UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA MIAMI DIVISION
VERIMARK HOSPITALITY GROUP INC., a Delaware corporation,
Plaintiff,
v.
Case No. 1:25-cv-22847-AMC
Hon. Adrienne M. Castellano United States District Judge
CORAL VERIMARK RESORTS LLC, a Florida limited liability company,
Defendant.
PLAINTIFF VERIMARK HOSPITALITY GROUP INC.'S NOTICE OF RELATED PROCEEDING BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
I. INTRODUCTION AND PURPOSE OF THE NOTICE
Plaintiff Verimark Hospitality Group Inc. ("VHG"), by and through its undersigned counsel, Calderwood & Harkness LLP, respectfully files this Notice of Related Proceeding to inform the Court of a pending administrative proceeding before the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office ("USPTO") involving the same parties and substantially overlapping issues of fact and law as the instant civil action. VHG submits this Notice pursuant to Local Rule 3.8 of the United States District Court for the Southern District of Florida, which requires each party to file a notice identifying related cases or proceedings that could affect the management or disposition of the action before this Court, and in the interest of judicial economy and coordination.
VHG submits this Notice concurrently with its Verified Complaint for Trademark Infringement, Unfair Competition, Dilution, and Related Claims (Dkt. 1) and its Motion for Preliminary Injunction (Dkt. 3), both filed on July 22, 2025. VHG brings this matter to the Court's immediate attention so that the Court may consider the existence and status of the related TTAB proceeding at the earliest practicable stage of this litigation, including in connection with the forthcoming scheduling conference and the pending preliminary injunctive relief.
II. IDENTIFICATION OF THE RELATED TTAB PROCEEDING
The related administrative proceeding is identified as follows:
Proceeding Number: Opposition No. 91/287,456
Tribunal: Trademark Trial and Appeal Board, United States Patent and Trademark Office, Alexandria, Virginia
Caption: Verimark Hospitality Group Inc. v. Coral Verimark Resorts LLC
Date Filed: December 3, 2024
Opposer: Verimark Hospitality Group Inc. ("VHG"), the Plaintiff in this action
Applicant: Coral Verimark Resorts LLC ("CVR"), the Defendant in this action
Subject Trademark Application: United States Trademark Application Serial No. 98/432,117, for the mark "VERIMARK RESORTS" (standard character word mark), filed by Coral Verimark Resorts LLC on April 15, 2024, seeking registration in International Class 043 for hotel and resort services, including temporary accommodation services, resort hotel services, and hotel reservation services
Publication Date: The subject application was published for opposition on November 5, 2024, in the Official Gazette of the United States Patent and Trademark Office, Vol. 1532, No. 44
VHG timely filed its Notice of Opposition within the statutory thirty-day opposition period, thereby instituting the inter partes proceeding before the TTAB. The proceeding was assigned to the TTAB and given Opposition No. 91/287,456.
III. GROUNDS FOR THE TTAB OPPOSITION
In its Notice of Opposition filed on December 3, 2024, VHG asserted that registration of the mark "VERIMARK RESORTS" in International Class 043 on behalf of CVR would cause a likelihood of confusion with VHG's prior federally registered marks and would damage VHG within the meaning of Section 13 of the Lanham Act, 15 U.S.C. § 1063. Specifically, VHG relied upon the following prior registrations as the basis for its opposition:
1. United States Registration No. 3,742,618 — "VERIMARK" (standard character word mark), registered on March 17, 2009, on the Principal Register of the USPTO, in International Class 043, covering hotel and resort services, hotel management services, and provision of temporary accommodation. VHG has claimed a date of first use in commerce of September 3, 2007. This registration is live, subsisting, and has been maintained through all required post-registration filings, including the filing of a Declaration of Continued Use under Section 8 and a Declaration of Incontestability under Section 15, accepted and acknowledged by the USPTO.
