 3RD AVE
`NEW YORK, NY 10017-4011
`UNITED STATES
`Opposition/Response to Motion
`Marvin S. Gittes
`msgittes@mintz.com, bamatvenko@mintz.com, jmdicioccio@mintz.com
`/Marvin S. Gittes/
`02/06/2008
`APPLICANTS OPPOSITION TO MOTION FOR SUMMARY JUDGMENT.pdf (
`205 pages )(11351010 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Attorney Docket: 29452-803
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`________________________________________________________X
`ORIENT_EXPRESs HOTELS INC. and
`HOTEL CIPRIANI SrL,
`
`Opposition Nos.
`
`Opposers’
`
`91176217 (Parent)
`91177039
`91176218
`91177038
`
`V
`
`'
`
`_
`Z
`
`Application Nos.
`
`78/572,590
`78/615,135
`
`CIPRIANI GROUP’ INC
`
`.
`Applicant.
`_______________________________________________________X
`
`(CONSOLIDATED UNDER PARENT
`91176217)
`
`APPLICANT’S OPPOSITION TO OPPOSERS’
`
`MOTION FOR SUMMARY JUDGMENT
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`4250561v.1
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`

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`TABLE OF CONTENTS
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`Page
`
`TABLE OF AUTHORITIES ......................................................................................................... ..2
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. ..3
`
`STATEMENT OF FACTS ................................................................................................ ..3
`
`A.
`
`B.
`
`C.
`
`Historical and Procedural Background .................................................................. ..3
`
`DISPUTED FACTS: The Settlement Agreement Does Not
`Restrict Applicant’s Ability to Use and Register the
`CIPRIANI Mark..................................................................................................... ..7
`
`DISPUTED FACTS: Opposers Breached the Express Terms
`of the Settlement Agreement by Pursuing the Registration of
`the CIPRIANI Mark in the United Kingdom......................................................... ..8
`
`III.
`
`APPLICABLE LAW AND ARGUMENT ........................................................................ ..9
`
`A.
`
`B.
`
`C.
`
`D.
`
`Opposers Have Failed To Meet Their Summary Judgment
`Burden.................................................................................................................... ..9
`
`Opposers’ Contractual Estoppel Argument Must Fail Because
`Factual Disputes Exist as to the Meaning of the Settlement
`Agreement. ........................................................................................................... ..10
`
`1.
`
`2.
`
`Opposers Should Not Be Permitted To Add New Language
`To The Settlement Agreement. ................................................................ ..10
`
`Applicant’s Post-Settlement Conduct Only Confirms The
`Absence Of Any Restriction On Its Right To Use and Seek
`Registration Of The CIPRIANI Mark...................................................... .. 12
`
`Opposers’ Motion Must Fail Based on Application of the
`Unclean Hands Doctrine. ..................................................................................... ..l5
`
`Public Policy Does Not Support The Award of Summary
`Judgment in The Face of Disputed Factual Issues. .............................................. ..16
`
`IV.
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`CONCLUSION ................................................................................................................ ..17
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`

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`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
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`TABLE OF AUTHORITIES
`
`CASES
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ........................................................................................................... ..7
`
`California Packing Com. V. Sun-Maid Raisin Growers of California,
`64 F.2d 370, 17 U.S.P.Q. 225 (C.C.P.A. 1933) ................................................................. ..9
`
`Hamilton Brown Shoe Co V. The Sam B. Wolf Sons Co.,
`39 F.2d 272, 5 U.S.P.Q. 338 (C.C.P.A. 1930) ................................................................... ..9
`
`Novamedix Ltd. V. NDM Acguisition Corp,
`166 F.3d 1177, 49 U.S.P.Q.2d 1613 (Fed. Cir. 1999) ....................................................... ..8
`
`Scripps Clinic & Research Found. V. Genentech, Inc.,
`927 F.2d 1565 (Fed. Cir. 1991).......................................................................................... ..7
`
`FEDERAL STATUTES
`
`Fed. R. Civ. P. 56(c) ...................................................................................................................... ..7
`Restatement (Second) of Contracts § 202(3)(a) (1981) ................................................................. ..8
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`4250561v.1
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`

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`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
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`I.
