No. 91188809 (T.T.A.B. May. 5, 2015)

JEC II LLC, The One Group LLC, and One Marks LLCv.SH Group Global IP Holdings, L.L.C.

Trademark Trial and Appeal BoardMay 5, 2015

No. 91188809 (T.T.A.B. May. 5, 2015)

Mailed: May 5, 2015 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ JEC II LLC, The One Group LLC, and One Marks LLC v. SH Group Global IP Holdings, L.L.C. Opposition No. 91187956 (parent) Opposition No. 91188809 (child) ________ JEC II LLC v. SH Group Global IP Holdings, L.L.C. Cancellation No. 92049165 (child) _______ Michael R. Gilman of Pergament Gilman & Cepeda LLP for JEC II LLC, The One Group LLC, and One Marks LLC. Stephen G. Janoski and Stephen A. Straub of Roylance, Abrams, Berdo & Goodman, L.L.P. for SH Group Global IP Holdings, L.L.C. _______ Before Bucher, Bergsman and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: On September 2, 2014, the Board issued a final decision in this matter, sustaining claims under Sections 2(d) and 43(c) of the Trademark Act, 15 This Opinion is Not a Precedent of the TTAB Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165 2 U.S.C. §§ 1052(d) and 1125(c), brought by Plaintiffs JEC II LLC, The One Group LLC, and One Marks LLC (“Opposers”) against defendant SH Group Global IP Holdings, L.L.C. (formerly known as CGG, L.L.C.) (“Applicant”). Applicant appealed our decision to the U.S. District Court for the Southern District of New York.1 The parties reached a settlement agreement to resolve their dispute, and presented a proposed Stipulated Findings of Fact and Consent Order to the Court in the appeal, which was entered on November 17, 2014. The stipulated findings of fact include the parties’ undertakings with respect to use and registration of their respective marks, including those that are the subject of this proceeding. Specifically, under the terms of the agreement, 19. [Opposers] shall not use or register (or attempt to register) any mark, slogan, trade dress, company name, trade name, or domain name that consists of or includes the term "One" or "1" in connection with [Applicant’s] goods or services (e.g., hotels, condominiums, spas, resorts, real estate services, etc.), and shall not be permitted to use any mark, slogan, trade dress, company name, trade name, or domain name that consists of or includes the terms "1 ", "1 HOTEL," or "ONE HOTEL", but [Opposers] shall be permitted to use, advertise and maintain their registrations for (or applications for registration of) certain of their "ONE" marks for [Opposers’] services (e.g., restaurants, cafes, bar services, cocktail lounges or nightclubs), as well as use and apply for new "ONE" marks for [Opposers’] services (subject to certain exceptions). 20. [Applicant] shall be permitted to use, advertise and maintain the registrations for (or applications for registration of) its "1" and "ONE" marks for its goods and services (including those at issue in the TTAB Decision), as well as use and apply for new "ONE" and "1" marks for [Applicant’s] services (subject to certain exceptions). [Applicant] shall not use any mark, slogan, trade dress, company name, trade name, or domain name that consists of or includes the word "One" or "1" in 1 SH Group Global IP Holdings, L.L.C v. JEC II, LLC, The One Group LLC, and One Marks, LLC, Civil Action No. 14-CV-7274 (DLC). Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165 3 connection with restaurants, cafes, bar services, cocktail lounges or nightclubs, except for those establishments located within 1 HOTEL- branded properties. The civil action was dismissed pursuant to the contingencies set forth in the parties’ stipulation. On November 21, 2014, the parties filed a Joint Motion for Relief from Final Judgment in this proceeding.2 It is apparent that vacatur of the Board’s September 2, 2014 decision is an essential condition of the agreement. The Consent Order directs the USPTO to not cancel Reg. No. 3349279 and to allow Serial Nos. 78926922 (1 HOTEL and design), 78926965 (1 HOTEL & RESIDENCES and design), and 78927075 (1 HOTEL & RESIDENCES NEW YORK and design) to proceed to registration. In view thereof, the Joint Motion is hereby granted, the decision dated September 2, 2014 is vacated, and Serial Nos. 78926922, 78926965, and 78927075 shall proceed to registration in due course. 2 The Board regrets the delay in processing this motion.