Hourglass District Trademark Becomes Developers' Turf Battles

  • February 27, 2018
  • /   Author Name
  • /   Intellectual Property Services,Media Coverage
Commercial Leasing Road

By: Mary Shanklin

Orlando Sentinel

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A young couple working in recent years to create the Hourglass District of shops and eateries at Curry Ford Road and Bumby Avenue has turned to the federal government to protect their brand.

Like several other Central Florida developers, Giovanni Fernandez has applied for trademark protections to better control the project he and his wife created by improving dated strip-center properties along a block three miles southeast of downtown Orlando. They hope to bring walkability and a sense of community to an area that previously had been defined by pawn shops and service stations.

“We turned that community into what it is. Buildings had been on septic and were run down. There was crime and violence,” Fernandez said. “And we now own every single building in the Hourglass District. We do not want some other business nearby to say, ‘Hey, we are the Hourglass District.’ ”

The district is home to Peppino’s Organic Italian Kitchen, an Irish pub and an educational-arts company. Leguminati vegan restaurant is set to open in spring.

Trademarks aren’t typically part of the real estate mix. The federal government grants them for certain words, names, symbols or devices that may help identify a product or service.

In recent years, though, a few Central Florida real estate entities secured trademarks and battled businesses that tried to co-opt those names. Northwest of Orlando, owners of The Villages last month settled their case against Power Corp. for launching a community called Villages of Lakeside Landing; terms were not disclosed. Two years ago, developers of Bella Collina issued cease-and-desist orders to a real estate agent who used the community’s name in marketing materials. Lake Nona developers used trademark protections to force the renaming of apartments two years ago.

More typically, developers forego the additional layer of government trademark approvals — a process that can take six to nine months if no one opposes the application and much longer if the trademark is contested, attorneys said.

In Winter Park, developer Dan Bellows has redeveloped the historic Hannibal Square area of shops, restaurants and residences west of Park Avenue. Bellows said the name “Hannibal Square” defies trademarks because it is a historic spot named for an ancient Carthaginian general. He has also been developing the 73-acre, mixed-use Ravaudage project at Lee Road and U.S. Highway 17-92 in Winter Park for years. Ravaudage, he added, has the protections that come with being incorporated.

“I have not heard of the Hourglass District, but branding and trademarking are important,” the longtime developer said.

Orlando attorney Jon Gibbs, who worked on the Hourglass District trademark application, said it doesn’t always make sense to seek protections for a district or development enclave. He cited the Milk District, which sprang up around the TG. Lee Dairy Farm east of downtown Orlando. Its name evolved “organically” among residents who live nearby there, said the attorney with Lowndes, Drosdick, Doster, Kantor & Reed. The Hourglass District is different because it was coined by Fernandez and was never considered public property, Gibbs added.

The Hourglass District name was derived from nearby Hourglass Lake, which is shaped loosely like its namesake time-keeping piece.

Even while the moniker is under consideration by the U.S. Patent and Trademark Office, Gibbs has sent a letter to a website developer asking to stop its use of the name.

Simply getting a name incorporated by the state only goes so far in terms of intellectual property protections, he added.

“You can’t have two companies with the same name,” Gibbs said. “So many people in the state of Florida start a business with a duplicate name and say in their own defense, ‘The state gave it to me.’ ”

For Fernandez, he said he would be willing to work with business owners who want to incorporate part of the Hourglass District name into their marketing but would rather fight upstart websites or businesses that try to leverage the identity he has worked for years to build.

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