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Mohegan Tribe of Indians of Connecticut V. Mohegan Tribe

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Mohegan Tribe of Indians of Connecticut V. Mohegan Tribe ****************************************************** The ``officially released'' date that appears near the beginning of each opinion is the date the opinion will be published in the Connecticut Law Journal or the date it was released as a slip opinion. The operative date for the beginning of all time periods for filing postopinion motions and petitions for certification is the ``officially released'' date appearing in the opinion. In no event will any such motions be accepted before the ``officially released'' date. All opinions are subject to modification and technical correction prior to official publication in the Connecti- cut Reports and Connecticut Appellate Reports. In the event of discrepancies between the electronic version of an opinion and the print version appearing in the Connecticut Law Journal and subsequently in the Con- necticut Reports or Connecticut Appellate Reports, the latest print version is to be considered authoritative. The syllabus and procedural history accompanying the opinion as it appears on the Commission on Official Legal Publications Electronic Bulletin Board Service and in the Connecticut Law Journal and bound volumes of official reports are copyrighted by the Secretary of the State, State of Connecticut, and may not be repro- duced and distributed without the express written per- mission of the Commission on Official Legal Publications, Judicial Branch, State of Connecticut. ****************************************************** THE MOHEGAN TRIBE OF INDIANS OF CONNECTICUT v. THE MOHEGAN TRIBE AND NATION, INC., ET AL. (SC 16166) McDonald, C. J., and Palmer, Sullivan, Callahan and Langenbach, Js.* Argued October 27, 1999Ðofficially released February 20, 2001 Counsel Joseph B. Burns, with whom was Lewis B. Rome, for the appellant (plaintiff). John J. Carta, Jr., for the appellees (defendants). Opinion PALMER, J. The plaintiff, The Mohegan Tribe of Indi- ans of Connecticut, which owns and operates the Mohegan Sun Casino in Montville, brought this action against the named defendant, The Mohegan Tribe and Nation, Inc. (Mohegan Tribe and Nation), among oth- ers,1 seeking, inter alia, injunctive relief2 for the defend- ant's alleged infringement of the plaintiff's trade name in violation of, inter alia, § 43 (a) of the Lanham Act, 15 U.S.C. § 1125 (a),3 and principles of Connecticut com- mon law.4 After a court trial, the court rejected the plaintiff's claims and rendered judgment for the defend- ant. The plaintiff appealed to the Appellate Court and we transferred the appeal to this court.5 We affirm the judgment of the trial court. The following relevant facts are set forth in the trial court's memorandum of decision. The first Native Americans referred to as Mohegans6 occupied land on the banks of the Hudson River in the region known today as New York state prior to the arrival of the European settlers. At the turn of the seventeenth cen- tury, a group of Mohegans left their tribal lands on the Hudson River and migrated to land within the borders of what is now the state of Connecticut. Various groups of Mohegans were involved in land disputes after the turn of the seventeenth century, and the leadership of these groups was splintered. In 1966, however, John Hamilton, also known as Chief Rolling Cloud, emerged as a strong tribal leader and organized efforts to reclaim tribal lands that his people had lost. In 1970, a schism developed in the tribal leadership and Hamilton left to form his own group, which was known as the Mohegan Tribe and Nation. Hamilton died in 1988, before which he designated Eleanor Fortin to succeed him. The Mohegan Tribe and Nation, which is located in south- eastern Connecticut, was incorporated in 1992. The incorporators of the Mohegan Tribe and Nation are Mohegan by virtue of ancestry. The plaintiff is a group of Native Americans residing in southeastern Connecticut whose members did not follow Hamilton when he formed the Mohegan Tribe and Nation. In March, 1994, the federal government formally acknowledged the plaintiff as a sovereign American Indian nation.7 59 Fed. Reg. 12,140 (March 15, 1994), amended by 59 Fed. Reg. 37,144 (July 20, 1994); see Mohegan Nation of Connecticut Land Claims Settlement Act of 1994, § 2, 25 U.S.C. 1775 (a) (1) (1994). Furthermore, Congress expressly has found that the plaintiff ``is the successor in interest to the aboriginal entity known as the Mohegan Indian Tribe''; 25 U.S.C. § 1775 (a) (2) (1994); and ``has existed in the geographic area that is currently the State of Connecticut for a long period preceding the colonial period of the history of the United States.'' 