Minnesota tribe claims Mirage pirated casino name

PRAIRIE ISLAND, Minn. - What's in a name? If you're a member of the Prairie Island Community of Mdwakanton Dakota, and that name is the trademark to your casino, there is a lot in a name - perhaps millions.

The tribe is involved in a legal dispute over ownership of its casino name and trademark, Treasure Island. On the other side is Mirage Resorts International, one of the largest hotel-casino players in Las Vegas.

The dispute has unified tribal members like never before, said tribal President Audrey Kohnen. "They take our business very seriously and, being first users, they want us to pursue all avenues to protect our right to have this name.

"All the revenues we get from this business go to support our infrastructure as far as services to our people. The roads, properties to build homes for our people, we're looking at building a facility for our elderly, we plan to add on to our clinic. You know, Steve Wynn, his money - he can take and buy Picassos. The money we use from our revenues we can go and buy dialysis machines," the president said. "This business opportunity, it's the first time in 200 years we've had the opportunity to be self-sufficient."

For his part Stephen Wynn, CEO of Mirage Resorts International, claims to have been unaware of any trademark problems. In a deposition in Las Vegas July 16, 1999, Wynn claimed he had never been advised about the Prairie Island operation until long after his casino was built. Wynn does claim credit for developing the Treasure Island trademark, particularly its world-famous sea battle matching a pirate ship against a period British war ship.

"I think we've done a very good job of iconography in identifying ... that Treasure Island is owned by The Mirage in Las Vegas. We worked very hard and I think we must have spent in advertising and other forms close to 25 to 40 million dollars doing that, just pounding it home that Treasure Island is us, in Las Vegas," said Wynn, "I think anybody else that got away with using the name Treasure Island would be piggybacking on our efforts."

President Kohnen vigorously disagrees. She cites the casino as the largest employer in all the surrounding counties. Treasure Island Casino is given the credit for raising the employment figures among tribal members 65 percent. "The last figures we got from the welfare department in Goodyear County show us minus percent. We get people from a 50-mile radius that come work at our place."

A backdrop to the proceedings is an agreement by Mirage to sell its assets and debts, including the Treasure Island name, to the MGM Grand for $4.4 billion. The Prairie Island Community is following these proceedings with extreme interest, Kohnen said.

In Wynn's deposition he acknowledged he had given as much as $6 million to defeat California's ballot initiative, Proposition 5. It was designed to legalize gaming among the tribes in California. Despite nearly $100 million spent by Nevada gaming interests to defeat the initiative, it passed by a wide margin only to be held unconstitutional. Proposition 1-A was passed handily this year to remedy the problems.

The basic facts in the trademark issue are not in dispute. In January 1990, Prairie Island opened its Treasure Island Casino on the reservation. In October 1991, Mirage Resorts conducted a trademark search that made them aware of Prairie Island's Treasure Island Casino. In July 1992, the community secured state of Minnesota trademarks registration of the Treasure Island name and initiated the process to secure federal trademark registration. In October 1993 Mirage Resorts opened Treasure Island Casino in Las Vegas, three years after Prairie Island's casino.

The battle over the trademark began heating up in October 1997 when the tribe submitted applications for federal trademark registration of the Treasure Island name. One year later the tribe's application was denied because of the Mirage Resorts' prior registration. The tribe immediately filed petitions to cancel Mirage's registrations in October 1998.

"By this time, the tribe had nearly a decade of use by the trademark," said Joe Halloran, an attorney for the tribe. "We were certainly stunned to see that Mirage had gone to the trademark and patent office and sought registration of a trademark that they knew someone else had been using for a decade."

A key requirement of making applications to the patent and trademark office is a signed representation stating that the applicant knows of no conflicting uses of the trademark. "It's a certification under penalty of perjury," said Halloran, " and we were quite shocked that Mirage felt they could make that certification."

In an interrogatory before the U.S. Patent and Trademark Office's trademark and appeal board, Treasure Island Corp., a wholly owned subsidiary of Mirage Resorts, revealed it first learned about Prairie Island's use of the Treasure Island trademark for a hotel-casino on October 21, 1991, two years before it opened the Treasure Island Hotel in Las Vegas. Edward J. Quirk reported the results to Mirage's subsidiary.

"Mirage's lawyers admitted, under oath, that they found out about us in 1991 ... We've asked for a copy of the search result and the opinion letter of the attorney. To date Mirage has claimed that they can't find it," Halloran said. He added that not only can Mirage not find the records, but neither can its attorneys.

Tribal President Kohnen said Mirage's dealings with the tribe have been marked by arrogance. "Stephen Wynn is a very hard person to contact, he's very insulated. His attorneys do his talking for him.

"Treasure Island in Minnesota is known for its customer service," the president said. "Treasure Island Mirage using our name really does affect our community. We've used that name three years before they even built Treasure Island down in Las Vegas. They knew we existed, yet they went ahead and built it anyway.

"As a government official, I need to look out for the best interest of my people and to protect our assets and the integrity of our business. That means following through with this lawsuit to the end," Kohnen said.