2. United States Registration No. 4,105,233 — "VERIMARK HOSPITALITY" (standard character word mark), registered on January 10, 2012, on the Principal Register of the USPTO, in International Class 043, covering hotel and resort services, hospitality management services, and provision of food and beverage services in connection with hotel and resort operations.
3. United States Registration No. 5,489,701 — VERIMARK "V" Design Mark (stylized design mark featuring a distinctive "V" monogram with the word "VERIMARK" beneath), registered on May 22, 2018, on the Principal Register of the USPTO, in International Class 043, covering hotel and resort services, hotel management, and provision of temporary lodging.
The TTAB opposition alleges, among other things, that CVR's applied-for mark "VERIMARK RESORTS" is confusingly similar to VHG's family of VERIMARK marks in terms of sight, sound, meaning, and overall commercial impression; that the services identified in CVR's application are identical or closely related to the services covered by VHG's prior registrations, all falling within International Class 043; that the relevant trade channels and classes of consumers are overlapping or identical; and that registration of CVR's mark would be likely to cause confusion, mistake, or deception among consumers as to the source, sponsorship, or affiliation of CVR's services, to the damage of VHG and its prior rights and accumulated goodwill.
IV. CURRENT STATUS OF THE TTAB PROCEEDING
Following the institution of Opposition No. 91/287,456, the TTAB issued a standard scheduling order establishing deadlines for the discovery and trial periods. The proceeding entered its discovery phase in accordance with the TTAB's scheduling order, and initial disclosures were exchanged between the parties.
During the discovery period, and in anticipation of VHG's filing of the instant district court action, the parties entered into a written stipulation to suspend the TTAB proceeding. On February 18, 2025, the TTAB entered an order granting the parties' stipulated motion and suspending Opposition No. 91/287,456 pending the outcome of the related district court action in this Court. The suspension was entered in accordance with TBMP § 510.02(a) and the TTAB's customary practice of suspending proceedings where a civil action involving the same marks and parties is pending in federal district court, on the ground that the district court's resolution of the trademark issues is likely to be dispositive of or directly relevant to the TTAB proceeding.
As of the date of this filing, July 22, 2025, Opposition No. 91/287,456 remains suspended before the TTAB. No substantive motions are pending in the TTAB proceeding, and no trial dates have been set. The proceeding will remain in suspended status until one of the parties moves to lift the suspension or the TTAB takes action sua sponte.
V. OVERLAPPING ISSUES BETWEEN THE DISTRICT COURT ACTION AND THE TTAB PROCEEDING
VHG brings the related TTAB proceeding to the Court's attention because the instant district court action and the TTAB opposition involve the same parties and substantially overlapping — indeed, largely coextensive — issues of fact and law. The principal areas of overlap are set forth below.
A. Identity of the Parties. Both proceedings involve VHG as plaintiff and opposer and CVR as defendant and applicant, respectively. There are no additional parties in either proceeding.
B. Common Marks and Services at Issue. Both proceedings concern CVR's adoption, use, and sought registration of marks incorporating the term "VERIMARK" in connection with hotel and resort services in International Class 043, and the asserted likelihood of confusion between CVR's marks and VHG's family of federally registered VERIMARK marks, including U.S. Registration Nos. 3,742,618; 4,105,233; and 5,489,701.
C. Overlapping Legal and Factual Issues. The core issue in the TTAB opposition — whether CVR's applied-for mark "VERIMARK RESORTS" is likely to cause confusion with VHG's prior VERIMARK marks under the multifactor test set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) — is substantially identical to the likelihood-of-confusion analysis that will be central to VHG's federal trademark infringement claim under 15 U.S.C. § 1114(1) and its unfair competition claim under 15 U.S.C. § 1125(a) in this Court, as evaluated under the multifactor test established by the Eleventh Circuit in Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999), and its progeny.
D. Claims in the District Court Action. The Verified Complaint filed in this action asserts five counts against CVR:
(1) Federal trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1);
(2) Federal unfair competition and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a);
(3) Federal trademark dilution by blurring and/or tarnishment under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c);
(4) Common law trademark infringement under the laws of the State of Florida; and
(5) Violation of the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.204.