`
`INTRODUCTION
`
`Orient-Express Hotels, Inc. and Hotel Cipriani SrL’s (“Opposers”) Motion for
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`Summary Judgment (“Motion” or “Motion for Summary Judgment”) is premised upon
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`disputed issues of fact
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`in the guise of contradictory interpretations of a Settlement
`
`Agreement. Opposers have not met their burden of proving the absence of any disputed
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`issues of material fact that can reasonably be decided in App1icant’s favor. To the
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`contrary, Opposers’ Motion highlights that Opposers and Applicant Cipriani Group, Inc.
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`(“Applicant”) have very different
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`interpretations of
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`the Settlement Agreement,
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`particularly with respect to whether that agreement allows either party to use and/or seek
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`to register the mark CIPRIANI in the United States or abroad.
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`The doctrine of
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`contractual estoppel, upon which Opposers’ Motion is based,
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`is simply inapplicable.
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`Although the Settlement Agreement contains an express prohibition against Opposers’
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`ability to use the CIPRIANI mark,
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`it contains no parallel restriction on Applicant.
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`Significant disputes centering on the meaning of the Settlement Agreement preclude
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`entry of summary judgment in Opposers’ favor.
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`II.
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`STATEMENT OF FACTS
`
`A.
`
`Historical and Procedural Background
`
`Opposers and Cipriani have a long-running international dispute concerning rights
`
`to the CIPRIANI trademarks.
`
`In 1931, Giuseppe Cipriani Sr., the father of Arrigo
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`Cipriani, a director of Applicant’s family of companies, opened a bar and restaurant in
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`Venice, Italy called “Harry’s Bar,” which quickly became a haunt for the rich and famous
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`and known for its high-quality service and food.
`
`(Ex. 4). After several successful
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`decades, in 1953, Giuseppe Cipriani Sr. bought additional land in Venice and built “Hotel
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`425056lv.l
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`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
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`Cipriani” in which he was a 50% shareholder along with Hotel Cipriani SpA.
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`(Opposers
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`Ex. 5 at 3-4). On March 21, 1967, Giuseppe Cipriani Sr. entered into an agreement with
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`Stondon, Ondale and Patmore Company Ltd. (“SOP”) of Canada to which he sold his
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`interest in the Hotel Cipriani and granted certain limited rights to use the name “Hotel
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`Cipriani.” (EX. 16). More specifically, Giuseppe Cipriani Sr. granted SOP the right to
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`use the name “Hotel Cipriani” in connection with the Hotel Cipriani and a second hotel in
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`Italy, the “Hotel Villa Cipriani of Asolo,” and agreed that he and his family would
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`abstain for a period of five years from the date of the agreement (until March 21, 1972)
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`from starting any new company with the name “Cipriani” without Hotel Cipriani’s
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`consent.
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`Id.
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`it would appear that SOP sold Hotel Cipriani SpA to a party within
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`Opposers’ group of companies. (Opposers’ Ex. 5 at 4).
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`Since 1931 when Giuseppe Cipriani Sr. opened Harry’s Bar in Venice, various
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`Cipriani companies now formed into an extended family and their directors have, through
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`tireless effort, built a brand name synonymous with the zenith of good style and taste.
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`(Ex. 4). Some of the signature menu items invented at Harry’s Bar include “Carpaccio”
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`(thinly-sliced raw beef) and the world-famous “Bellini” (a peach-nectar cocktail). Both
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`signature items have now crossed over into the worldwide culinary lexicon and are to this
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`day associated with Applicant. During the decades since its founding, CIPRIANl-
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`branded properties have continued to receive the patronage of historical and famous
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`figures, such as Noel Coward, Charlie Chaplin, Queen Elizabeth II of England, the Duke
`
`of Edinburgh, Truman Capote, Orson Welles, the Aga Khan, Aristotle Onassis, Ernest
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`Hemingway, President William Clinton, Woody Allen and Sting.
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`425056lv.l
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`

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`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
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`By the mid-1980s, Giuseppe Cipriani Sr.’s son, Arrigo Cipriani, had largely taken
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`over running the family businesses and expanded his father’s vision of “Class”
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`restaurants and residences to the United States.
