Shutts & Bowen LLP is pleased to announce that a trial team led by Partner and Intellectual Property Practice Group Co-Chair Woodrow “Woody” Pollack secured a significant jury verdict on behalf of their client, Thomas A. Drummond, and affiliated entities, in a federal trademark dispute involving the Marco Beach Ocean Resort in Marco Island.
Following a weeklong trial in the U.S. District Court for the Middle District of Florida’s Fort Myers Division, the jury deliberated for approximately 95 minutes before finding that Drummond and the other Defendants did not infringe on the Plaintiff developer’s alleged trademark rights related to the name of the condominium development and its associated crest design.
In an additional significant victory for the Defendants, the jury also found, by clear and convincing evidence, that the developer had actually fraudulently maintained its federal trademark registration for the crest design before the United States Patent and Trademark Office (USPTO), resulting in the registration being invalidated.
The dispute arose after the developer’s hotel program, which managed rentals of privately owned condominium units at the Marco Ocean Beach Resort, ended in 2022. Individual unit owners assumed responsibility for managing and marketing their own rentals, including through online platforms like VRBO and Airbnb.
The developer subsequently sued Drummond and entities related to his rental operation alleging that their use of the Marco Beach Ocean Resort name and related imagery in connection with their rental activities infringed its trademark rights. The lawsuit asserted claims of federal trademark infringement, unfair competition and cyberpiracy, among others.
The Defendants denied the allegations and counterclaimed that the developer had fraudulently maintained its federal trademark registration for the crest design by falsely representing to the USPTO that the mark remained in continuous use for all registered services. The Defendants sought cancellation of the registration based on this alleged fraud.
“This is an important victory for our client and for property owners who have the right to use their property and accurately identify where that property is located,” said Woody. “We are particularly gratified that the jury recognized the strength of our evidence and reached its decision so quickly. Establishing fraud by clear and convincing evidence is a significant burden, and the jury’s finding that the trademark registration was fraudulently maintained was an important component of this victory.”
Woody was joined at trial by Shutts & Bowen Senior Associate Brian Paul, paralegal Katie Chambers and co-counsel Kara Jursinski Murphy with the law firm Jursinski & Murphy.
About Shutts & Bowen LLP
Shutts & Bowen LLP, established in 1910, is a full-service business law firm with approximately 280 lawyers in offices in Fort Lauderdale, Jacksonville, Miami, Orlando, Sarasota, Tallahassee, Tampa and West Palm Beach. Learn more about Shutts & Bowen at www.shutts.com.