## Facts

- Shakopee Mdewakanton Sioux Community (SMSC), a federally recognized Indian tribe, has operated the Mystic Lake Casino (and related resort operations) in Minnesota since 1992.
- SMSC used “Mystic” in many variations across its casino-related goods and services and owned federal registrations for a family of “Mystic” marks.
- At the time of registration, SMSC was the only user of “Mystic” marks in the casino industry, supporting the commercial strength of the “Mystic” mark family in that field.
- FBCV, LLC, Ken Templeton, and Templeton Gaming (collectively, FBCV) purchased a casino in Henderson, Nevada in 2007 and changed its name from “Charlie Holder’s” to “Mystic Lodge Casino.”
- FBCV’s Nevada casino was substantially smaller than SMSC’s Minnesota resort and served a more limited clientele.
- When FBCV adopted the “Mystic Lodge Casino” name, it was aware of SMSC’s Mystic Lake Casino.
- SMSC sued for trademark infringement under the Lanham Act, alleging that defendants’ “Mystic Lodge Casino” name and related uses of “Mystic” created consumer confusion as to affiliation, connection, or source.
- SMSC moved for summary judgment on infringement and sought dismissal of defendants’ declaratory-relief counterclaim; defendants opposed and filed a cross-motion seeking declaratory relief of noninfringement and attorneys’ fees.
- Defendants argued SMSC’s evidence (including registration materials and confusion evidence) was not properly authenticated and therefore could not be considered on summary judgment, and contended SMSC showed only a possibility—not a likelihood—of confusion.

## Issues

1. Whether SMSC established, as a matter of law, that its federally registered “Mystic” marks were valid and protectable and that defendants’ “Mystic Lodge Casino” use was confusingly similar and likely to cause consumer confusion under the Lanham Act.
2. Whether defendants’ evidentiary objections (lack of authentication and inadmissibility) prevented the court from considering SMSC’s proof of registration and confusion at summary judgment.
3. Whether defendants were entitled to summary judgment on their declaratory-relief counterclaim (no infringement/no likelihood of confusion), or whether the counterclaim should be dismissed based on the infringement ruling.

## Decision

- The court granted SMSC’s motion for summary judgment on its Lanham Act trademark-infringement claim.
- The court rejected defendants’ authentication and admissibility objections and considered SMSC’s evidence in ruling on summary judgment.
- The court dismissed defendants’ declaratory-relief counterclaim and denied defendants’ cross-motion for summary judgment seeking a declaration of noninfringement and related relief.
- The ruling established liability for infringement and supported entry of injunctive relief and potential monetary remedies available under the Lanham Act.

## Legal Principles

- To establish trademark infringement under the Lanham Act, a plaintiff must show (1) ownership of a valid, protectable mark and (2) that the defendant’s use of a similar mark is likely to cause consumer confusion.
- Federal trademark registrations are evidence of validity and ownership and support a registrant’s right to use the marks for the registered goods and services.
- Likelihood of confusion is evaluated under the governing multi-factor test used in the Ninth Circuit; the analysis focuses on how consumers would view the marks in the marketplace.
- Sharing a dominant term within the parties’ marks can support confusion where the overall commercial impression and the parties’ services are sufficiently related.
- Evidence that a junior user knew of the senior user’s mark when adopting its own mark can support an inference favoring likely confusion.
- Actual damages are not required to prove trademark infringement; the Lanham Act authorizes remedies that may include injunctive relief, disgorgement of profits, costs, and (in appropriate cases) attorneys’ fees.
- On summary judgment, parties must support factual positions with evidence that is admissible or can be presented in admissible form at trial; authentication objections that fail on the record do not create a genuine dispute of material fact.

## Conclusion

The District of Nevada held that SMSC’s federally registered family of “Mystic” marks for casino-related services was valid and protectable and that defendants’ use of “Mystic Lodge Casino” in Nevada created a likelihood of consumer confusion, warranting summary judgment for SMSC; the court also rejected defendants’ evidentiary objections, dismissed defendants’ declaratory-relief counterclaim, and denied defendants’ request for summary judgment of noninfringement, clearing the way for injunctive and related Lanham Act remedies.


Shakopee Mdewakanton Sioux Community v. FBCV, LLC, 2011 WL 4527177 (2011)