1 

UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF FLORIDA 

CASE NO. ________ 

COMPLAINT 

Plaintiff SH Group Global IP Holdings, L.L.C. (“SH Group,” as that term is further 

defined below), by and through its attorneys, allege against Defendants 2399 Collins Avenue 

Condominium Association, Inc. (the “Association”) and John P. Bostany (“Bostany”) 

(collectively, “Defendants”) as follows: 

NATURE OF THE CASE 

1. SH Group’s claims arise out of Defendants’ willful infringement of, and efforts to 

trade on, SH Group’s well-known “1” trademarks and SH Group’s hard-earned goodwill therein, 

in contravention of agreements not to use or challenge the validity of SH Group’s marks. SH 

Group’s trademarks that contain the number “1,” including 1 HOTEL & HOMES and SH 

Group’s related logos, are collectively referred to in this Complaint as the “1 HOTEL & HOMES 

Marks.” 

SH GROUP GLOBAL IP HOLDINGS, L.L.C., 

Plaintiff, 

v. 

2399 COLLINS AVENUE CONDOMINIUM 

ASSOCIATION, INC. and JOHN P. BOSTANY, 

Defendants 

JURY TRIAL DEMANDED

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2. Defendants are the Condominium Association for the condominiums located 

within SH Group’s 1 HOTEL & HOMES SOUTH BEACH property in Miami Beach, Florida, 

and the Association’s Board President, John Bostany, who is also a condominium unit owner. 

Despite written agreements to the contrary, Defendants have asserted ownership rights to 1 

HOMES as a trademark, filed applications to register 1 HOMES as a trademark, and have 

attempted to begin using SH Group’s marks for condominium association services as well as on 

merchandise. Such conduct not only breaches contractual obligations agreed to by all of the 

owners of the condominiums, but also constitutes infringement of SH Group’s trademarks. 

3. As a threshold matter, Bostany agreed to the terms of contracts, the Purchase 

Agreement (including the agreements it incorporates by reference) and the Buyer’s 

Acknowledgement—documents that he signed in connection with the purchase of his 

condominium at the 1 HOTEL & HOMES SOUTH BEACH property. The terms of these 

agreements forbid condominium owners and the Association from (1) using the trademarks and 

trade names of SH Group, and (2) interfering with the intellectual property rights of SH Group. 

As detailed below, by infringing SH Group’s valuable trademarks, asserting ownership of the 1 

HOMES mark, and seeking to cancel SH Group’s trademark registrations, Bostany has willfully 

and blatantly breached both the Purchase Agreement and the Buyer’s Acknowledgement. 

4. The Association, in turn, at the direction, inducement and control of Bostany, has 

embarked upon a calculated strategy of not only gratuitously using the 1 HOMES mark for its 

condominium association in South Beach, Florida, but also has begun producing merchandise 

using the 1 HOMES mark (the “Association’s Alleged Mark”). Moreover, the Association filed 

applications to register the Association’s Alleged Mark in connection with condominium 

association services, apparel, beach towels, and various other goods and services. In these 

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applications, the Association has fraudulently asserted that it is using the Association’s Alleged 

Mark in U.S. commerce and now purports to sell goods bearing the Association’s Alleged Mark. 

As a result of the Defendants’ conduct, consumers likely will believe that the Association is 

owned by, affiliated with, or sponsored by SH Group, and in particular that the Association is a 

joint venture or cobranding project with SH Group, which it is not. 

5. Furthermore, the Association, at the direction, inducement and control of Bostany, 

has attempted to interfere with SH Group’s trademark rights by petitioning to cancel several of 

SH Group’s trademark registrations in the United States. SH Group has attempted in good faith 

to negotiate an amicable resolution of the parties’ trademark disputes, but Defendants have 

refused to cease interfering with and infringing SH Group’s trademark rights. It now seems 

apparent that Defendants plan to continue to interfere with SH Group’s rights and expand their 

infringement of SH Group’s trademarks, regardless of SH Group’s attempts to make the 

Defendants see reason. In addition to the harm suffered by SH Group and its intellectual 

property, the residents of the 1 HOTEL & HOMES SOUTH BEACH property continue to see 

their investment in the property undermined by the willful antics of Defendants. As a result, SH 

Group has been left with no choice but to file suit to protect its brand, its shareholders’ 

investments, and its consumers from being confused. 

6. For these reasons, and as explained further below, SH Group seeks permanent 

injunctive relief to stop the Defendants’ infringing and interfering activities and contractual 

breaches, as well as monetary damages to compensate SH Group for the harm suffered as a result 

of Bostany’s contractual breaches and Defendants’ infringement of SH Group’s 1 HOTEL & 

HOMES Marks. SH Group also seeks a declaratory judgment that the Association’s four 

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pending applications for the Association’s Alleged Mark be denied by the United States Patent 

and Trademark Office (“USPTO”). 

