The complaint alleges
that Bostany and the condo association are “gratuitously
using” the 1 Hotel and Homes trademark by producing
merchandise with 1 Homes on it, as well as petitioning the
U.S. Patent and Trademark Office to use the 1 Hotel and
Homes trademark in connection with condominium association
services, apparel, beach towels, and various other goods and
services.
“Furthermore, the Association, at the direction, inducement
and control of Bostany, has attempted to interfere with SH
Group’s trademark rights by petitioning to cancel several of
SH Group’s trademark registrations in the United States,”
the lawsuit states. “SH Group has attempted in good faith to
negotiate an amicable resolution…but Defendants have refused
to cease interfering with and infringing SH Group’s
trademark rights.” In February of last
year, Starwood Capital and LeFrak sold the luxury beachfront
hotel to Host Hotels for $610 million, but SH Hotels &
Resorts continued to operate and manage the 429-room hotel.
The property also features 155 condos that are represented
by the association. |
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1 Hotel South Beach
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Christina Lee Perry, lead attorney for SH Group, did not
respond to a request for comment.
Condo association lawyer Dania Fernandez said her clients
are not precluded from using the trademark. “It’s important
to note in 2019, the condominium association filed a
proceeding [with the U.S. Patent Office] to cancel ‘1 Hotel’
for fraud,” Fernandez said. “[SH Group’s] complaint omits
that. Also, the condominium documents referred to in the
complaint do not prohibit owners use of the 1 Hotel mark.”
The lawsuit claims the association’s use of SH Group’s
intellectual property is undermining the investments of
other unit owners, as well as breaching contractual
obligations agreed to by all 1 Hotel South Beach condo
owners. SH Group alleges the association’s use of “1 Homes”
on its website and the meeting minutes of the association’s
board meetings infringes on the trademark. The Starwood
affiliate is also contesting the association’s ability to
sell clothing and other 1 Homes-branded goods via an online
store.
“The Association’s use of a mark confusingly similar to SH
Group’s 1 Hotels & Homes in connection with condominium
services is likely to make consumers mistakenly believe
there is a connection, sponsorship, or association between
the Association and SH Group,” The complaint states. “For
instance, consumers and prospective unit owners are likely
to assume that the Association is owned and/or operated by
SH Group when that is not the case, and SH Group and the
Association may not have the same interests.”
Formerly the Roney Palace and the Gansevoort Hotel, the
property reopened in 2015 under the 1 Hotel banner. It
features three restaurants, four pool decks, 57 cabanas and
daybeds, a 14,000-square-foot gym and a 5,500-square-foot
Bamford Haybarn Spa.