Shortly after luxury residential brokerage Carolwood Estates made its official debut, the company was sued for trademark infringement by another Los Angeles-based group called Carolwood Equities LLC, which also deals in real estate.
Carolwood Equities LLC and sister firm Carolwood Capital Partners LLC v. Carolwood Partners Inc. A trademark infringement lawsuit is pending in the US District Court for the Central District of California, which filed a 13-page complaint in December. In mid-April, a joint rules report for the case was filed. The document outlines a schedule for upcoming hearings and a possible jury trial in 2024.
Plaintiff Carolwood Equities LLC, helmed by Andrew Shanfeld and Adam Rubin, said in the complaint that its business began in 2014 and has been using the Carolwood name. Attorneys for Novian & Novian allege their client’s use of the name Carolwood has been prominently displayed in past advertisements and mentioned in news media reports.
Celebrity agent Drew Fenton left Beverly Hills-based Hilton & Hyland late last year to start his own agency. In November, Fenton, veteran brokerage executive Nick Segal and Hilton & Hyland alumnus Ed Leyson announced the name of their startup: Carol Wood.
After the new Carolwood in Beverly Hills posted a social media post announcing the company’s name, some viewers asked if it was Shanfeld and Rubin’s company, the complaint said.
“At this point, it is clear that market participants in the real estate investment market, even very sophisticated ones, cannot discern genuine services provided by Plaintiff,” the complaint states.
In a statement summarized in the joint rule filing, attorneys for the defendants, Buchalter LLP, said the plaintiffs got it wrong. Fenton’s Carolwood offers different services, and its customers are more complex, so confusion between the two companies is impossible.
Shanfield and Rubin’s firm engages in private equity and real estate investments, according to its website.
Trademark infringement lawsuits involving real estate companies are not uncommon, said Doug Lipstone, a trademark attorney in the Los Angeles office of Weinberg Gonser Frost. Lipstone was not involved in the Carol Wood case.
“Trademark users must accept more risk than ever before,” Lipstone said. “The Internet has made the world a smaller place, and it’s easier for trademark holders to come across companies using similar names on the Internet, even relatively small ones.”
Changing a company name can turn into an expensive proposition if a company is ordered by a court to stop using its name. “Changing a name can cost a lot of money because so many things have to be changed, including marketing materials, signage and Internet domain names,” Lipstone said.
The court has scheduled a May 26 scheduling meeting in the Carolwood case. In the complaint, the plaintiffs are asking the defendants to stop using the name Carolwood. They also seek compensatory and punitive damages, as well as attorneys’ fees.
