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Subject: Owner Trademarked name of HOA/Complex..
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JeffC18
(California)

Posts:3


08/12/2019 10:24 AM  
Hi Folks - I just joined the group and I have a question for you all...

A little background: Im on the HOA Board of a hotel turned condo in Palm Springs. The property was built in 1957 and at one point was a resort. Over time it went condo and today is 100% individually owned condominiums. The place has a long history and had many famous owners over time. Because of liberal HOA rules a large percentage of the units are operated year around as vacation rentals. Since its construction it has always been known under the same name.

We have discovered that one of the owners - who owns 2 units (out of 124 units on the property) has trademarked the name of the complex and is operating his rental business using the name and making it appear as if he is operator of the entire HOA. He even has listed the property on Booking.com. In some cases there has been fraud (which we have reported to the city.)

Of course the majority of owners are operating their businesses using Airbnb and are unaffected by this

The problem is that the trademark holder is misrepresenting the property and has the ability to keep us from using the name of the HOA. We would like to restore the ownership of the trademark to its rightful owner - the HOA

MY QUESTION IS:
Is this legal? Is there anything we can do to nullify the trademark?
RichardP13
(California)

Posts:3763


08/12/2019 10:28 AM  
Is it legal, yes, until challenged in court. A decent lawyer can resolve this issue in short order.

Been there, Done that
AugustinD


Posts:1886


08/12/2019 10:36 AM  
I would be checking the condo's Articles of Incorporation and seeing whether the name of the condo is registered with the state. Try this web site:
https://businesssearch.sos.ca.gov/
The one condo I know in California is listed at the aforementioned web site. Then yes, have the condo's attorney write a letter.
JeffC18
(California)

Posts:3


08/12/2019 10:52 AM  
WOW that was fast and thanks for the search link. We are incorporated pre-dating the trademark by 9 years.

No what? I want to avoid a big legal cost if at all possible...
JeffC18
(California)

Posts:3


08/12/2019 10:54 AM  
im taking this back to the Property Management company to get thier lawyer on this...

thank you!!
TimB4
(Virginia)

Posts:16411


08/12/2019 3:22 PM  
Posted By JeffC18 on 08/12/2019 10:54 AM
im taking this back to the Property Management company to get thier lawyer on this...

thank you!!




The HOA should have it's own attorney.

The Property Management Companies attorney represents them not the HOA.
SteveM9
(Massachusetts)

Posts:3296


08/12/2019 5:59 PM  
I want to avoid a big legal cost if at all possible...




That is not how lawyers or the legal process works.
PaulJ6
(New York)

Posts:184


08/13/2019 4:56 AM  
Posted By JeffC18 on 08/12/2019 10:24 AM
Hi Folks - I just joined the group and I have a question for you all...

A little background: Im on the HOA Board of a hotel turned condo in Palm Springs. The property was built in 1957 and at one point was a resort. Over time it went condo and today is 100% individually owned condominiums. The place has a long history and had many famous owners over time. Because of liberal HOA rules a large percentage of the units are operated year around as vacation rentals. Since its construction it has always been known under the same name.

We have discovered that one of the owners - who owns 2 units (out of 124 units on the property) has trademarked the name of the complex and is operating his rental business using the name and making it appear as if he is operator of the entire HOA. He even has listed the property on Booking.com. In some cases there has been fraud (which we have reported to the city.)

Of course the majority of owners are operating their businesses using Airbnb and are unaffected by this

The problem is that the trademark holder is misrepresenting the property and has the ability to keep us from using the name of the HOA. We would like to restore the ownership of the trademark to its rightful owner - the HOA

MY QUESTION IS:
Is this legal? Is there anything we can do to nullify the trademark?




I'm not an intellectual property lawyer so take this with a grain of salt.

1. Has the trademark filing been finalized? Or has it only been published for opposition? If it's only been published for opposition, then submit an objection to the US Patent and Trademark Office.

2. Wouldn't you have common-law rights to the trademark? I don't know how those would work with the trademark filing, though.