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`In 1985, Arrigo Cipriani opened Harry
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`Cipriani® in the very exclusive Sherry-Netherland Hotel on 5th Avenue in New York
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`City. This expansion continued - Cipriani DowntownTM opened in 1996, Cipriani 42ND
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`StreetTM opened in 1998, also in 1998 Applicant took over the Rockefeller Center Club”
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`and the Rainbow Room®, both at 30 Rockefeller Plaza. Cipriani Dolci® opened in 2002,
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`Cipriani SuttonTM in 2002; Cipriani 23RD Street in 2004, and a gourmet food store,
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`Cipriani Le SpecialitaTM, was opened in 2001. Cipriani Club 55, a fine dining restaurant
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`at 55 Wall Street opened in 2007. Each of these locations, products and services bear the
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`CIPRIANI name, one or more of the CIPRIANI family of marks and are unreservedly
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`marked as CIPRIANI.
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`From its restaurants, food items, fashion, and entertainment, Cipriani further
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`extended its brand of luxury to real estate development. Starting first in the financial
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`district in New York, it quickly spread to Las Vegas, Beverly Hills, and to Miami’s
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`world-famous South Beach. Cipriani developed and managed “to die for” high-end,
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`“every service provided with elegance” condominiums beginning with 55 Wall Street in
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`New York City.
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`(Ex. 4). These Cipriani residences marked the development of
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`CIPRIANI into a complete, high-end, designer lifestyle brand. At 55 Wall Street, a
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`magnificent landmark building that once served as the U.S. Customs House and the New
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`York Merchants’ Exchange and which is located on the most famous street in the world,
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`Cipriani created ultra-premium apartments that reflect
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`the aesthetic of Cipriani’s
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`international clientele.
`
`(Ex. 4). These residences translate the inspiration derived from
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`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
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`its deeply-rooted tradition of legacy into a modern metropolitan context.
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`In connection
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`with these services, Applicant and its sister-companies also provides the listing, leasing,
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`managing and financing for Cipriani Residences. This being replicated in projects
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`underway in Las Vegas, Beverly Hills and South Beach.
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`Opposers, in their Motion, completely ignore these facts in attempting to convince
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`the Board that they are the true owners of the CIPRIANI mark. The Cipriani family
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`legacy, and rights to the CIPRIANI name, belongs to Applicant.
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`Nothing in the
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`Settlement Agreement dated April 4, 1997 (the “Settlement Agreement”) between Sea
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`Containers America, Inc. and Hotel Cipriani, SpA (now Opposers) on the one hand and
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`Harry Cipriani, Inc., Vittoria Corporation, Resteq Corporation, and Arrigo Cipriani on the
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`other supports a different conclusion. (Ex. 1).
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`Applicant filed the application for the CIPRIANI mark on February 22, 2005.
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`(Ex. 17). Opposers filed their opposition on March 9, 2007.
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`Id. After Applicant
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`answered, Opposers attempted to strike Applicant’s Affirmative Defense Nos. 2 and 3.
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`These defenses were premised upon:
`
`(1) the absence of any prohibition in the Settlement
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`Agreement on Applicant’s ability to seek registration of the CIPRIANI mark and (2)
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`Opposers’ unclean hands and violations of the Settlement Agreement by using and
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`registering the CIPRIANI mark despite the Settlement Agreement’s express prohibition
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`on such use.
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`In response, Applicant amended its Answer and slightly revised
`
`Affirmative Defenses Nos. 2 and 3. Opposers then again moved to strike the Amended
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`Answers, or in the alternative, Amended Affirmative Defense Nos. 2 and 3. The Board
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`denied Opposers’ attempts to strike these affirmative defenses, holding the Applicant’s
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`4250561v.l
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`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
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`allegations,
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`if proven, would constitute unclean hands and otherwise could defeat
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`Opposers’ opposition to registration of the CIPRIANI mark. (Ex. 10 at 4 and 6).
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`Now, before conducting any discovery, Opposers take a new tack, seeking to
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`preclude the TTAB from seeing any evidence of Opposers’ unclean hands by filing a
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`motion for summary judgment. Applicant respectfully submits that the factual disputes
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`and evidence concerning the meaning of the Settlement Agreement and Opposers’ bad
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`faith subsequent actions present genuine issues of triable fact that preclude entry of
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`summary judgment at this time.
