The Real Deal Miami

Nakash’s Setai Miami Beach sues rental site for using trademarked name and brand

Miami Beach Luxury Rentals may have already removed the Setai name from its offerings

May 03, 2016 03:00PM
By Ina Cordle

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Setai Miami Beach

The Setai Miami Beach, the luxury hotel and condominium owned by the Nakash family, has sued a South Florida discount rental site and its owner for allegedly illegally using the Setai’s trademarked name on its website.

And in an unusual twist, the trademark is actually now partly owned by the trust of Prince Alexander von Fürstenberg, son of fashion designer Diane von Fürstenberg, the suit says.

Setai Hotel Acquisition LLC sued Miami Beach Luxury Rentals and its owner, Allen Tuller, in federal court in Miami in mid-April. The suit seeks to stop Miami Beach Luxury Rentals from using the trademarked Setai name and brand.

“Nakash Holdings, owners of Setai Hotel Acquisitions (SHA) and the exclusive licensee of the Setai brand in the United States, is the exclusive operator and provider of transient rental services at the Setai Miami Beach Hotel,” Setai attorney Daniel J. Barsky of Shutts & Bowen said in a statement emailed to The Real Deal. “SHA has filed lawsuits against infringers of the Setai mark to protect the mark, the Setai brand, the hotel, and SHA’s exclusivity to use the Setai brand. SHA intends to bring additional actions against brokers and resellers as the situation merits.”

Tuller, whose founded the site in 2005, declined to comment to TRD on the pending suit.

According to his site, Miami Beach Luxury Rentals “offers private suites for up to 70% off the published hotel rates.” 

The site now offers a disclaimer: “Miami Beach Luxury Rentals has no direct affiliation with The Setai Hotel. President of Miami Beach Luxury Rentals, Allen Tuller is a Licensed Florida Realtor and also a resident at The Setai condo tower.”

Miami Beach Luxury Rentals may have already responded to the suit by removing the name. It now says it offers “5-star” suites at an unnamed hotel, in addition to suites at the St. Regis Bal Harbour Resort. Clicking on the page for “5-star oceanfront resort” leads a message: “Oh no! The page you requested could not be found.”

According to the suit, the United States Patent and Trademark Office issued a trademark for the Setai in 2001, and it was renewed in 2007 and 2012 “and is now incontestable.” The trademark was originally registered to Metropolitan Development Group LLC, which later assigned it to Lehman Brothers Holdings, which in turn assigned it to BPI LUX S.a.r.l and Alexandre von Furstenberg Living Trust, the suit says. Prince Alexander von Fürstenberg is the son of Diane von Fürstenberg and Prince Egon von Fürstenberg.

Nakash Holdings is the investment arm of the Jordache Enterprises clothing company. It was founded in 1969 by brothers Ralph, Avi and Joseph Nakash, and enjoyed success as a popular manufacturer of designer jeans in the 1980s.

The Nakash family purchased the Setai Hotel for $90 million in December 2014. The Setai was built in the 1930s and then redesigned, along with an adjacent 40-story condo tower, in 2004.

The New York-based family’s holdings also include the Victor Hotel and the Versace mansion, also known as Casa Casuararina, which the family bought at auction for $41.5 million in 2013.