THE PARTIES 

7. Plaintiff SH Group Global IP Holdings, L.L.C. is a Delaware limited liability 

company with its principal place of business at 591 West Putnam Avenue, Greenwich CT 06830. 

SH Group is the owner of the trademarks at issue in this case, which are licensed to and used by 

its affiliates in connection with developing, promoting, managing and/or operating their 1 

HOTEL and 1 HOTEL & HOMES-branded properties (collectively, “SH Group”). 

8. Upon information and belief, Defendant 2399 Collins Avenue Condominium 

Association, Inc. is a corporation organized and existing under the laws of the State of Florida, 

with its principal place of business located at 2399 Collins Avenue, Miami Beach, Florida 

33139. 

9. Upon information and belief, Defendant John P. Bostany is an individual who 

resides in Miami Beach, Florida, who is a member of and the Board President of the Association. 

JURISDICTION AND VENUE 

10. This action asserts claims arising under the Lanham Act, 15 U.S.C. § 1051 et seq. 

This Court has original jurisdiction over the subject matter of this action pursuant to 15 U.S.C. 

§ 1121 and 28 U.S.C. §§ 1331, 1338(a), 1367(a). This Court also has subject matter jurisdiction 

under 28 U.S.C. §§ 2201 and 2202. This Court has supplemental jurisdiction over the state-law 

claims pursuant to 28 U.S.C. §§ 1338(b) and 1367(a). In addition, because SH Group Global IP 

Holdings, L.L.C. and Defendants are citizens of different states and the matter in controversy 

exceeds $75,000 exclusive of interest and costs, this Court also has diversity jurisdiction under 

28 U.S.C. § 1332. 

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11. This Court has personal jurisdiction over the Association because, upon 

information and belief, the Association is a corporation of Florida, conducts business in Florida, 

and has committed trademark infringement in Florida. 

12. This Court has personal jurisdiction over Bostany because, upon information and 

belief, he resides in Florida. 

13. Venue in this District is proper pursuant to 28 U.S.C. § 1391(b) because both the 

Association and Bostany reside in this District. 

14. Further, the Purchase Agreement executed by all members of the Association, 

including Bostany, states that “in the event of any litigation between the parties related to this 

Purchase Agreement (i) the parties shall and hereby submit to the personal jurisdiction of the 

state and federal courts of the State of Florida, and (ii) venue shall be laid exclusively in MiamiDade County, Florida.” Thus, Defendants have submitted to personal jurisdiction and venue is 

proper in connection with the Purchase Agreement. 

SH GROUP, ITS SERVICES AND ITS 1 HOTEL & HOMES TRADEMARKS 

15. SH Group is a well-known and established hotel brand management company 

known for award-winning hotels, residences, resorts, and restaurants. SH Group’s hotels and 

resorts are an affiliate of global private investment firm Starwood Capital Group, the force 

behind some of the most recognizable and innovative hotel brands in the world, such as Westin 

Hotels & Resorts, W Hotels, Sheraton, The St. Regis, and Le Méridien. 

16. SH Group owns, among other things, 1 HOTEL & HOMES, a distinct, natureinspired lifestyle hotel and residence brand, which provides a variety of hospitality and 

residential services under the 1 HOTEL & HOMES Marks. The brand combines the best of 

environmentally sustainable architecture and design with extraordinary comfort, highly 

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personalized service and guest-driven technology. The 1 HOTEL & HOMES brand was 

developed with the simple idea that nature is not just beautiful—it changes the way we feel. This 

concept is illustrated on the www.1Hotels.com website that promotes the brand: 

17. First announced in 2006, the 1 HOTEL & HOMES brand was temporarily put on 

hold during the 2008 financial crisis. In early 2015, SH Group opened a flagship property under 

the mark “1 HOTEL & HOMES SOUTH BEACH” in Miami Beach, Florida to great critical 

acclaim for its world-class amenities and service. The property features over 400 hotel rooms 

and over 150 condominium residences, including luxurious penthouse properties. Following the 

success of the 1 HOTEL & HOMES SOUTH BEACH property, SH Group went on to launch 1 

HOTELS-brand properties in Central Park and Brooklyn Bridge Park in New York City by the 

end of 2015. To date, a total of five 1 HOTELS-brand properties have been built and are 

operating in the United States and China, with another nine under development. 