E. Relief Sought Encompassing the TTAB Subject Matter. Among the forms of relief sought in VHG's Verified Complaint is an order directing the Commissioner for Trademarks to refuse registration of, or cancel, CVR's pending trademark application, United States Trademark Application Serial No. 98/432,117, for the mark "VERIMARK RESORTS." This is the identical application that is the subject of the TTAB opposition. The district court's authority to grant such relief is well established under Section 37 of the Lanham Act, 15 U.S.C. § 1119, which authorizes a court to order the cancellation or restriction of a registration or pending application in any action involving a registered mark. Accordingly, resolution of the district court action is expected to be dispositive of, or directly relevant to, the issues pending before the TTAB in Opposition No. 91/287,456.
F. Anticipated Dispositive Effect. Given the substantial overlap in parties, marks, services, and legal issues, VHG anticipates that the resolution of this district court action — whether by adjudication on the merits, settlement, or otherwise — will substantially resolve or render moot the suspended TTAB proceeding. This is consistent with the TTAB's own recognition, reflected in its February 18, 2025 suspension order, that the district court action is likely to have a dispositive impact on the administrative opposition.
VI. REQUEST FOR COORDINATION
VHG respectfully requests that the Court take notice of the related TTAB proceeding, Opposition No. 91/287,456, for purposes of case management and coordination. Specifically, VHG requests that the Court consider the existence of the pending (but suspended) TTAB proceeding in scheduling and managing this action, including with respect to the pace of discovery, any interim relief, and the ultimate disposition of the claims.
As noted above, the TTAB opposition remains suspended pending the outcome of this district court action, and VHG anticipates that the resolution of this case will substantially resolve or moot the TTAB proceeding. VHG will promptly notify the Court of any material developments in the TTAB proceeding, including any motion to lift the suspension, any change in the status of CVR's pending trademark application (Serial No. 98/432,117), or any other event that may bear upon the management or disposition of the instant action.
VII. CONCLUSION
For the reasons set forth above, Plaintiff Verimark Hospitality Group Inc. respectfully submits this Notice of Related Proceeding for the Court's information. VHG requests that the Court consider the existence and current suspended status of Opposition No. 91/287,456 before the Trademark Trial and Appeal Board in managing this case, and VHG stands ready to provide the Court with any additional information regarding the TTAB proceeding that may assist the Court in the administration of this action.
Dated: July 22, 2025
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Marcus Delgado, Esq. Florida Bar No. 0127493
Catherine Bloom, Esq. Florida Bar No. 0098714
Peter Vassiliev, Esq. Florida Bar No. 0114582
Wendy Schultz, Esq. Florida Bar No. 0136208
400 Brickell Avenue, Suite 3200 Miami, Florida 33131 Telephone: (305) 555-8200 Facsimile: (305) 555-8201
Email: mdelgado@calderwoodharkness.com
Email: cbloom@calderwoodharkness.com
Email: pvassiliev@calderwoodharkness.com
Email: wschultz@calderwoodharkness.com
Counsel for Plaintiff Verimark Hospitality Group Inc.
CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on July 22, 2025, a true and correct copy of the foregoing Plaintiff Verimark Hospitality Group Inc.'s Notice of Related Proceeding Before the Trademark Trial and Appeal Board was filed electronically via the Court's CM/ECF system, which will automatically serve a Notice of Electronic Filing upon all counsel of record registered to receive electronic notifications in this case, including:
Natasha K. Okonkwo, Esq. Derek S. Fuentes, Esq. Alcántara Reeves LLP 200 Las Olas Circle, Suite 700 Fort Lauderdale, Florida 33301 Telephone: (954) 555-4100
Email: nokonkwo@alcantarareeves.com
Email: dfuentes@alcantarareeves.com
Counsel for Defendant Coral Verimark Resorts LLC
By: ________
Marcus Delgado, Esq. Florida Bar No. 0127493