IP Law Daily, TRADEMARK—S.D. Fla.: Some counterclaims, affirmative defenses, tossed in NEWMARK real estate company trademark dispute, (Apr 16, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Motion to dismiss counterclaims and motion to strike affirmative defenses in trademark dispute between real estate service providers granted in part and denied in part.

In a case involving real estate company trademarks, the U.S. District Court for the Southern District of Florida granted in part and denied in part a trademark owner’s motion to dismiss the defendants’ counterclaims and strike affirmative defenses. The court dismissed the counterclaims against seeking abandonment of Newmark Registrations and Newmark Realty Capital Marks (Newmark & Company Real Estate, Inc. v. Newmark Commercial Real Estate, LLC, No. 1:25-cv-24033-DSL (S.D. Fla. Apr. 13, 2026)).

Background. Jacqueline Tavares (Taveres), formerly known as Jacqueline Newmark incorporated Newmark Commercial Real Estate, LLC (NCRE) in 2016 as a nod to her family real estate business and name and started using the NEWMARK mark. Since then, NCRE has been using the NEWMARK mark in connection with commercial real estate services, including representing buyers, tenants, and sellers in real estate transactions. Taveres and NCRE (collectively, defendants) also advertised and marketed their services to the consumer public.

Meanwhile, during this time, Newmark & Company Real Estate, Inc. (Newmark & Co.) and Newmark Southern Region, LLC (collectively, plaintiffs) used the Newmark Grubb Knight Frank as their operative trademark. It was not until October 2020 that the plaintiffs “rebranded” from Newmark Grubb Knight Frank to NEWMARK. Newmark & Co. owned federal trademark registrations with Registration Nos. 6,782,741 (’741 Mark) and 6,167,012 (’012 Mark) (collectively, Newmark Registrations) that comprise the NEWMARK mark. The plaintiffs alleged that the defendants unlawfully infringed on the NEWMARK mark, wrongfully capitalizing on their goodwill and reputation. The plaintiffs brought an action for trademark infringement against the defendants alleging: (1) Federal Trademark Infringement; (2) Federal Unfair Competition; (3) Common Law Trademark Infringement; and (4) Common Law Unfair Competition.

The defendants filed an answer to the complaint, lodging six affirmative defenses and five counterclaims: (1) Federal Unfair Competition under 15 U.S.C. § 1125; (2) Common Law Trademark Infringement; (3) Common Law Unfair Competition; (4) Abandonment of Newmark Registrations; and (5) Abandonment of Newmark Realty Capital Marks. The plaintiffs moved to dismiss the defendants’ counterclaims and strike the affirmative defenses.

Shotgun pleading. The plaintiffs argued that the counterclaims must be dismissed for violating the law against shotgun pleadings because each counterclaim incorporates all preceding allegations that form the basis of each preceding count. The court found that the plaintiffs failed to credibly argue that the defendants’ answer to the complaint is a shotgun pleading when their own motion recognized that the defendants’ claims were “essentially the same” and relied on the same facts. Therefore, their attacks on the defendants’ claims undercut any possible lack-of-adequate-notice concern. Accordingly, the motion was denied because the counterclaims complied sufficiently with Rules 8 and 10.

Counterclaims I-III. The plaintiffs moved to dismiss the first three counterclaims pled in the defendants’ answer on the ground that the defendants failed to plausibly allege inherent distinctiveness, or that they acquired secondary meaning in the NEWMARK mark prior to the plaintiffs’ use of it. The court found that the defendants adequately pled prior commercial use of the NEWMARK mark to survive a motion to dismiss. The defendants alleged that since 2016 they have been using the NEWMARK mark in connection with various real estate services in Florida. Further, offering these services has been continuous for years, and both consumers and the plaintiffs themselves have been aware of the defendants’ services and the use of the mark in this space. Thus, these allegations satisfied the ownership prong.

