A team of litigators based in Washington, D.C., and Richmond, Virginia, have secured just under $43 million in damages in a federal trademark and breach-of-contract case brought by an Atlanta-based construction engineering company.
Hunton Andrews Kurth attorneys Art Schmalz, Stephen Demm and Brian Wright represented Dewberry Engineers Inc. They secured the multimillion-dollar judgment, as well as attorneys’ fees, against Atlanta real estate development services company, Dewberry Group Inc.
D.C. attorneys Adriaen Meredith Morse Jr. of Arnall Golden Gregory, and John P. Rowley III of the Dewberry Group represented Dewberry Group in the matter.
Neither plaintiff nor defense counsel responded to requests for comment Friday.
In May of 2020, Dewberry Engineers sued Dewberry Group for trademark infringement and unfair competition practices under the Lanham Act and Virginia law. Also known as the Trademark Act of 1946, the Lanham Act is the federal statute that governs trademarks, service marks and unfair competition.
In its complaint, the plaintiff alleged four counts of infringement of federally registered service marks, after the defendants rebranded from “Dewberry Capital” to “Dewberry Group,” “Studio Dewberry,” “Dewberry Office” and “Dewbery Living,” according to court filings.
A fifth count brought by Dewberry Engineers alleged Dewberry Group had continued to breach a February 2007 confidential settlement agreement that had resolved prior litigation between the two parties, after the plaintiff sued the defendant for infringing the same marks at issue again.
Dewberry Group challenged the plaintiff’s federally registered service marks, but Judge Liam O’Grady of the U.S. District Court for the Eastern District of Virginia dismissed the defendant’s counterclaims.
Instead, the federal judge granted summary judgment to Dewberry Engineers on all five counts of the complaint and denied the defendant’s cross-motion following a three-day damages bench trial in October of 2021.
“Dewberry Group breached by using ‘Dewberry’ marks many times to promote and perform architectural-related services. It repeatedly breached by performing real estate development-related services using a ‘Dewberry’ mark instead of ‘DCC’ in Virginia,” the opinion issued by O’Grady in March read. “It also breached by rebranding to the infringing marks and using them in connection with promoting, offering, and performing real estate development services.”
In the opinion, O’Grady noted, “‘Dewberry Capital’ was the only ‘Dewberry’ name that [the] defendant could use for such services—and only outside of Virginia, Maryland, or D.C.—thus giving Defendant a limited ‘safe harbor’ from infringement.”
O’Grady issued his decision in March, but it remained sealed until this month.
Read the Opinion
Having found the litigation to be an “exceptional case” under the Lanham Act, the federal judge granted Dewberry Engineers $42,975,725.60 in damages, and awarded attorney fees.
“Dewberry Group continuously disregarded Dewberry Engineers’ trademark and contractual rights. Rather than abide by the outcome of the prior litigation and [confidential settlement agreement], defendant jettisoned the only ‘Dewberry’ mark and logo allowed by the [confidential settlement agreement], and then brazenly rolled out and used four separate infringing marks and sought federal trademarks for them,” wrote O’Grady in the decision. “Ignoring red flags including the prior litigation, defendant’s own acknowledgments of confusion risks, the [confidential settlement agreement], concerns raised by its employees, cease-and-desist letters from Dewberry, and multiple PTO refusals, Dewberry Group barreled ahead with its unlawful, all-encompassing rebranding.”
In addition to enforcing the already-entered permanent injunction, the federal judge determined “the disgorgement of profits and attorneys’ fee shifting” necessary to deter Dewberry Group “from continuing its wrongdoing, and ensure it doesn’t unjustly benefit from four years’ use of the infringing marks.”
Read the Judgment and Order