Wednesday, June 10, 2009

Pardee Homes Sues Beazer Homes over SMART LIVING

On June 8, 2009, Nevada and SoCal home builder and real estate developer Pardee Homes filed a trademark infringement lawsuit against home building competitor Beazer Homes in the U.S. District Court for the District of Nevada. See Pardee Homes v. Beazer Homes USA Inc. et al, Case No. 09-cv-01038 (D. Nev. File June 8, 2009). A copy of the complaint can be downloaded here.

Pardee Homes, a subsidiary of Weyerhaeuser Real Estate Company, is the owner of the registered trademark LIVINGSMART (word mark and design mark pictured below) for “building construction and real estate development services” in Class 37). The mark has become incontestable as of October 1, 2008.

Pardee also owns several other registrations and pending applications for other “SMART” marks (covering Class 37 and/or Class 36 services) including WHERE SMART SOLUTIONS LIVE; EARTHSMART; EARTHSMART and design; HEALTHSMART; HEALTH SMART and design; WATERSMART; SMART SOLUTIONS; and ECO-SMART LIVING.

In 2008, Beazer Homes received a registration for the mark SMARTDESIGN (for planning and laying out of residential communities; Construction of residential communities; housing services, namely, repair, improvement, and construction of residential real property in class 37). Also in 2008, Beazer Homes filed applications to register the marks ESMART HOMES and ESMART BY BEAZER HOMES (both for construction services, namely, planning, laying out and construction of residential homes in class 37).

On February 20, 2009, Pardee filed Oppositions with the Trademark Trial and Appeal Board (TTAB) opposing registration of both of these marks. See Weyerhaeuser Real Estate Company; Pardee Homes and Trendmaker Homes, Inc. v. Beazer Homes Holdings Corp., Opposition Nos. 91188948 and 91188950 (T.T.A.B. February 20, 2009). Then on February 24, 2009, Pardee initiated a cancellation of Beazer’s SMARTDESIGN mark. See Weyerhaeuser Real Estate Company; Pardee Homes and Trendmaker Homes, Inc. v. Beazer Homes Holdings Corp., Cancellation No. 92050587 (T.T.A.B. February 24, 2009).

According to the complaint, Pardee learned this month (June 2009) that Beazer, despite having notice of Pardee’s portfolio of SMART marks, recently adopted the marks SMART LIVING and BUY LOW . . . LIVE SMART, both of which Pardee alleges is confusingly similar to its LIVING SMART mark.

Pardee claims that Beazer is using the SMART LIVING mark in connection with the sale of homes on its website (apparently being used in connection with a Nashville, Tennessee community – although it appears to be used in more of a fair use, descriptive sense rather than as a mark).

Pardee also claims Beazer is using SMART LIVING as the title of a magazine to promote its homes. You can check out one recent issue for yourself here (2MB PDF).

Finally, Pardee cites a June 1, 2009, press release announcing its nationwide BUY LOW, LIVE SMART sales event, which was also promoted through an e-mail blast stating that “living smart means saving money and energy with our eco-friendly home features.”

Pardee’s causes of action are for registered trademark infringement under 15 U.S.C. § 1114; federal unfair competition under 15 U.S.C. § 1125(a); and common law unfair competition.

[Update: The Las Vegas Sun reported on Friday, June 12, 2009 (link here) that Beazer had apparently altered its ad campaign in response to the lawsuit, so that instead of "BUY LOW LIVE SMART" it now reads "BUY LOW . . .LIVE WELL." While its not clear if all of Pardee's claims have been addressed, the word around town is that the two sides have settled their dispute. I guess Pardee would say that Beazer made the "SMART" decision. ].

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