`
`B.
`
`DISPUTED FACTS: The Settlement Agreement Does Not
`Restrict Applicant’~s Ability to Use and Register the CIPRIANI Mark.
`
`Despite Opposers’ presentation of so-called “undisputed” facts in its Motion, the
`
`record reveals the presence of genuine issues of material fact that are in dispute and
`
`prevent the grant of summary judgment.
`
`Indeed, Opposers’ Motion is premised upon a
`
`distortion of the plain language in the Settlement Agreement. The agreement does not
`
`contain any prohibition on Applicant’s use and/or registration of the mark CIPRIANI
`
`alone.
`
`(Ex. 1).
`
`It expressly provides that Arrigo (Applicant) is entitled to conduct any
`
`business it chooses to engage in, provided it is designated as “Cipriani” with the identity
`
`of the product or service offered, or any other descriptive terms or name except use of the
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`word “hotel.” Id., fl[2.
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`It further provides that Opposers consent to registration in the
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`U.S.P.T.O. that included the word “Cipriani” so long as it was used in combination with
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`the identity of the product or service offered or with any other word, except for the word
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`“hotel.” Id., 1[3. The Settlement Agreement does not prohibit Applicant from using
`
`and/or seeking to register the CIPRIANI mark alone. The Settlement Agreement just
`
`does not mandate Opposers’ consent so that it does not preclude Opposers from objecting
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`4250561v.1
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`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
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`to such use or from opposing Applicant’s attempts to register the mark. Thus, Applicant
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`is within its rights to seek registration of the CIPRIANI mark and Opposers are within
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`their rights to oppose such a registration. The Settlement Agreement allows for this
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`circumstance, and is not determinative of the outcome.
`
`It does not preclude Applicant
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`from seeking registration of the CIPRIANI mark, as Opposers now argue.
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`In sharp contrast to the absence of any prohibition against Applicant’s use and
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`registration of the CIPRIANI mark, Paragraph 1 of the Settlement Agreement expressly
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`prohibits Opposers from using or seeking to register the mark CIPRIANI alone.
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`Id., 111.
`
`The Settlement Agreement explicitly states that Opposers “may not
`
`use the name
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`‘Cipriani’ al0ne....”
`
`Ia’.
`
`It contains no parallel or corresponding restriction on
`
`Applicant. Moreover, it expressly restricts Opposers’ ability to use and/or register any
`
`marks containing the name “Cipriani.” It limits Opposers’ use the Cipriani name to only:
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`(1) the mark “Hotel Cipriani [i]n the United States in connection with the hotel business”
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`and (2) the names “Hotel Cipriani Restaurant” or “Restaurante Hotel Cipriani” used in
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`connection with any “restaurants in a hotel which it owns or manages in the United
`
`States.”
`
`Ia’. Opposers were granted no other rights to use the Cipriani name in the
`
`Settlement Agreement. In contrast, the Settlement Agreement makes clear that Applicant
`
`has broad rights to use the CIPRIANI mark anywhere in connection with any business.
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`Id., 112.
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`C.
`
`DISPUTED FACTS: Opposers Breached the Express Terms of
`the Settlement Agreement by Pursuing the Registration of the
`CIPRIANI Mark in the United Kingdom.
`
`Contrary to the express terms of the Settlement Agreement, Opposers, through
`
`their group of companies, continued to pursue Community Trademark registration
`
`number 115824 in the United Kingdom for the mark CIPRIANI, in isolation, for among
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`425056lv.1
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`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
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`other things, hotels, restaurants, catering and public eating places with the Office for
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`Harmonization in the Internal Market. (Ex. 13). As recently as 2006, Opposers, through
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`their group of companies, renewed this mark.
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`Id. As further evidence of its bad faith,
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`Opposers have also opposed the Community Trademark application made by Applicant’s
`
`sister-company, Altunis Gestao E Servicos Ltda.
`
`(“Altunis”),
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`to register the mark
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`CIPRIANI LONDON as a Community Trademark. Opposers have continued to pursue
`
`this opposition and extend it to a court proceeding despite the fact of not having a hotel,
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`much less a hotel using the name “Cipriani” within 50 miles of Applicant’s London
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`location.