18. SH Group’s 1 HOTEL & HOMES SOUTH BEACH property upholds the natureinspired vision of the brand by channeling nature through design, meeting eco-friendly standards, 

and connecting with the local community. In the five years since its opening, the 1 HOTEL & 

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HOMES SOUTH BEACH property has won such prestigious accolades as being listed on Travel 

+ Leisure’s “It List,” the Forbes list of Best Miami Beach Resorts, and receiving the AAA Four 

Diamond Award, among others. The condominium and penthouse properties within the 1 

HOTEL & HOMES SOUTH property have been met with similar acclaim. 

19. SH Group has invested significant resources in developing and promoting its 

business under the 1 HOTEL & HOMES Marks. The 1 HOTEL & HOMES Marks appear in a 

wide variety of advertisements and promotional materials, including but not limited to brochures, 

websites, social media, magazines, and newspapers. Examples of SH Group’s use of the 1 

HOTEL & HOMES Marks are below. 

 

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20. Moreover, SH Group utilizes the 1 HOMES mark in marketing, advertising, and 

social media to distinguish its 1 HOTEL & HOMES SOUTH BEACH property from its other 

hotel properties and advertise the availability of residential real estate. Examples of SH Group’s 

use of the 1 HOMES mark are below (with red circle added in the fourth image): 

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21. In recognition of SH Group’s rights, the USPTO has granted SH Group dozens of 

trademark registrations for its 1 HOTEL & HOMES Marks (collectively, the “SH Group 

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Registered Marks”), many of which are incontestable, meaning that their distinctiveness and 

ownership cannot be challenged. SH Group also owns additional pending trademark 

applications for its 1 HOTEL & HOME Marks. SH Group’s registered and applied-for 1 

HOTEL & HOMES Marks are reflected in the attached Exhibit A. Some examples of the SH 

Group Registered Marks are set forth below. 

Mark and Reg. No. 

Reg. No. 4,266,104 Reg. No. 4,964,730 Reg. No. 4,964,731 Reg. No. 4,964,734 

Reg. No. 4,968,931 Reg. No. 4,837,289 Reg. No. 4,837,287 Reg. No. 4,832,423 

22. The SH Group Registered Marks were accepted by the USPTO without proof of 

secondary meaning or a disclaimer of the term “1,” reflecting that such term is inherently 

distinctive of SH Group’s goods and services. 

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23. The 1 HOTEL & HOMES Marks have developed tremendous goodwill and 

achieved widespread recognition and acclaim. For instance, the 1 HOTEL-brand properties in 

New York, Miami Beach, West Hollywood and Haitang Bay, China have received awards and 

accolades from the top travel and hotel publications in the country including The New York 

Times, Travel + Leisure, AAA, Condé Nast, Forbes, and Town & Country, among many others. 

Due to the long and widespread use of the 1 HOTEL & HOMES Marks, the brand has become 

synonymous with luxury hotels and residences and amenities in the minds of consumers. 

24. As a result of the long and extensive use of the 1 HOTEL & HOMES Marks, and 

the significant sales, promotion, advertising, third-party acclaim, and commercial success under 

those marks, the 1 HOTEL & HOMES Marks have achieved widespread public exposure and 

recognition such that they are highly distinctive and have become well-known. 

DEFENDANT BOSTANY’S CONTRACTUAL DUTIES 

25. Bostany is an owner of a condominium at the 1 HOTEL & HOMES SOUTH 

BEACH property and also is the Board President of the Association. 

26. Bostany is a party to the Purchase Agreement, dated January 21, 2014, in which 

he purchased a condominium unit at the 1 HOTEL & HOMES SOUTH BEACH property (the 

“Purchase Agreement”). The Purchase Agreement is also executed by 2377 Collins Avenue, 

L.P., the developer of the condominium properties at the 1 HOTEL & HOMES SOUTH BEACH 

property (“2377 Collins”). SH Group is a third-party beneficiary of the Purchase Agreement. 

27. As a result of his infringing conduct detailed below, Bostany is in breach of the 

Purchase Agreement, which contractually prevents him from interfering with the intellectual 

property of SH Group. 

28. Paragraph 32(e) of the Purchase Agreement states: 

“Under no circumstances shall the Hotel Brand Intellectual Property be deemed part of the 

Condominium Property or an appurtenance of any Unit. In no event shall the 

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Condominium, the Condominium Association nor the Unit Owners have any right, title or 

interest in any name under which the Hotel is operated or in any other aspect of the Hotel 

Brand Intellectual Property, or in any licensing arrangement between the Hotel Brand and 

any other party.” 

