Judge rejects claim for ‘cirque’ name

By Liz Benston

Friday, April 23, 2004 | 11:08 a.m.

Worldwide circus troupe Cirque du Soleil has lost a more than four-year court battle in Las Vegas over the rights to the name "cirque," it was reported by In Business Las Vegas, a sister publication of the Las Vegas Sun.

The ruling could open the door for other performance groups wanting to use the "cirque" brand.

The little-known case was filed by the Montreal-based troupe in federal court in Las Vegas in December 1999 against a small Florida company that performs similar circus-like shows.

Cirque du Soleil accused Hollywood, Fla.-based Cirque Inc. of trademark infringement, trademark dilution and unfair competition under state and federal laws.

The crux of Cirque du Soleil's argument was that its company and performances had come to be known by the moniker "cirque" and that the "cirque" brand is thus protectable under federal trademark law. The performance giant also claimed that Cirque Inc. aimed to capitalize on the popularity of Cirque du Soleil shows with similar performances.

Cirque Inc., which does business as Cirque Productions and has offered a touring show called "Cirque Ingenieux," argued that "cirque" is a generic word because it is the French word for "circus" and therefore isn't a protectable trademark. Cirque Inc. also said that the "cirque" name is a term that has preceded Cirque du Soleil by hundreds of years and has been used to describe a type of circus popularized in Europe that doesn't use animals and incorporates dance, visual arts and other art forms.

A year ago this month, U.S. District Judge Lloyd George dealt the first blow to Cirque du Soleil, granting a partial motion for summary judgment in favor of Cirque Inc. and ruling that "cirque" is a generic word.

"If a foreign term is generic at the time it is introduced to the American consumer, the term cannot be subsequently acquired for exclusive use," George wrote.

This month, George granted Cirque Inc.'s motion to dismiss Cirque du Soleil's remaining claims. Those claims asserted that Cirque Inc. was using a trademark that is "confusingly similar" to its Cirque du Soleil trademark.

In a ruling dated April 5, George said the only similarity between Cirque du Soleil's trademarked name and the names used by Cirque Inc. to describe its business was "cirque"-- a generic word.

"The non-generic portions of the various marks are entirely dissimilar," George ruled.

The ruling is one of several that have been made over the years involving companies that have failed in their attempts to protect trademarks that incorporate generic words or terms, attorneys say. One such case involved Internet service provider America Online, which failed in an effort to trademark the phrase "you've got mail" to alert customers to incoming emails.

The decision prevents Cirque du Soleil from pursuing a trial to resolve disputed facts in the case and opens the door for the troupe to appeal the ruling to the 9th Circuit Court of Appeals in San Francisco.

Las Vegas attorney Michael McCue, who defended Cirque Inc. in the case, called the ruling a "complete victory" that will likely put a stop to Cirque du Soleil's attempts to prevent other productions from using the "cirque" name. He said Cirque du Soleil is likely to appeal the ruling.

McCue said Cirque du Soleil's actions would be tatamount to a restaurant claiming to be the first to popularize the term "cafe" and preventing others from using the word.

"It does not matter how much time, energy or money you spend on trying to create rights in a generic term. As a matter of law, generic terms are free for all to use," McCue said. "I think it's evident that the reason Cirque du Soleil started using 'cirque' as part of their name is that they're a French circus and now they have no right to complain when other French-style circuses use the same name."

Attorneys for Cirque du Soleil declined comment on the latest ruling. Representatives for Cirque du Soleil in Montreal did not return several calls for comment.

Neil Goldberg, the founder and artistic director of Cirque Productions, has proclaimed victory.

"They can appeal but their likelihood of winning is slim to none," Goldberg said. "Their (Cirque du Soleil) intention was to outspend our company. They scared most of those (other cirque shows) away."

Goldberg said the lawsuit has cost both companies $3 to $4 million collectively and has hurt his business, though "that's all going to be recouped."

He declined to say whether he has received a settlement as part of the conclusion of the suit.

Cirque Inc. is one of several shows using the "cirque" name that have received cease and desist letters from Cirque du Soleil owner Dream Merchant Co. in recent years. While some troupes changed their names as a result of the letters, Cirque Inc. refused to pull the name "cirque" from its corporate brand or from its performances.

At the time, Cirque du Soleil filed suit against the company on the belief that Cirque Inc. was more openly capitalizing on the "cirque" brand than others.

Cirque Inc. was founded in 1993, a decade after Cirque du Soleil began life in Montreal as a performance art group and the same year that Cirque du Soleil opened its first permanent show in Las Vegas at Treasure Island. Cirque du Soleil, which generates revenue of more than $500 million a year, will soon open its fourth show in Las Vegas at the MGM Grand resort.

Cirque Inc. has few employees compared with the cast of hundreds that make up the corporate Cirque du Soleil and performs many of its shows for corporate functions and other private parties as opposed to public shows. Most of Cirque Inc.'s shows are also staged outside of Nevada.

In its suit, Cirque du Soleil argued that the moniker "cirque" is protectable as a trademark because it has become "synonymous with Cirque du Soleil."

"Due to extensive use, the Cirque mark has become well-recognized, famous and firmly associated with Cirque du Soleil and its performances in the minds of the American public," the suit said.

The company produced consumer surveys to illustrate the point and also asserted that Cirque Inc. began capitalizing on the cirque name only after Cirque du Soleil became a well-known brand and intentionally copied the Cirque du Soleil look, confusing customers into thinking they were seeing a Cirque du Soleil show.

Goldberg disputes those claims and contends he devised the troupe after researching European-based circus performances. He says the term "cirque" stems from a longstanding performance genre known as "cirque nouveau" -- a claim also made by other "cirque" shows.

Cirque du Soleil trademarked its brand in 1995 and also holds more than two dozen other trademarks for the brand in connection with Cirque du Soleil-themed merchandise. The company doesn't hold a trademark on the word "cirque."

Cirque Inc. claimed that Cirque du Soleil didn't start demanding that others stop using the "cirque" name until 1997 -- years after the Montreal group began performing in the United States. Cirque du Soleil demanded the Florida company stop using the cirque name in 1998.

Cirque du Soleil said it only became aware of potential trademark infringement in 1997, the same year it learned of Cirque Inc.'s existence.

In his ruling, George implied that many of those issues -- including whether customers are confusing Cirque Inc. shows with Cirque du Soleil performances -- are beside the point.

"As Dream Merchant cannot assert a protectable interest in the generic cirque, any consumer confusion from the defendant's use of the generic cirque is not relevant," he wrote.

Several targets of the letters have stopped using the name while others, including Cirque de la Mer at SeaWorld in San Diego, continued to use their names while awaiting the outcome of the suit.

"SeaWorld is not a party to the litigation in question and continues to market and present Cirque de la Mer at SeaWorld in San Diego," said Julie Voss, spokeswoman for SeaWorld owner Bush Entertainment Corp.