Starwood Capital affiliate sues 1 Hotel & Homes South Beach condo association for trademark infringement

The suit also contests the association’s ability to sell clothing and other 1 Homes-branded goods via an online store

TRD MIAMI /
Jun.June 30, 2020 08:45 AM
1 Hotel South Beach (Credit: Google Maps)

1 Hotel South Beach (Credit: Google Maps)

An affiliate of Starwood Capital Group is suing the condo association at 1 Hotel & Homes South Beach for trademark infringement.

In a lawsuit filed in Miami federal court earlier this month, SH Group Global IP Holdings alleges the 2399 Collins Avenue Condominium Association and its president John Bostany “embarked on a calculated strategy” to improperly use 1 Hotel and Homes branding, including logos, owned by SH Group.

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.

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.


Related Articles

arrow_forward_ios
A few of the properties in Palm Beach County (Credit: Google Maps)

Feds seek to seize 11 properties in Palm Beach County allegedly tied to money laundering

Feds seek to seize 11 properties in Palm Beach County allegedly tied to money laundering
Bay Harbor One

Bay Harbor One buyer sues to get out of condo deal, citing alleged defects

Bay Harbor One buyer sues to get out of condo deal, citing alleged defects
Stephen and Petra Levin, David Deshe and 4350 North Bay Road (Credit: Nicholas Hunt/Getty Images, LinkedIn, and Google Maps)

Drink to that: Beverage tycoon sells waterfront Miami Beach lot to Vero Water mogul

Drink to that: Beverage tycoon sells waterfront Miami Beach lot to Vero Water mogul
Gil Dezer with a rendering of Porsche Design Tower and Residences by Armani/Casa (Credit: ARX via Madison Global)

Miami judge will rule if ex-Dezer COO is entitled to more than $10M in profits

Miami judge will rule if ex-Dezer COO is entitled to more than $10M in profits
citizenM founder Rattan Chadha, Russell Galbut and a rendering of 1212 Lincoln

CitizenM buys hotel portion of Crescent Heights’ 1212 Lincoln project

CitizenM buys hotel portion of Crescent Heights’ 1212 Lincoln project
Commissioner Ricky Arriola and an aerial of Sunset Harbour in Miami Beach (Compass)

Miami Beach moves toward banning chain restaurants and stores in Sunset Harbour

Miami Beach moves toward banning chain restaurants and stores in Sunset Harbour
Diane Von Furstenberg, Brookfield Properties Bruce Flatt, and the DVF store in the Shops at Merrick Park (Getty, Google Maps)

Brookfield seeks to evict Diane Von Furstenberg at Merrick Park

Brookfield seeks to evict Diane Von Furstenberg at Merrick Park
David Martin, Rene Gonzalez and Glass 120 Ocean Drive (RGA, Google Maps)

Glass condo owners in South Beach sue Terra, architect and contractors, alleging construction defects

Glass condo owners in South Beach sue Terra, architect and contractors, alleging construction defects
arrow_forward_ios

The Deal's newsletters give you the latest scoops, fresh headlines, marketing data, and things to know within the industry.

Loading...