29. Paragraph 33(b) of the Purchase Agreement states: 

“Buyer further acknowledges and agrees that by acquiring a Unit, Buyer acquires no right, 

title, ownership or interest in the name ‘1 Hotel’ or ‘1 Hotel & Residences,’ or the marks, 

logos or other trademarks, service marks, trade names, symbols, emblems, logos, insignias, 

indicia of origin, slogans and designs used in connection with ‘1 Hotel’ or ‘1 Hotel & 

Residences’ (collectively, the ‘SH Group Marks’), all of which belong to SH Group.” 

30. Bostany’s performance under Paragraphs 32(e) and 33(b) of the Purchase 

Agreement directly and substantially benefits SH Group as the owner of the trademarks, trade 

dress, logos, service marks, trade names, symbols, emblems, logos, insignis, indicia of origin, 

slogans and designs used in connection with the 1 HOTEL & HOMES SOUTH BEACH 

property, including without limitation the 1 HOTEL & HOMES Marks. 

31. Paragraph 37 of the Purchase Agreement states: “The explanations, definitions, 

disclaimers and other provisions set forth in the Condominium Documents are incorporated into 

this Agreement as if repeated at length here.” 

32. Pursuant to this provision, the Purchase Agreement incorporates by reference the 

publicly recorded Declaration of 2399 Collins Avenue Condominium, dated December 24, 2014 

(“Declaration of Condominium”). 

33. Paragraph 21.3(a) of the Declaration of Condominium states: “No Unit Owner 

shall have the right, license or ability (or otherwise through the purchase or ownership of a Unit 

acquire any entitlement) to use for any purpose, including in connection with the sale, rental or 

marketing of his, her or its Unit) [sic] any trade name, trademark or service mark associated with 

the Hotel or the operator thereof.” The “Hotel” referenced in Paragraph 21.3(a) refers to the 1 

HOTEL & HOMES SOUTH BEACH property owned and operated by SH Group. 

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34. Bostany’s performance under Paragraph 21.3(a) of the Declaration of 

Condominium directly and substantially benefits SH Group as the owner of the trade names, 

trademarks, and service marks relating to the 1 HOTEL & HOMES SOUTH BEACH property, 

including without limitation the 1 HOTEL & HOMES Marks. 

35. The Purchase Agreement also incorporates by reference the publicly filed 

agreement entitled Declaration of Covenants, Restrictions, and Easements, dated December 26, 

2014 (the “Resort Covenants”). 

36. Paragraph 14.2 of the Resort Covenants states: “No Element or Condominium 

Owner shall have the right, license or ability ... to use for any purpose ... any trade name, 

trademark, or service mark associated with the Hotel or the operator thereof.” 

37. Bostany’s performance under Paragraph 14.2(a) of the Resort Covenants directly 

and substantially benefits SH Group as the owner of the trade names, trademarks, and service 

marks relating to the 1 HOTEL & HOMES SOUTH BEACH property, including without 

limitation the 1 HOTEL & HOMES Marks. 

38. The Purchase Agreement also incorporates by reference the publicly filed 

“Prospectus for 2399 Collins Avenue Condominium” with an effective date of August 2013 (the 

“Prospectus”). 

39. Paragraph 21(n) of the Prospectus states: “In no event shall the Condominium, the 

Condominium Association nor the Unit Owners have any right, title or interest in any name 

under which the Hotel is operated or any other aspect of the Hotel Brand Intellectual Property.” 

The “Hotel” referred to in the Prospectus is the 1 HOTEL & HOMES SOUTH BEACH property 

owned and operated by SH Group. 

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40. Bostany’s performance under Paragraph 14.2(a) of the Resort Covenants directly 

and substantially benefits SH Group as the owner of the trade names, trademarks, service marks, 

and other intellectual property relating to the 1 HOTEL & HOMES SOUTH BEACH property, 

including without limitation the 1 HOTEL & HOMES Marks. 

41. Each of the individual owners of condominiums within the 1 HOTEL & HOMES 

SOUTH BEACH property, including Bostany, agreed to the Buyer’s Acknowledgement upon 

purchasing a condominium. Bostany executed the Buyer’s Acknowledgement on January 21, 

2014. 

42. The Buyer’s Acknowledgement states: “Buyer shall not interfere with or contest 

Licensor’s rights in and to the Brand Trademarks.” The Licensor referred to in the Buyer’s 

Acknowledgement is SH Group. 

43. Bostany’s performance under the Buyer’s Acknowledgement directly and 

substantially benefits SH Group as the owner of the trade names, trademarks, service marks, and 

other intellectual property relating to the 1 HOTEL & HOMES SOUTH BEACH property, 

including without limitation the 1 HOTEL & HOMES Marks. 