`
`(Ex. 5).
`
`In fact, Opposers closest hotel using the word “Cipriani” is the Hotel
`
`Cipriani in Venice. It also has restaurants in hotels in Portugal and Brazil. (Ex. 6).
`
`Opposers have asserted that the Settlement Agreement is limited to the United
`
`States and contains no restrictions in Europe.
`
`(Ex. 7). The Settlement Agreement is not
`
`so limited. The provisions of the Settlement Agreement permitting Opposers’ use of the
`HOTEL CIPRIANI name for its ‘hotels is explicitly limited to establishments located
`
`within the United States. (Ex. 1, 111). Conversely, the provision barring Opposers’ use of
`
`the mark CIPRIANI alone does not contain any express territorial restriction. Id. Again,
`
`the Settlement Agreement contains no similar restriction on Applicant’s ability to use and
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`seek registration of the CIPRIANI mark in the United States or elsewhere.
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`III.
`
`APPLICABLE LAW AND ARGUMENT
`
`A.
`
`Opposers Have Failed To Meet Their Summary Judgment Burden.
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`Summary judgment is only appropriate “if the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any, show that
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`there is no genuine issue as to any material fact and that the moving party is entitled to a
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`425056lv.l
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`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
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`judgment as a matter of law.” Fed. R. Civ. P. 56(c). As the nonmoving party, “all
`
`justifiable inferences are to be drawn in [Applicant’s] favor. Anderson V. Libem Lobby,
`
`Inc., 477 U.S. 242, 255 (1986). Summary proceedings are not intended to be a substitute
`
`for trial when it is indeed necessary to find material facts. Scripps Clinic & Research
`
`
`Found. V. Genentech Inc., 927 F.2d 1565, 1571 (Fed. Cir. 1991). As set forth below,
`
`several genuine issues of material fact exist that warrant the denial of summary judgment.
`
`B.
`
`Opposers’ Contractual Estoppel Argument Must Fail Because
`Factual Disputes Exist as to the Meaning of the Settlement
`Agreement.
`
`1.
`
`Opposers Should Not Be Permitted To Add New Language
`To The Settlement Agreement.
`
`Opposers simultaneously argue two conflicting positions:
`
`(1) the Settlement
`
`Agreement is plain on its face and is not subject to multiple interpretations and (2)
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`extrinsic evidence, such as dictionary definitions and decade-old pleadings, are needed to
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`interpret the purportedly “plain language” of the Settlement Agreement.
`
`(Ex. 11 at 8).
`
`Both of Opposers’ arguments are consistent in one aspect; they seek to add words to the
`
`Settlement Agreement that are simply not there. Even Opposers recognize that the
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`Settlement Agreement does not contain any express provision prohibiting Applicant’s use
`
`and registration of the mark CIPRIANI, the family name. Rather, the agreement makes
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`clear that Opposers do not consent to such usage whereas Opposers specifically consent
`
`to any mark that includes CIPRIANI plus a descriptive term other than “hotel.”
`
`In interpreting contracts, “unless a different intention is manifested,
`
`where
`
`language has a generally prevailing meaning, it is interpreted
`
`in
`
`accordance with
`
`that meaning.” Restatement
`
`(Second) of Contracts § 202(3)(a)
`
`(1981). Thus,
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`the
`
`interpretation of an agreement must be based not on the subjective intention of the
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`4250561v.1
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`10
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`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
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`parties, but on the objective words of their agreement. Novamedix Ltd. V. NDM
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`Acguisition Corp., 166 F.3d 1177, 1180, 49 U.S.P.Q.2d 1613, 1616, n.7 (Fed. Cir. 1999);
`
`Paradyme Alloys, LLC v. General Motors Corp, 2004 TTAB Lexis 227.1 (EX. 12).
`
`Opposers’ Motion asks the Board to interpret the Settlement Agreement in a
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`manner that is contrary to the document’s express language. Opposers claim, essentially,
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`that “the Settlement Agreement is tantamount to a covenant not to secure a corresponding
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`use-based registration of CIPRIANI alone.” (Ex. 2, 117). Applicant not only disagrees
`
`with this position, but Opposers’ position is contrary to the plain language of the
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`Settlement Agreement.
