The Real Deal Miami

WCI files suit over ‘Old Palm’ name

By Vanessa Blum | January 13, 2010 02:05PM

From left: Clubhouse at the Old Palm Golf Club, a rendering of a home in the planned Old Palm Estates

What’s in the name Old Palm Golf Club?

A good deal of value, according to luxury homebuilder WCI Communities, which operates the 250-home golf community in Palm Beach Gardens.

The Florida-based company filed a federal trademark violation lawsuit Jan. 11 against developer Humming Bird Place, which chose the name Old Palm Estates for a planned community 35 miles north in Stuart in Martin County.

Attorneys for WCI Communities contend the brand names are so similar that prospective buyers could be confused and falsely believe Old Palm Estates is a related venture. The suit seeks unspecified monetary damages and to bar Humming Bird Place from using the phrase Old Palm or Old Palm Estates.

“The Old Palm Golf Club community has been ranked in Travel & Leisure’s Top 100 Residential Golf Communities for two consecutive years and is one of WCI’s most recognized communities,” the complaint states. “Fully aware of the fame and reputation for quality of plaintiff’s Old Palm Golf Club mark, the defendant intentionally adopted the confusingly similar term ‘Old Palm Estates’ as the designation for defendant’s residential real estate project.”

WCI Communities emerged from Chapter 11 bankruptcy reorganization in September 2009. The company is being represented in Florida federal court by the New York-based law firm White & Case.

Humming Bird Place could not be reached for comment and the telephone number listed on the Web site for Old Palm Estates was no longer in service. The site did not project a completion date for the 19-home Key West-style development, described as a “thoughtfully inspired, gated community.”

According to the lawsuit, WCI holds several trademark registrations for the phrase Old Palm Golf Club and has spent nearly $5 million on advertising for the six-year-old community since 2002. The starting price of homes at Old Palm Golf Club was reported last year as $1.7 million. There is a five-bedroom, 7.5-bath home is currently listed for $7.9 million.

More than 30 business entities registered in Florida contain the phrase Old Palm, according to Florida’s Division of Corporations. To prove trademark infringement, WCI Communities must show the Old Palm Golf Club brand is so distinctive in the real estate sector that consumers are likely to be confused by the two developments, said Miami intellectual property attorney James Gale.

“Assuming the allegations in the complaint can be proven, Old Palm Golf Club does have the ability to go ahead and prevent someone from using a name that would cause confusion in the geographic area,” said Gale of law firm Feldman Gale. “The test is whether there is a likelihood of confusion.”