44. As detailed below, by inducing, directing and encouraging the Association to use 

the Association’s Alleged Mark on the Association’s website, board meetings, and merchandise, 

as well as by using the Association’s Alleged Mark on his own LinkedIn profile, Bostany has 

blatantly and knowingly breached his contractual duties under the Purchase Agreement, and by 

extension the Declaration of Condominium, Resort Covenants, and Prospectus, as well as his 

duties under the Buyer’s Acknowledgement. By inducing, directing and encouraging the 

Association to file and continue to pursue applications before the USPTO for the Association’s 

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Alleged Mark, Bostany continues to violate these agreements and cause material harm to SH 

Group and its valuable intellectual property. 

DEFENDANTS’ INFRINGEMENT OF THE 1 HOTEL & HOMES MARKS 

45. In 2019, long after SH Group had established strong rights to its 1 HOTEL & 

HOMES Marks, the Association began referring to itself as “1 HOMES” and began a calculated 

strategy to assert ownership over and attempt to use such trademark. The Association did not 

consult with or seek permission from any employee or representative from SH Group before 

using 1 HOMES for its condominium association services, on its website, and on merchandise. 

46. On June 3, 2019, the Association, under the direction, inducement and control of 

Bostany, filed application Serial No. 88/457,662 before the USPTO to register the alleged mark 

“1 HOMES” in International Class 36 for “Building management; Real estate services, namely, 

condominium management services” (the “Association’s ‘662 Application”). Bostany signed the 

Association’s ‘662 Application on behalf of the Association, as its Board President. 

47. On June 21, 2019, counsel for SH Group contacted Bostany regarding its 

concerns concerning the Association’s ‘662 Application. When SH Group’s objections to the 

Association’s ‘662 Application were not resolved via email discussions, counsel for SH Group 

sent two letters to Bostany on August 2, 2020 and September 11, 2020, formally objecting to the 

Association’s use of and application to register the mark 1 HOMES for its condominium 

management services. SH Group requested that the Association abandon the Association’s ‘662 

Application and cease use of any and all terms confusingly similar to SH Group’s 1 HOTEL & 

HOMES Marks. The Association refused to do so. 

48. On August 22, 2019, the USPTO issued an Office Action for the Association’s 

‘662 Application, which refused registration based on a likelihood of confusion with SH Group’s 

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registrations for 1 HOTEL & HOME, 1 HOTEL & HOMES, and 1 HOTEL & HOMES SOUTH 

BEACH (the “1 HOTEL & HOMES Registrations,” as defined further below). 

49. Since receiving SH Group’s cease and desist letters and the USPTO’s refusal of 

its initial trademark application, the Association has filed three additional applications to register 

the Association’s Alleged Mark with the USPTO: (1) Serial No. 88/879,248 for “1 HOMES” in 

International Class 25 for “Hats; Shirts;” (2) Serial No. 88/914,537 for “1 HOMES” in 

International Class 21 for “mugs; glasses; and tea kettles,” in International Class 24 for “home 

goods, namely beach towels, throws and blankets,” and in International Class 28 for “stuffed 

animals and plush toys;” and (3) Serial No. 88/925,433 for “1 HOMES” in International Class 35 

for “online retail store services for clothing and accessories; On-line retail gift shops” 

(collectively, along with the Association’s ‘662 Application, the “Association’s 1 HOMES 

Applications”). 

50. Upon information and belief, the Association’s use of the Association’s Alleged 

Mark includes, without limitation, display of 1 HOMES on the website of the Association, 

located at www.2399collinsave.nabrnetwork.com/home.php, and use of the Association’s 

Alleged Mark on the minutes of the Board of Directors of the Association and related newsletters 

sent to unit owners. Examples of this use are shown below: 

Association Website Minutes of the Board 

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51. The Association’s use of a mark confusingly similar to SH Group’s 1 HOTELS & 

HOMES Marks in connection with condominium services is likely to make consumers 

mistakenly believe there is a connection, sponsorship, or association between the Association 

and SH Group. For instance, consumers and prospective unit owners are likely to assume that 

the Association is owned and/or operated by SH Group when that is not the case, and SH Group 

and the Association may not have the same interests. 

52. The Association further exacerbates the likelihood of confusion by continuing to 

use the Association’s Alleged Mark on a growing number of goods and services, misleading 

consumers further as to SH Group’s sponsorship, connection, or association with the 

Association. For example, the Association has recently begun providing an online store where 

consumers can purchase clothing and other goods bearing the Association’s Alleged Mark. 

Consumers are likely to mistakenly believe that SH Group provides, is affiliated with, or 

sponsors such online store and branded merchandise. An example of a hat bearing the 

Association’s Alleged Mark is below. 