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`It is difficult to understand how Opposers can maintain that the
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`Settlement Agreement is plain on its face while simultaneously arguing that the Board
`
`needs to add words to that agreement that were not present when the Settlement
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`Agreement was negotiated and signed.
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`Opposers focus their argument on the “providing that” language contained in
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`paragraph 2 of the Settlement Agreement.
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`(Ex. 11, 8-10).
`
`Paragraph 2 provides:
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`“Arrigo may conduct any business it chooses to engage in, providing that it is designated,
`
`with or without the bartender logo, as ‘Cipriani’ with the identity of the product or
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`service offered or any other descriptive term or name except use of the word ‘hotel’ in
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`connection therewit
`
`.” (Ex. 1, 112). Again, Opposers misread the scope of this provision.
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`This provision triggers whether Opposers consent to Applicant’s use of the CIPRIANI
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`mark, as set forth in paragraph 3 (which explicitly references paragraph 2). Id., 113. The
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`Settlement Agreement simply does not contain an express prohibition against Applicant’s
`
`1 Decisions of the Trademark Trial and Appeal Board designated as nonprecedential may be
`cited as persuasive authority. Citation of Opinions of the Trademark Trail and Appeal Board,
`Official Gazette Notices (Dec. 27, 2006).
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`1 1
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`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
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`right to use and seek registration of the CIPRIANI mark; it merely allows Opposers to
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`oppose such use and registration?
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`The case law relied upon by Opposers does not support their urged conclusion.
`
`Neither Hamilton Brown Shoe Co V. The Sam B. Wolf Sons Co., 39 F.2d 272, 5 U.S.P.Q
`
`338 (C.C.P.A. 1930), or California Packing Corp. V. Sun-Maid Raisin Growers of
`
`California, 64 F.2d 370, 17 U.S.P.Q. 225 (C.C.P.A. 1933), involved an agreement that
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`included provisions like the ones at issue here.
`
`(Ex. 14 and 15). Rather, the contracts in
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`the Hamilton Brown Shoe and California Packing Corp. cases, unlike here, contained
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`clear prohibitions against the use of the applied-for trademarks and, unlike here, did not
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`hinge use of the trademarks at issue in the contracts upon consent to registration. These
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`cases plainly to not assist Opposers’ attempt to add restrictions to the Settlement
`
`Agreement out of whole cloth.
`
`2.
`
`Applicant’s Post-Settlement Conduct Only Confirms
`The Absence Of Any Restriction On Its Right To Use
`and Seek Registration Of The CIPRIANI Mark.
`
`Opposers argue that Applicant’s post-settlement conduct somehow confirms that
`
`the Settlement Agreement
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`restricts Applicant’s ability to use and/or
`
`register the
`
`CIPRIANI mark.
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`(Ex. 11 at 4-5). Applicant has indeed used, sought to register, and has
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`registered a number of marks that include the word CIPRIANI and other descriptive
`
`terms, such as CIPRIANI DOLCI, CIPRIANI FASHION, CIPRIANI FOOD, and
`
`CIPRIANI WALL STREET.
`
`(Ex. 8). As the Settlement Agreement expressly provides,
`
`the Settlement Agreement prohibited Applicant’s use of the
`2 Opposers also argue that
`CIPRIANI mark alone because paragraph 4 of that agreement provides for a phase-out of
`“the present inventory of products and packaging until the same is exhausted that currently
`contains only the name “Cipriani.” Opposers’ (Ex. 1, 1l4). No prohibition is provided.
`Instead,
`it merely indicates, as is common, that goods in contention when the litigation
`commenced could be disposed of without further ado.
`
`4250561v.1
`
`12
`
`

`
`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
`
`Applicant could seek registration of such marks without facing objection or opposition
`
`from Opposers because Opposers expressly consented to that
`
`in the Settlement
`
`Agreement. Ex. 1, 1l3. After acquiring several such registrations, and being subject to
`
`Opposers’ bad faith conduct in the United Kingdom, Applicant sought registration of the
`
`instant CIPRIANI mark despite the possibility of Opposers objection and/or opposition to
`
`such registration. App1icant’s post—settlement conduct proves nothing more than that
`
`Applicant was willing to enjoy the peace provided by the Settlement Agreement until
`
`confronted with Opposers’ bad faith conduct and unclean hands.
