JEC II LLCv.SH Group IP Holdings, L.L.C.

Trademark Trial and Appeal Board

May 5, 2015

No. 92049165 (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.