“1 Homes Hat” 

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53. The overall look and presentation of the Association’s advertising also increases 

the likelihood of confusion. For example, the Association’s website uses images of nature 

associated with SH Group’s 1 HOTELS & HOMES SOUTH BEACH-brand property, such as 

beaches. SH Group’s 1 HOTEL & HOMES-brand properties are nature-inspired hotels and 

residences, drawing on the surrounding environment near each property. As such, SH Group’s 

advertising and marketing of the 1 HOTEL & HOMES Marks features elements of nature found 

at each of its 1 HOTEL & HOMES-brand properties. Below is an example of how SH Group 

uses its 1 HOTEL & HOMES Marks on its website in connection with the 1 HOTEL & HOMES 

SOUTH BEACH property, side-by-side with the Association’s use of the Association’s Alleged 

Mark on its own website, both of which show a beach. 

1 Hotels Website Association Website 

 

54. Bostany has further increased the likelihood of confusion between Defendants’ 

use of the Association’s Alleged Mark and SH Group’s 1 HOTEL & HOMES Marks by listing 

himself as the “Board President for 1 Homes at 1 Hotels” on his LinkedIn profile, as shown 

below. Bostany’s profile even uses one of SH Group’s distinctive 1 HOTELS logos, thus 

communicating that he is employed by SH Group. Bostany has styled his LinkedIn profile to 

inflate his role and misleadingly and falsely communicate that he is a board member or executive 

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at SH Group, as opposed to the president of the Association’s board of directors. Bostany is not 

currently, nor has he ever been, an employee or board member of SH Group or 1 Hotel & 

Homes. 

DEFENDANTS’ ATTEMPT TO CANCEL SH GROUP’S REGISTERED MARKS 

55. On October 19, 2019, the Association instituted Cancellation No. 92073091 

before the USPTO (the “Cancellation Petition”). 

56. The Cancellation Petition seeks to cancel three of SH Group’s Registered Marks: 

Reg. Nos. 4,832,423 (1 HOTEL & HOME design), 4,837,287 (1 HOTEL & HOMES design), 

and 4,837,289 (1 HOTEL & HOMES SOUTH BEACH design) (collectively, the “1 HOTEL & 

HOMES Registrations”). Further details regarding the 1 HOTEL & HOMES Registrations are 

included in Exhibit A, attached hereto. 

57. By directing, inducing, and encouraging the Association to challenge the validity 

of SH Group’s marks and file the Cancellation Petition, Bostany further breached his contractual 

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duties under the Purchase Agreement (and its related agreements) and the Buyer’s 

Acknowledgement. 

COUNT I 

BREACH OF THE PURCHASE AGREEMENT 

(Against Defendant Bostany) 

58. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 57 of this Complaint with the same force and 

effect as if herein again set forth in full. 

59. The Purchase Agreement and the agreements it incorporates by reference is a 

valid and enforceable written contract executed by Bostany and 2377 Collins, of which SH 

Group is a third-party beneficiary. 

60. The Purchase Agreement and the documents it incorporates by reference 

primarily and directly benefit SH Group as the owner of the trademarks, trade dress, logos, 

service marks, trade names, symbols, emblems, logos, insignis, indicia of origin, slogans and 

designs used in connection with the 1 HOTEL & HOMES SOUTH BEACH property, including 

without limitation the 1 HOTEL & HOMES Marks. 

61. Paragraphs 32(e) and 33(b) of the Purchase Agreement demonstrate that it was the 

clear intent of Bostany and 2377 Collins to make SH Group a third-party beneficiary of the 

Purchase Agreement and the documents it incorporates by reference, due to SH Group’s 

ownership of the 1 HOTEL & HOMES Marks, including without limitation the 1 HOTEL & 

HOMES Registrations. 

62. Paragraph 21.3(a) of the Declaration of Condominium demonstrates that it was 

the clear intent of 2377 Collins to make SH Group a third-party beneficiary of the Declaration of 

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Condominium, due to SH Group’s ownership of the 1 HOTEL & HOMES Marks, including 

without limitation the 1 HOTEL & HOMES Registrations. 

63. Paragraph 14.2 of the Resort Covenants demonstrates that it was the clear intent 

of 2377 Collins to make SH Group a third-party beneficiary of the Declaration of Condominium, 

due to SH Group’s ownership of the 1 HOTEL & HOMES Marks, including without limitation 

the 1 HOTEL & HOMES Registrations. 

64. Paragraph 21(n) of the Prospectus demonstrates that it was the clear intent of 

2377 Collins to make SH Group a third-party beneficiary of the Declaration of Condominium, 

due to SH Group’s ownership of the 1 HOTEL & HOMES Marks, including without limitation 

the 1 HOTEL & HOMES Registrations. 

