This Tuesday, Webster Hall Entertainment Corp. (“Webster Hall Entertainment”), owner of the well-known Webster Hall nightclub and concert venue in New York City, sued its landlord of 25 years in connection with the parties’ ongoing trademark dispute, reinforcing the importance of consulting an experienced trademark lawyer when registering, selling or enforcing a brand name or logo.

How can a trademark lawyer help protect brand owners and their valuable intellectual property?

Webster Hall History

The Webster Hall building was built in 1886 at 125 East 11th Street, between Third and Fourth Avenues. Named in honor of famed politician Daniel Webster, the building served as a venue under the name “Webster Hall” for over 90 years for concerts, weddings, masquerade balls, rallies, and countless other New York City events.

In 1970, Unity Gallega of the United States Inc. (“Unity Gallega”) purchased the Webster Hall building and operated a private social club there named “Casa Galicia.” Unity Gallega began renting the space to rock promoter Jerry Brandt in 1980, who rebranded the venue as “The Ritz.”

In 1992, Unity Gallega leased the Webster Hall property to Webster Hall Entertainment’s predecessor, Ballingers USA, Inc., which revived the “Webster Hall” brand name. Webster Hall Entertainment has operated the venue continuously since that time, and now owns federally trademark registrations for WEBSTER HALL and several related marks.

Recently, Webster Hall Entertainment reportedly entered into an asset purchase agreement with a third party in an attempt to sell certain assets, including its “Webster Hall” trademark rights.

Webster Hall Trademark Dispute

Three weeks ago, Unity Gallega’s trademark lawyer allegedly delivered cease-and-desist correspondence to Webster Hall Entertainment, demanding that Webster Hall Entertainment, or its successor, pay a licensing fee to Unity Gallega in order to continue use of the “Webster Hall” name.

On March 7, 2017, by and through its trademark lawyer, Webster Hall Entertainment preemptively sued Unity Gallega and a related subsidiary in the U.S. District Court for the Southern District of New York (Case No. 17-cv-1687), seeking declaratory judgment that Webster Hall Entertainment has not committed trademark infringement, trademark dilution, unfair competition, deceptive trade practices or any other tortious activity in violation of federal, state or common law.

In an attempt “to remove the cloud that Defendants have cast over the Webster Hall marks,” Webster Hall Entertainment has requested that the Court:

  • declare that:
    • Unity Gallega has abandoned all rights in and to the “Webster Hall” trademark;
    • Webster Hall Entertainment has not violated any of Unity Gallega’s intellectual property rights or engaged in related tortious activity; and
    • Webster Hall Entertainment has the right to use, license and sell rights in and to the “Webster Hall” mark; and
  • permanently enjoin Unity Gallega from taking trademark enforcement action against Webster Hall Entertainment.

How a Trademark Lawyer Can Help

Many trademark-related legal risks can be minimized or eliminated entirely by working with experienced intellectual property counsel before issues arise. A well-planned legal strategy can help protect trademark owners from substantial liability or even complete loss of a valuable trademark. Additionally, a trademark lawyer can help to carefully vet names, logos, designs, slogans and other business branding features to minimize the risk of unwelcome legal surprises down the road.