## Facts

- A third party had long used and federally registered the “Atlantis” mark for lodging services and separately licensed the mark to both sides.
- Kerzner obtained a 1994 license authorizing use of “Atlantis” for its casino resort in The Bahamas and for advertising in the United States.
- Kerzner operated “Atlantis, Paradise Island” in The Bahamas and extensively advertised the resort to U.S. consumers, including around a 1994 reopening.
- Monarch operated a Reno property, using “Atlantis” beginning in 1992 for restaurant/bar/lounge/nightclub services, and later (1996) rebranded as “Atlantis Casino Resort.”
- Monarch’s first use of “Atlantis” for casino services occurred when the Reno resort opened under that name in April 1996.
- The parties asserted competing infringement and related claims tied to planned expansion and overlapping use of “Atlantis” for casino/resort services.
- Monarch filed multiple motions for partial summary judgment seeking rulings on priority and related trademark questions.

## Issues

1. Whether Monarch’s 1992 use of “Atlantis” for non-casino hospitality/entertainment services established priority for casino services.
2. Whether Kerzner’s operation of a foreign casino, combined with extensive U.S.-directed advertising, could qualify as “use in commerce” supporting U.S. priority for casino services.
3. Whether the territoriality principle barred Kerzner from claiming U.S. priority based on a Bahamian casino marketed to U.S. consumers.
4. Whether Monarch was entitled to partial summary judgment establishing priority for casino services as a matter of law.

## Decision

- The court held Monarch’s 1992 use for restaurant and nightlife services did not establish priority for casino services; Monarch’s casino-services use began in April 1996.
- The court rejected Monarch’s attempt to secure summary judgment on territoriality grounds, concluding the record raised triable fact questions whether Kerzner’s U.S.-directed advertising of the Bahamian casino constituted “use in commerce” for U.S. priority purposes.
- Disposition of Monarch’s partial summary judgment motions: one denied; one granted in part and denied in part; the remaining motions denied.
- The case proceeded on unresolved factual questions concerning priority, scope of rights, and related infringement elements.

## Legal Principles

- Trademark priority for a specific service category generally requires first use of the mark in commerce for that category; earlier use for different services does not automatically confer priority for casino services.
- Services that commonly co-occur (e.g., restaurants and casinos) are not necessarily “related” for priority purposes absent a showing that expansion into the later service would be naturally expected from the earlier use.
- U.S. trademark rights are territorial, but “use in commerce” under the Lanham Act may be satisfied where foreign services are marketed and promoted extensively to U.S. consumers, creating a fact question on U.S. priority.
- Federal registration and licensing history may create presumptions and colorable claims, but do not eliminate fact-intensive disputes over first use, priority, and scope as between competing users.

## Conclusion

The court largely denied Monarch’s partial summary judgment efforts, ruling that Monarch could not date casino-services priority back to its earlier non-casino uses and that Kerzner’s foreign casino operations, coupled with substantial U.S.-directed advertising, could support U.S. “use in commerce” and priority, leaving key questions for trial.


Kerzner Int'l Ltd. v. Monarch Casino & Resort, Inc., 675 F. Supp. 2d 1029 (D. Nev. 2009)