25 U.S.C. § 1775 (a) (3) (1994).8 The state of Connecticut also has recognized the plaintiff. See General Statutes § 47-59a (b).9 In 1996, the plaintiff commenced construction of the Mohegan Sun Casino in Montville, which today is a thriving casino opera- tion.10 The plaintiff also conducts an annual festival, known as the ``Wigwam Powwow,'' which celebrates Mohegan traditions and history through song, dance and story telling. In addition, the plaintiff makes presen- tations to schools and civic organizations regarding the Mohegan culture. In 1996, Chief Moigu Standing Bear (Standing Bear) assumed leadership of the Mohegan Tribe and Nation and, later that year, that entity became part of an organi- zation known as the Confederation of The Mohegan- Pequot American Indian Nation and Affiliated Tribes, Inc. (Confederation).11 The defendant's income is derived primarily from the sale of arts and crafts and from federal grants and membership dues. Like the plaintiff, the defendant also conducts an annual festival, known as the Rolling Cloud Powwow, and it presents programs on Mohegan tradition and culture to inter- ested members of the community. The Mohegan Tribe and Nation currently has an application pending before the Bureau of Indian Affairs seeking federal acknowl- edgment as a tribe. Additional facts will be set forth as necessary. The plaintiff brought this action seeking to enjoin the defendant from using the names ``Mohegan'' and ``Mohegan Tribe.''12 In particular, the plaintiff alleged that, ``[i]f the [defendant is] allowed to continue to . [use those names, the plaintiff's efforts] to operate the Mohegan [Sun] Casino and related facilities, to preserve the culture, heritage and traditions of, and to promote the general welfare of...theMohegan People shall continue to be harmed, all to the detriment of the [plain- tiff].'' The trial court concluded that the plaintiff had failed to establish that the defendant's use of those terms constituted an infringement upon the plaintiff's trade name under the Lanham Act or state common law and, therefore, rendered judgment in favor of the defendant. On appeal, the plaintiff contends that the trial court improperly: (1) denied trademark protection for the terms ``Mohegan'' and ``Mohegan Tribe'' under the Lanham Act; and (2) concluded that the defendant did not infringe on the plaintiff's name under state com- mon law. We disagree and, accordingly, affirm the judg- ment of the trial court. I The plaintiff first challenges the trial court's denial of trademark protection to the terms ``Mohegan'' and ``Mohegan Tribe'' under the Lanham Act. We reject this claim. Under the Lanham Act, it is unlawful for any person, in connection with goods, services or containers for goods, to use in commerce ``any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin . which . is likely to cause confusion . as to the origin, sponsorship, or approval of...[the] goods, services, or commercial activities . .'' 15 U.S.C. § 1125 (a) (1) (A) (1994). Therefore, to prevail on an infringement claim under the Lanham Act, a plaintiff must establish, first, ``that it possesses a valid, legally protectible mark13 and [sec- ond] that [a] defendant's subsequent use of a similar mark is likely to create confusion as to the origin of the [goods or services] at issue.''14 Lane Capital Man- agement, Inc. v. Lane Capital Management, Inc., 192 F.3d 337, 344 (2d Cir. 1999). The trial court concluded that the plaintiff had failed to satisfy either of these two requirements. We agree with the trial court that, under the facts and circumstances of this case, the plaintiff did not prove that it possesses a legally pro- tectible interest in the terms ``Mohegan'' and ``Mohegan Tribe'' for purposes of the Lanham Act.15 A A plaintiff asserting a claim under § 43 (a) of the Lanham Act must establish that its mark is sufficiently distinctive to be worthy of protection. E.g., id., 344. In other words, ``[t]o be valid and protectible, a mark must be capable of distinguishing the products [or services] it marks from those of others.'' Id. For purposes of determining whether a mark warrants protection under the Lanham Act, courts divide such marks ``into five general categories of distinctiveness: 1) generic; 2) descriptive; 3) suggestive; 4) arbitrary; and 5) fanciful.'' Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 142 (2d Cir. 1997). A term or phrase is generic when it refers to the genus of which the particular product, service or entity is a species. E.g., id., 143. In other words, ``[a] generic term is one commonly used to denote a product or other item or entity, one that indicates the thing itself, rather than any particular fea- ture or exemplification of it. A generic term does not merely identify a particular characteristic or quality of some thing; it connotes the basic nature of that thing.'' (Citations omitted; internal quotation marks omitted.) Blinded Veterans Assn. v. Blinded American Veterans Foundation, 872 F.2d 1035, 1039 (D.C. Cir. 1989). ``A descriptive mark describes a product's features, qualities or ingredients in ordinary language . or describes the use to which a product is put ....A suggestive mark employs terms which do not describe but merely suggest the features of the product, requiring the purchaser to use imagination, thought and percep- tion to reach a conclusion as to the nature of goods.
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