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Fairfax engineering firm suing Dewberry over trademark

A Northern Virginia engineering firm is suing the owner of the former Landmark Hotel on Charlottesville’s Downtown Mall for trademark infringement and breaching a confidential settlement agreement.

Dewberry Engineers Inc. filed the lawsuit against The Dewberry Group in May in the U.S. District Court for the Eastern District of Virginia in Alexandria.

On Dec. 15, the city provided an attorney for the Fairfax-based engineering firm with a trove of information on the development dating back to 2013. The Daily Progress obtained those records under a request through the Virginia Freedom of Information Act.

The lawsuit is the latest in about 12 years of legal troubles and stalled development of the hulking skeleton of a building.

The filing came after The Progress published an article on Jan. 13, 2020, about a new name for the building, which is now planned as apartments rather than a hotel.

The building’s name had been changed from from The Landmark to The Dewberry Hotel and then to The Laramore, after Joseph C. “Jack” Laramore, who designed the street-level portion of the building.

After inquiries about the namesake from NBC29, the building’s name was changed again, to Dewberry Living. The moniker is used for the Atlanta-based company’s luxury apartment buildings and may just be a working title.

However, the new moniker apparently violated a 2007 confidential settlement agreement and stirred up simmering tensions between the two companies, according to the filings. The engineering firm says its longstanding trademarks have “once again come under attack,” while The Dewberry Group has accused the company of committing fraud and called for its trademarks to be canceled.

The lawsuit seeks to stop Dewberry from using the name for business in Virginia and for damages and attorneys fees to be awarded to the engineering firm.

According to the suit, the engineering firm was founded by Sidney O. Dewberry in Arlington in 1956. It provides a variety of services related to land use and real estate development.

Dewberry Engineering received a trademark on its logo in 1999 and on a variety of different uses of the Dewberry name in 2005. It also owns the website dewberry.com.

The Dewberry Group, which also uses the name Dewberry Capital, is owned by John Dewberry, a former Georgia Tech and Canadian Football League quarterback who bought the unfinished Charlottesville hotel at auction for $6.25 million in 2012.

Litigation between the two entities started after the engineering firm filed a complaint over trademark applications from Dewberry Capital in 2006.

The two sides reached a settlement agreement to end the lawsuit in 2007. The agreement allows Dewberry Capital to use Dewberry Capital for business except for any “real estate development or related services” in Virginia, Maryland or Washington, D.C. Any business in those three places was barred from carrying the Dewberry name, per the engineering firm.

The agreement states The Dewberry Group “will not use the word DEWBERRY in the name of, or as a [trademark] for, any architectural and/or engineering company, or in connection with any architecture or engineering services.”

The current lawsuit says The Dewberry Group is in violation of the agreement through the use of Dewberry Group, Dewberry Living and Dewberry Studio in Virginia and Dewberry Studio for architectural services in the U.S.

The engineering firm says the agreement does not permit the use of the different iterations of Dewberry, only Dewberry Capital Corp. The lawsuit says the company did not and would not have agreed to the use of Dewberry “by itself or with a range of other words that may not differentiate the two companies and their services well enough to avoid a likelihood of confusion.”

The Dewberry Group filed trademark applications for its different uses of Dewberry in 2017 and 2018 and did not rescind those applications when the engineering firm asked it to do so. The applications, which mention real estate services, were later denied by the U.S. Patent and Trademark Office.

The lawsuit says Dewberry Group and Dewberry Capital Corp. are not authorized by Virginia’s State Corporation Commission to conduct business in the commonwealth. However, it cites the January 2020 Daily Progress article as proof the Dewberry name is being used in connection with the Charlottesville project.

Dewberry’s response to the lawsuit denied all allegations and said the engineering firm could not prove any actual damages caused to the company or confusion over their titles. The suit, however, offers three examples of people mistaking the two companies.

The response also claims The Dewberry Group has been using the term Dewberry for longer and the engineering firm “does not engage in real estate development services, but rather renders services concerning land and/or site development.” Furthermore, Dewberry’s lawyers claim the company was lying to trademark officials and should thus have its trademarks revoked.

In September, Judge Liam O’Grady ruled the suit could continue and dismissed the counterclaims, saying that in the settlement agreement, Dewberry “waived its right to the exact type of challenges it is currently attempting to raise, and thus has no standing to these counterclaims.”

O’Grady ruled discovery in the case will be completed by March 30 and a final pretrial conference is scheduled for April 2.

The engineering firm’s lawyers started requesting documents from the city in January 2020, shortly after The Progress published a story on the city’s plans to conduct a structural integrity assessment of the building.

The city went forward with plans to conduct the assessment despite reservations from some high-ranking officials. It is unclear if the assessment was conducted as the company said it was not interested in letting city officials on the property.

The standoff appeared to indicate the city was interested in taking action on the unfinished building, but those plans are on the backburner because of the coronavirus pandemic.

Tech entrepreneur Halsey Minor broke ground on what was The Landmark Hotel in 2008, but construction came to a halt in 2009.

After years of efforts to push developers to finish the building, the city in March 2017 approved the framework for an incentive package for construction that provided more than $1 million in tax breaks for the property, as well as an arrangement for parking, while requiring at least $20 million in investment and substantial construction by fall 2020.

However, nine months later, a divided City Council voted the package down.

Source: www.dailyprogress.com

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