The court noted that the plaintiffs were correct that the defendants have not shown that their use of the NEWMARK mark is inherently distinctive. The defendants’ use of the mark under the name Newmark Commercial Real Estate is a nod to Tavares’s family real estate business and name because her maiden name is Newmark and surnames are not inherently distinctive. However, the plaintiffs were wrong that the defendants could not show acquired distinctiveness via a secondary meaning now. With respect to the length and nature of the defendants’ use of the NEWMARK mark, the defendants have alleged that since January 2016, they have been using the NEWMARK mark continuously in connection with commercial real estate services in Florida. They have represented a plethora of key stakeholders in real estate transactions for retail, shopping center, and medical office space while using this mark. Further, Tavares acquired the domain www.newmarkcommercial.com (the domain for the defendants’ website) in May 2016. The court found this enough to show both the length and manner of the mark’s use on a motion to dismiss.

The defendants also alleged that they have advertised and marketed their services to the consuming public. As to the defendants’ efforts to associate the NEWMARK mark with their business, the court found the allegations sufficient at this stage. Lastly, the defendants adequately alleged actual recognition by the public sufficient to move forward with their three claims. They alleged that brokers in the industry and consumers have been aware of the defendants’ services and their use of NEWMARK since January 2016, including Newmark & Co. Moreover, the defendants alleged various communications and business transactions prior to October 2020 with representatives of the plaintiffs as early as January 19, 2016, when the defendants were using the NEWMARK mark in connection with their real estate business. Therefore, the three counterclaims contain sufficient allegations that plausibly establish secondary meaning.

The court also found that the plaintiffs failed to argue that the defendants’ trademark claims do not plausibly plead a likelihood of consumer confusion. As such, this argument was deemed waived and will not be considered. Thus, the court denied the motion to dismiss.

Counterclaim IV. The plaintiffs argued that the defendants’ abandonment claim for the ’741 Mark and ’012 Mark failed to state a plausible claim for relief. The relevant registration filing date for both the Newmark Registrations is July 29, 2019. Thus, the defendants were required to allege abandonment post-July 29, 2019; but they have not done so. Instead, they alleged that the plaintiffs did not use or continuously use the standalone mark NEWMARK for the registered services in United States commerce since 1929. Further, the defendants did not even allege that the plaintiffs ceased using the NEWMARK mark. Rather, they alleged abandonment due to the plaintiffs’ corporate rebrand in 2020, which simply concerned the word “Newmark” coupled with additional words or terms, such as “Knight Frank” or “Cornish & Carey” or “Pacific.” However, the combination of a trademark with another name does not of itself constitute abandonment. Accordingly, the court dismissed counterclaim IV with prejudice and without leave to amend.

Counterclaim V. The plaintiffs contended that the court has no jurisdiction over the defendants’ counterclaim to cancel the plaintiffs’ trademarks under Registration Nos. 2,563,004 and 4,555,611 (collectively, the Newmark Realty Capital Marks) because neither are at issue here. The court noted that Newmark Realty Capital Marks are not being challenged here, nor do they stand at the forefront of this case. The thrust of this action concerns the ‘741 Mark and ‘012 Mark. Therefore, based on the allegations before this Court, there was no adequate overlap to allow for the exercise of jurisdiction over the cancellation claim of the Newmark Realty Capital Marks. Accordingly, the motion to dismiss was granted.

Request to strike. The plaintiffs also asked the court to strike the first, third, fourth, and sixth affirmative defenses from the defendants’ answer. Thus, the court granted the request to strike the affirmative defenses in part by striking the affirmative defenses: abandonment, and failure to do equity. However, the court gave the defendants an opportunity file a motion for leave to amend to cure all deficiencies in their affirmative defenses of unclean hands and acquiescence defense.

The Case is No. 1:25-cv-24033-DSL.

Judge: Leibowitz, D.

Attorneys: Bobby A. Ghajar (Cooley LLP) for Newmark & Co. Real Estate, Inc. Laura L. Chapman (Richter & Hampton LLP) for Newmark Commercial Real Estate, LLC.

Companies: Newmark & Co. Real Estate, Inc.; Newmark Commercial Real Estate, LLC

Cases: Trademark FloridaNews