`
`Opposers argue that the Settlement Agreement should be interpreted in its favor
`
`because Applicant has somehow discussed that agreement in an “expedient and self-
`
`contradictory manner” before the Trademark Office.
`
`(Ex. 11 at 5). This is a contested
`
`issue of fact, but even a cursory look at Applicant’s statements reveal that they were
`
`entirely consistent and accurate. First, Applicant asserted that the “Settlement Agreement
`
`did not address the registration or ownership of the mark Cipriani. ...” (Opposers’ Ex. 2
`
`at 2). Indeed, the Settlement Agreement is silent on the issue of Applicant’s ability to use
`
`and/or register the CIPRIANI mark. Although it expressly prohibits Opposers from
`
`seeking such a registration, it does not impose a corresponding restriction on Applicant.
`
`Ex. 1, 111.
`
`Second, Applicant asserted that Opposers’ predecessors “have consented to the
`
`use and registration of the mark CIPRIANI, with the identity of products and services,
`
`....” (Opposers’ Ex. 16 at 2). Paragraph 2 of the Settlement Agreement provides that
`
`“Arrigo [Cipriani] may conduct any business it chooses to engage in, providing that it is
`
`designated
`
`as ‘Cipriani’ with the identity of the product or service offered or any other
`
`4250561v.1
`
`131
`
`

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`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
`
`descriptive terms or name except use of the word ‘hotel’
`
`in connection therewith.”
`
`Opposers expressly consented to registration of any such marks.
`
`(Ex. 1, 1l3). Thus
`
`Applicant’s statements were entirely true and accurate.
`
`Third, Opposers contend that Applicant provided a contradictory statement to the
`
`Trademark Office in stating that Opposers’ predecessors consented to use and registration
`
`of the CIPRIANI mark by Arrigo Cipriani.
`
`(Ex. 11 at 5). This statement, made in
`
`response to an Office Action,
`
`is part of a discussion of the Settlement Agreement’s
`
`provisions.
`
`(Opposers’ Ex. 6 at 1). Applicant explicitly states that the Settlement
`
`Agreement provides that it may use the mark CIPRIANI with the identity or the product
`
`or service offered (except for the term “hotel”) and that Opposers’ predecessors consent
`
`to such registration.
`
`Id. This description accurately summarizes paragraphs 2 and 3 of
`
`the Settlement Agreement. (Ex. 1, 112,3).
`
`Thus, neither Applicant’s post—settlement conduct nor its statements to the
`
`Trademark Office about the Settlement Agreement lend any credit to Opposers’ attempt
`
`to add terms to that agreement. Opposers should not be permitted to add restrictions to
`
`the Settlement Agreement a decade after its execution. Rather, Opposers’ opposition to
`
`Applicant’s registration of the CIPRIANI mark must be premised upon the likelihood of
`
`confusion between Opposers’ mark and that of Applicant. As Opposers realize that no
`
`potential for such confusion exists, they are attempting to evade this issue by relying on
`
`the inapplicable and wholly absent terms of the Settlement Agreement. The Board
`
`should reject this attempt and deny Opposers’ Motion for Summary Judgment.
`
`4250561v.1
`
`14
`
`

`
`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
`
`C.
`
`Opposers’ Motion Must Fail Based on Application of the
`Unclean Hands Doctrine.
`
`Opposers made multiple (and unsuccessful) attempts to strike Applicant’s unclean
`
`hands affirmative defenses. The Board has determined that, if Applicant succeeds in
`
`proving the facts asserted in its affirmative defenses, a finding of Opposers’ unclean
`
`hands would be appropriate.
`
`(Ex. 10 at 4, 6). Opposers are continuing their pattern of
`
`attempting to prevent a full and fair decision based on the facts in dispute surrounding the
`
`Settlement Agreement.