65. Pursuant to the Purchase Agreement and the documents it incorporates by 

reference, Bostany agreed that neither he nor the Association had any right, title, ownership or 

interest in the 1 HOTEL & HOMES Marks, and thus that he would not use or induce the 

Association to use any trademark or service mark of SH Group. 

66. Bostany has intentionally breached the Purchase Agreement by using the 

Association’s Alleged Mark and infringing the 1 HOTEL & HOMES Marks. Upon information 

and belief, Bostany also has intentionally breached the Purchase Agreement by directing and 

inducing the Association to assert ownership of and file applications for the Association’s 

Alleged Mark, thus infringing the 1 HOTEL & HOMES Marks. 

67. These actions constitute willful and knowing violations of law and material 

breaches of the Purchase Agreement. 

68. Bostany’s failure to perform his contractual duties under the Purchase Agreement 

has damaged SH Group and, unless enjoined by the Court, will further impair the value of SH 

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Group’s marks, reputation, and goodwill. This harm constitutes an injury for which SH Group 

has no adequate remedy at law. 

69. Paragraph 15(a) of the Purchase Agreement states that “[i]n the event of any 

litigation between the parties under this Agreement, the prevailing party shall be entitled to 

reasonable attorneys’, paralegals and paraprofessionals fees and court costs at all trial and 

appellate levels.” 

70. Because Bostany has failed his contractual duties under the Purchase Agreement 

and SH Group has no adequate remedy at law to alleviate its harm resulting from Bostany’s 

contractual breaches, justice requires that the Court order specific performance by Bostany under 

the Purchase Agreement, among other remedies outlined below. 

COUNT II 

BREACH OF THE BUYER’S ACKNOWLEDGEMENT 

(Against Defendant Bostany)

71. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 70 of this Complaint with the same force and 

effect as if herein again set forth in full. 

72. The Buyer’s Acknowledgement is a valid and enforceable written contract 

between Bostany and SH Group. 

73. Pursuant to the Buyer’s Acknowledgement, Bostany agreed not to “interfere with 

or contest” SH Group’s trademark rights. 

74. Upon information and belief, Bostany has intentionally breached the Buyer’s 

Acknowledgement by directing, encouraging and inducing the Association to contest the validity 

of the 1 HOTEL & HOMES Registrations and file the Cancellation Petition. 

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75. This action constitutes a willful and knowing violation of law and a material 

breach of the Buyer’s Acknowledgement. 

76. Bostany’s failure to perform his contractual duties under the Buyer’s 

Acknowledgement has damaged SH Group and, unless enjoined by the Court, will further impair 

the value of SH Group’s marks, reputation, and goodwill. This harm constitutes an injury for 

which SH Group has no adequate remedy at law. 

77. Because Bostany has failed his contractual duties under the Buyer’s 

Acknowledgement and SH Group has no adequate remedy at law to alleviate its harm resulting 

from Bostany’s contractual breaches, justice requires that the Court order specific performance 

by Bostany under the Buyer’s Acknowledgement, among other remedies outlined below. 

COUNT III 

TORTIOUS INTERFERENCE WITH A BUSINESS RELATIONSHIP 

(Against Defendant Association) 

78. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 77 of this Complaint with the same force and 

effect as if herein again set forth in full. 

79. Under the terms of the Purchase Agreement, Buyer’s Acknowledgement, and the 

documents incorporated by reference therein, SH Group is in a business relationship with 

Bostany, as recited above. 

80. Upon information and belief, the Association is aware of the business relationship 

between SH Group and Bostany and has been aware of the business relationship since at least the 

time that the Association first attempted to use the Association’s Alleged Mark in commerce. 

81. The Association improperly, intentionally, and unjustifiably interfered in the 

relationship between SH Group and Bostany as set forth in the Purchase Agreement, Buyer’s 

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Acknowledgement, and the documents incorporated by reference therein, by attempting to use 

the Association’s Alleged Mark in commerce, seeking to register the Association’s 1 HOMES 

Applications and filing the Cancellation Petition. The Association’s actions intended to induce a 

breach or disruption of the business relationship between SH Group and Bostany. 

82. The Association’s knowing and intentional interference with the business 

relationship between SH Group and Bostany has damaged SH Group and will continue to cause 

SH Group irreparable harm unless enjoined by this Court. 

COUNT IV 

INFRINGEMENT OF REGISTERED TRADEMARKS 

(SECTION 32 OF THE LANHAM ACT, 15 U.S.C. § 1114) 

83. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 82 of this Complaint with the same force and 

effect as if herein again set forth in full. 

84. SH Group has prior rights over the Association in and to the 1 HOTEL & 

HOMES Marks in the United States by virtue of its use of the 1 HOTEL & HOMES Marks in 

interstate commerce and as evidenced by the SH Group Registered Marks. 