3. Watch out because if the resident validly trademarks the name, then you can get sued for intellectual property infringement and you could be subject to all sorts of damages.
NpS
(Pennsylvania)

Posts:3572


08/13/2019 5:37 AM  
Posted By PaulJ6 on 08/13/2019 4:56 AM
3. Watch out because if the resident validly trademarks the name, then you can get sued for intellectual property infringement and you could be subject to all sorts of damages.


Not a chance. The Hotel-turned-HOA had a well established prior registered use of the name. Even if the trademark was somehow valid, it would not affect someone who was already using the name in a commercial venture.

The issue is whether there is a technical distinction between HOA and rental agent under trademark law. An IP lawyer should be able to clarify.

Sikubali jukumu. Read all posts at your own risk.
NpS
(Pennsylvania)

Posts:3572


08/13/2019 5:56 AM  
Also, it is much more likely that the HOA has an infringement claim against the rental agent. Maybe not to stop the behavior entirely, but to limit how the rental agent can use the name.

Sikubali jukumu. Read all posts at your own risk.
PaulJ6
(New York)

Posts:184


08/13/2019 6:54 AM  
Posted By NpS on 08/13/2019 5:37 AM
Posted By PaulJ6 on 08/13/2019 4:56 AM
3. Watch out because if the resident validly trademarks the name, then you can get sued for intellectual property infringement and you could be subject to all sorts of damages.


Not a chance. The Hotel-turned-HOA had a well established prior registered use of the name. Even if the trademark was somehow valid, it would not affect someone who was already using the name in a commercial venture.

The issue is whether there is a technical distinction between HOA and rental agent under trademark law. An IP lawyer should be able to clarify.




I wouldn't be so certain. The HOA's common law rights would depend on a range of factors.
PaulJ6
(New York)

Posts:184


08/13/2019 6:56 AM  
Posted By PaulJ6 on 08/13/2019 6:54 AM
Posted By NpS on 08/13/2019 5:37 AM
Posted By PaulJ6 on 08/13/2019 4:56 AM
3. Watch out because if the resident validly trademarks the name, then you can get sued for intellectual property infringement and you could be subject to all sorts of damages.


Not a chance. The Hotel-turned-HOA had a well established prior registered use of the name. Even if the trademark was somehow valid, it would not affect someone who was already using the name in a commercial venture.

The issue is whether there is a technical distinction between HOA and rental agent under trademark law. An IP lawyer should be able to clarify.




I wouldn't be so certain. The HOA's common law rights would depend on a range of factors.




To add: the only thing that the HOA seems to have done was to incorporate under the same (or a similar) name as the name that the other owner later registered as a trademark. That doesn't necessarily trump (sorry to use the word) a registered trademark. The HOA's common-law priority over a registered mark may require more. It depends on the facts of how the HOA used the name and protected it.

OP, talk to an IP lawyer to sort this out. You haven't "lost", but I wouldn't give a definite answer that you've "won" based on the facts presented here, which may be just a portion of the facts. Good luck, as what the owner did is really rotten.
NpS
(Pennsylvania)

Posts:3572


08/13/2019 8:11 AM  
Posted By PaulJ6 on 08/13/2019 6:56 AM
OP, talk to an IP lawyer to sort this out.


On this, we can agree. No need for armchair opinions.

Sikubali jukumu. Read all posts at your own risk.
AugustinD


Posts:1886


08/13/2019 8:47 AM  
JeffC18, at booking.com, by any chance is the gentleman using a business name whose initials are O. L.? If so, I think I see his advertisement. At the aforementioned California Secretary of State site, I also see this business name (with initial O. L.) as belonging to a nonprofit corporate owners association (yours I bet). It sure looks to me like this gentleman is holding himself out to be the HOA. It appears that indeed, some form of fraud, business identity theft or similar is going on. From a number of web sites and:

California Penal Code Part 1, Title 13, Chapter 8 False Personation and Cheats 𖖈 - 539], Section 530.55 states that, for purposes of Chapter 8, a "person" includes a "corporation."

Section 530.5 appears to me to indicate that anyone found guilty of using another's corporate name with an intent to defraud shall face a fine or imprisonment or both.

