The opinion of the court was delivered by: GLASSER
GLASSER, United States District Judge:
Plaintiff Aztar Corporation ("Aztar"), the owner of two federal trademark registrations for the name TROPICANA for, inter alia, casino services, brought this trademark infringement and dilution action against defendants NY Entertainment, LLC, d.b.a. Big Apple Casino Cruises and Jubilee of the Bahamas, Inc., the owners and operators of the M/V Tropicana -- a cruise ship offering casino services -- and Fred Collins, Jr. ("Collins"), a principal of those entities. Aztar has now moved for summary judgment and defendants have cross-moved to dismiss. For the following reasons, plaintiff's motion is granted and defendants' motion is denied.
Aztar holds two registered trademarks for the name TROPICANA for hotel, restaurant, casino and entertainment services. Pl. 56.1, P 1; Def. 56.1, P 1. It has used the trade name and service mark TROPICANA since 1989 and claims use of that mark to identify casinos, through predecessors in interest and title, since 1957. Pl. 56.1, P 2; Def. 56.1, P 2.
Aztar currently owns and operates TROPICANA casinos resorts in Atlantic City and Las Vegas. Pl. 56.1, P 3; Def. 56.1, P 3. Both casinos have been in existence for substantial periods of time and generate substantial revenues. Pl. 56.1, PP 4-7, 10; Def. 56.1, PP 4-7, 10. In addition, both casinos feature the name TROPICANA in bold letters on the buildings. Pl. 56.1, P 8; Def. 56.1, P 8.
Aztar also owns two river boat casinos. Because neither casino is large enough or offers enough services, Aztar has not used the name TROPICANA in conjunction with them. It does not, however, "rule out the future use of TROPICANA for a river boat of sufficient grandeur." Pl. 56.1, PP 10-11; Def. 56.1, PP 10-11.
In 1989, Aztar learned of a casino cruise ship named the M/V TROPICANA that operated out of Florida ports. Its lawyers thereupon wrote cease and desist letters to the ship's owners
demanding that they cease using the name TROPICANA. Pl. 56.1, P 12; Def. 56.1, P 12. Aztar did not receive a response to these letters, but shortly thereafter the owners ceased operating the ship as the M/V TROPICANA; the ship then began to be operated as the Saint Lucie. Pl. 56.1, PP 13-14; Def. 56.1, PP 13-14.
Collins purchased the Saint Lucie in May, 1994, repaired and refitted it, changed its name back to M/V TROPICANA and began to operate it in February 1995 out of Miami through his companies, Jubilee of the Bahamas, Tropicana Cruises International, Inc. and Tropicana Cruises USA, Inc. Pl. 56.1, PP 15-16; Def. 56.1, P 15-16. Defendants' intention -- the "purpose of the ship" -- was to provide "Las Vegas style and type entertainment" through a "gambling cruise." Pl. 56.1, P 19; Def. 56.1, P 19. TROPICANA cruises operated out of Miami for two seasons -- 1995 and 1996 -- and then moved to New York in the Spring of 1997. Pl. 56.1, P 21; Def. 56.1, P 21. According to defendants, the M/V TROPICANA had undergone certain changes prior to the commencement of this lawsuit "to reflect the fact that the casino portion of the ship would operate in New York City as the 'Big Apple Casino'"; in addition, defendants aver that "the name Tropicana Casino Cruises was not to be used." Def. 56.1, P 20.
Plaintiff claims that certain of its vendors read of the M/V TROPICANA in June 1997 or saw it on a television program and believed it to be associated with the Aztar property in Atlantic City. Pl. 56.1, P 21.
In addition, Aztar has conducted a consumer survey which, it claims, demonstrates consumer confusion. Pl. 56.1, P 22.
In March 1995, Tropicana Cruises International filed an application to register the service mark TROPICANA for "cruise ship services." Pl. 56.1, P 23; Def. 56.1, P 23. However, in an Office Action dated September 6, 1995 (the "Office Action"), the United States Trademark Office rejected the application, citing the prior registration of TROPICANA by Aztar and noting that registration of the TROPICANA name for cruise ship services would create a likelihood of confusion. Pl. 56.1, P 24; Def. 56.1, P 24. Plaintiffs claim that "Collins and his General Counsel were on notice from that date forward that the name TROPICANA CRUISES for gaming cruise services was likely to cause confusion." Pl. 56.1, P 24; Pl. 56.1, Ex. 15. Defendants dispute this point, noting that its General Counsel had not yet been employed by them. Def. 56.1, P 24.
When Aztar learned of the application, its attorneys wrote a cease and desist letter to Tropicana Cruises International. The letter was answered by Timothy Youmans, defendants' General Counsel, who stated, in pertinent part, as follows:
This letter will serve as confirmation that TROPICANA CRUISES does not intend to use the Service Mark "Tropicana" in connection with any hotel, restaurant or casino services.
Tropicana Cruises operates out of the Port of Miami and is operational as a cruise line. The M/V Tropicana does offer restaurants and casinos for the entertainment and enjoyment of her passengers. However, neither of these services operate under the trade name "Tropicana".
Pl. 56.1, P 25; Def. 56.1, P 25.
At the July 3, 1997 hearing on Aztar's motion for a temporary restraining order, defendants' General Manager testified that
the ship is owned by Fred Collins and it has been named "Tropicana Cruise Lines" for the last five years down in the Miami area. We actually came here to operate under the name "Big Apple Casino," not "Tropicana." That's just the name of the ship itself.
Pl. 56.1, P 28, Ex. 17; Def. 56.1, P 28. Later, at a July 14, 1997 hearing, defendants' General Manager testified as follows:
Q: Did you tell this court that this ship was not going to be operating as the Tropicana Cruise Casino but as the Big Apple Cruise Casino?
Q: Is this ship going to be operating as the Tropicana Casino Cruise ship or the Big Apple Casino Cruise ship?
Mr. Webner: Have you changed the name? Have you painted over the Tropicana Cruise Line.
The Witness: Yes. As a matter of fact it has been. Big Apple was painted on the side of it and that's how we've answered the phone for the last three weeks or so.
Pl. 56.1, Ex. 16; Def. 56.1, P 29. As a consequence of this testimony, Aztar withdrew its motion for a preliminary injunction. Pl. 56.1, Ex. 16. Defendants explain that their General Manager was answering these questions to the "best of his ability" and that
the name "Tropicana Cruise Line" had never appeared on the ship. The name "Tropicana Casino Cruises" was painted on the bridge and [the General Manager] was correct that the name was painted ...