`
`Opposers maintain that evidence of their breach of the Settlement Agreement in
`
`registering the mark CIPRIANI as a Community Trademark for hotel, restaurant, and
`
`catering services is insufficient alone to support the affirmative defense of unclean hands.
`
`(Ex. 7). This argument, even if true (which it is not), ignores the additional evidence of
`
`Opposers’ continued bad faith. For example, in violation of the Settlement Agreement,
`
`Opposers proceeded with the registration and subsequent renewal in Europe of the mark
`
`CIPRIANI.
`
`(Ex. 9). Opposers continue to maintain their opposition to Applicant’s
`
`sister-company’s Community Trademark for the mark CIPRIANI LONDON despite a
`
`re.
`
`complete lack of any intent or ability to enter this market themselves.
`
`(Ex. 6). Opposers
`
`have also sued applicant for trademark infringement in the United Kingdom.
`
`(Ex. 5). It
`
`is not only the initial violation of the Settlement Agreement
`
`that supports a finding of
`
`unclean hands, but also Opposers’ continuing bad faith in seeking to usurp the goodwill
`
`that Applicant has cultivated over 80 years while simultaneously trying to prevent
`
`Applicant from registering and using the mark CIPRIANI LONDON.
`
`4250561v.1
`
`15
`
`

`
`Oppositions: 91176217 (Parent), 91177039, 91176218, and 91177038
`
`D.
`
`Public Policy Does Not Support The Award of Summary Judgment
`in The Face of Disputed Factual Issues.
`
`Opposers argue that Applicant’s “quest for registration” of the CIPRIANI mark
`
`would “subvert[t] the fundamental policy of upholding Settlement Agreements.” (Ex. 11
`
`at 16). This assertion is flawed. The Settlement Agreement contains no restriction on
`
`Applicant’s ability to seek registration of the CIPRIANI mark. While public policy may
`
`favor the enforcement of Settlement Agreements, this policy should not be used to allow
`
`a strained contractual
`
`interpretation and justify its attempts to insert additional new
`
`provisions into a Settlement Agreement.
`
`The Settlement Agreement at
`
`issue permits Opposers to oppose Applicant’s
`
`registration of the CIPRIANI mark, but their attempt to do so on the basis of contractual
`
`estoppel is misplaced. The contract at issue contains no provision that estops Applicant
`
`from seeking to register or registering the CIPRIANI mark.
`
`4250561v.1
`
`16
`
`

`
`Oppositionsz 91176217 (Parent), 91177039, 91176218, and 91177038
`
`II.
`
`CONCLUSION
`
`For the foregoing reasons, Applicant respectfully requests that Opposers’ Motion
`
`for Summary Judgment be DENIED.
`
`Dated: February 6, 2008
`New York, New York
`
`Respectfully submitted,
`
`CIPRIANI GROUP, INC.,
`
`By its attorneys,
`
`///4/20/x/§_
`
`Marvin S. Gittes
`
`Susan N. Weller
`
`Geri L. Haight
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY & POPEO, P.C.
`Chrysler Center
`666 Third Avenue
`
`New York, NY 10017
`
`4250561v.1
`
`

`
`CERTIFICATES OF SERVICE
`
`I hereby certify that a copy ofthe foregoing was served with a Certificate of Service by
`First Class Mail, on this 6th day of February 2008 on the following:
`
`George B. Snyder
`Theodore J. Mlynar
`Ashley B. Roberts
`Kramer Levin Naftalis & Frankel LLP
`
`1177 Avenue of the Americas
`
`New York, New York 10036
`
`Attorneys for Opposers
`ORIENT-EXPRESS HOTELS, INC.
`
`Hotel Cipriani SrL
`
`
`
`425056lv.l
`
`

`
`film
`Opposition Nos. 91176217 (PARENT), 91177039, 91176218, 91177038
`Orient-Express Hotels, Inc., Hotel Cipriani SrL v. Cipriani Group, Inc.
`Cipriani Group, Inc.
`
`EXHIBIT 1
`
`

`
`'
`-
`Docket No. 92 Civ. 1686 (MP)
`
`Settlement Agreement
`
`UNITED STATES DISTRICT COURT
`- SOUTHERN DISTRICT on NEW YORK
`
`
`SEA CONTAINERS AMERICA,