See https://leginfo.legislature.ca.gov/faces/codes_displayText.xhtml?lawCode=PEN&division=&title=13.&part=1.&chapter=8.&article=

As a possible violation of the California penal code, you might want to review the discussion of reporting identity theft at the state attorney general web site.

I think it always pays to prepare questions in advance of any meeting with an attorney to address this situation. Consider asking an attorney about the applicability of the above here.
PaulJ6
(New York)

Posts:184


08/13/2019 8:54 AM  
Posted By NpS on 08/13/2019 8:11 AM
Posted By PaulJ6 on 08/13/2019 6:56 AM
OP, talk to an IP lawyer to sort this out.


On this, we can agree. No need for armchair opinions.




Great. I will be the first to acknowledge that my views on an IP aren't the best. I can just flag some issues.
FredS7
(Arizona)

Posts:912


08/13/2019 10:22 AM  
Having a lawyer write a letter full of scary lawyer talk would not be very expensive.

It might not work...but maybe worth a try.

RichardP13
(California)

Posts:3763


08/13/2019 11:21 AM  
I used to drive by this place twice a week for 15 years. Would eat next door at Elmers all the times.

If that is the place, I would check with your management company, as they are the LARGEST management company in the United States. It appears the people using the website are also affiliated or owned by a hotel in Austin, Texas. It appears you have a resort and HOA operating at the same time.

Been there, Done that
PaulJ6
(New York)

Posts:184


08/13/2019 11:45 AM  
Posted By FredS7 on 08/13/2019 10:22 AM
Having a lawyer write a letter full of scary lawyer talk would not be very expensive.

It might not work...but maybe worth a try.





I'm not one for legal threats.

Best approach in this situation is to try to compromise.

The HOA may well have some enforceable trademark rights. Depending on the strength of the HOA's rights, the owner might have some trademark rights as well.

OP, talk to a lawyer and see how strong the HOA's rights are. Then if it's an open-and-shut case in favor of the HOA, an aggressive posture might be warranted. But if not, just talk it out and split how the HOA and the owner can use the name.
AugustinD


Posts:1886


08/13/2019 11:50 AM  
I just found the web site to which Richard is referring. The web site address uses all of the HOA's name except for the 'owners association' part. It is hysterical. It gives an impression that multiple rooms are available and it's a full blown resort. In fact, when one goes to reserve a unit, the site offers exactly two specific units from which to use. At least at the bottom of its "history" sub-site, it states:"The hotel management remained intact for a number of years. In the early 2000’s, the front desk was closed, the management was converted, and now all of the spaces are leased and managed by individual owners. The next chapter of the Ocotillo Lodge history is still in the making!"

Tripadvisor has a couple of reviews that give the place one star out of five stars. One of the reviewers complained there is, "no customer service whatsoever!" I love it.
PaulJ6
(New York)

Posts:184


08/13/2019 12:20 PM  
OP, if the owner didn't file a "doing business as" form to let him do business under the name "O... L...", then you could file one for your local county, for use by the HOA.

He then couldn't do business as the name "O... L...", since your HOA would be the only one to be able to.

That's a corporate law issue, not a trademark issue, so that doesn't solve the issue, but it gives you one added benefit to use to protect the HOA.
RichardP13
(California)

Posts:3763


08/13/2019 1:41 PM  
One of the units is owned by the party in Texas as a LLC, describing the business as a vacation rentals/hotel. Two of the units are owned by one individual, who got one when his mom passed in 2013 and two are owned by the Association. You actually have a number of people owning multiple units.

Been there, Done that
SteveM9
(Massachusetts)

Posts:3296


08/15/2019 7:17 AM  
Personally, I wouldn't do anything until it becomes an issue. Why waste legal money over nothing?
PaulJ6
(New York)

Posts:184


08/15/2019 8:20 AM  
It might be cheaper to just change the name of the HOA and trademark the name. Likely about $2k in legal and filing fees.

Why not just do that, and then the owner who took the name wouldn't really have much use for the name that he took?
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