O.C. Seacrets, Inc. Wins Decision in Trademark Infringement & Unfair Competition Case

April 2012
Dickinson Wright PLLC is pleased to announce that O.C. Seacrets, Inc., a Caribbean-themed entertainment complex in Ocean City, Md., has successfully won a federal trademark infringement and unfair competition case before the U.S. District Court for the District of Maryland.

In April, the District Court upheld a prior decision of the U.S. Trademark Trial & Appeal Board and confirmed a jury verdict in the case, The Coryn Group II, LLC v. O.C. Seacrets, Inc., ruling in favor of O.C. Seacrets. The federal court also issued a nationwide injunction against The Coryn Group, prohibiting it (as of January 1, 2013) from using or promoting the SECRETS brand name anywhere in the United States, including on the hotel chain's Internet website.

The case centered on The Coryn Group's use of the trademark SECRETS for its luxury resort hotel chain, operating in Mexico and throughout the Caribbean. While all of The Coryn Group's resorts operated outside the United States, it had spent millions of dollars advertising those resorts throughout the U.S. as part of its Apple Vacations package. The U.S. Trademark Trial & Appeal Board had earlier ruled that the two marks, SEACRETS and SECRETS, both of which had been federally registered, were confusingly similar and, in 2008, ordered cancellation of The Coryn Group’s registration for SECRETS. The Coryn Group then appealed that decision directly to the federal court in Baltimore and that appeal triggered a federal trademark infringement and unfair completion claim, resulting in an 8-day jury trial last November.

O.C. Seacrets' legal claims focused on the issue of "reverse confusion" which occurs when the second or "junior" user of a trademark, in this case the Coryn Group, inundates the U.S. market with its financial strength and advertising power to the extent that it essentially destroys the trademark of the prior or senior user (O.C. Seacrets), erroneously leading the public to believe the senior user is actually the trademark infringer. Finding that O.C. Seacrets had proven not only the likelihood of such confusion, but also that the unlawful conduct of The Coryn Group was “willful”, the jury returned a verdict in favor of O.C. Seacrets on its federal and state trademark infringement and unfair competition claims and that verdict was then upheld by the federal court.

In expressing his satisfaction with the outcome of the case, Leighton W. Moore, the founder and owner of O.C. Seacrets, noted that: “Stopping Coryn's advertising use of SECRETS in the United States paves the way for my company to expand and franchise the SEACRETS brand to locations throughout the United States.” Sam Littlepage, lead trial counsel for O.C. Seacrets, in echoing that sentiment, noted: "The company’s valuable brand name and registered trademark was being infringed upon and destroyed by The Coryn Group. Both the jury and the court have, by their decisions, effectively halted future consumer confusion arising out of that infringement. That was an important win for both O.C. Seacrets and the consumer.”

O.C. Seacrets, Inc. was represented by Dickinson Wright PLLC attorneys: Samuel D. Littlepage, H. Jonathan Redway, Barth X. deRosa, Nicole M. Meyer, Steve D. Lustig, and Melissa A. Alcantara from the firm's Washington, D.C. office.
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