85. The SH Group Registered Marks are valid, subsisting, used in commerce and 

inherently distinctive. The SH Group Registered Marks also have acquired secondary meaning 

in the marketplace. Many of these marks have been declared incontestable by the USPTO. 

86. The Association’s Alleged Mark is confusingly similar to the SH Group 

Registered Marks. 

87. Defendants’ use of the Association’s Alleged Mark is likely to cause confusion or 

mistake with the SH Group Registered Marks. Consumers likely will believe that the 

Association’s goods and services are provided by, sponsored by, associated with, or otherwise 

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affiliated with SH Group because of the Association’s use of the Association’s Alleged Mark, 

which is confusingly similar to the SH Group Registered Marks. 

88. Defendants knew that their use of the Association’s Alleged Mark would cause 

confusion or mistake as to SH Group’s sponsorship of, association with, or affiliation with the 

Association’s goods and services. 

89. Defendants’ use of the confusingly similar Association’s Alleged Mark is likely 

to cause irreparable injury to SH Group’s marks, reputation, and goodwill. The extent of this 

harm cannot be quantified, and therefore leaves SH Group with no adequate remedy at law. 

90. Defendants’ use of the Association’s Alleged Mark constitutes infringement of 

the SH Group Registered Marks in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114. 

91. By reason of the foregoing, SH Group is entitled to permanent injunctive relief 

against the Defendants, restraining them and all those in active concert and participation with 

them from any further acts of infringement, and for all remedies available to it under 15 U.S.C. § 

1117, including an accounting and disgorgement of Defendants’ profits, and recovery of any 

damages (to the extent calculable) proven to have been caused by reason of Defendants’ 

aforesaid acts, among other remedies as outlined below. 

COUNT V 

FALSE DESIGNATION OF ORIGIN 

(SECTION 43(A) OF THE LANHAM ACT, 15 U.S.C. § 1125(A)) 

92. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 91 of this Complaint with the same force and 

effect as if herein again set forth in full. 

93. The 1 HOTEL & HOMES Marks are protected as common law trademarks by 

virtue of SH Group’s longtime use of such marks in the marketplace. 

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94. As noted above, the Association’s Alleged Mark, which has been promoted, 

distributed, and used in commerce, is confusingly similar to the 1 HOTEL & HOMES Marks. 

Defendants’ use of the Association’s Alleged Mark implies to consumers that its services come 

from the same source as SH Group’s services. Such implications are false, confusing to 

consumers, and material to consumers’ purchasing decisions. 

95. Defendants’ unauthorized use of the Association’s Alleged Mark, in connection 

with the promotion or sale of its services falsely suggests that these services are provided by, 

connected with, sponsored by, affiliated with, or related to, SH Group. 

96. Defendants’ unauthorized use of the 1 HOTEL & HOMES Marks constitutes a 

false designation of origin in violation of 15 U.S.C. § 1125(a). 

97. Defendants’ conduct has damaged SH Group and, unless enjoined by the Court, 

will further impair the value of SH Group’s marks, reputation, and goodwill. This harm 

constitutes an injury for which SH Group has no adequate remedy at law. 

98. By reason of the foregoing, SH Group is entitled to permanent injunctive relief 

against Defendants, restraining them and all those in active concert and participation with 

Defendants from any further acts of trademark infringement, and for all remedies available to it 

under 15 U.S.C. § 1117, including an accounting and disgorgement of Defendants’ profits, and 

recovery of any damages (to the extent calculable) proven to have been caused by reason of the 

Defendants’ aforesaid acts, among other remedies as outlined below. 

COUNT VI 

TRADEMARK INFRINGEMENT 

(UNDER SECTION 495.001, ET SEQ., FLORIDA STATUTES) 

99. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 98 of this Complaint with the same force and 

effect as if herein again set forth in full. 

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100. SH Group has prior rights over the Defendants in and to the 1 HOTEL & HOMES 

Marks in the United States by virtue of its use of the 1 HOTEL & HOMES Marks in interstate 

commerce and as evidenced by the SH Group Registered Marks. 

101. The SH Group Registered Marks are valid, subsisting, used in commerce and 

inherently distinctive. SH Group Registered Marks also have acquired secondary meaning in the 

marketplace. Many of these marks have been declared incontestable by the USPTO. 

102. The Association’s Alleged Mark is a colorable imitation of the SH Group 

Registered Marks. 

103. Defendants’ use of the Association’s Alleged Mark is likely to cause confusion or 

mistake with the SH Group Registered Marks. Consumers likely will believe that the 

Association’s goods and services are provided by, sponsored by, associated with, or otherwise 

affiliated with SH Group because of the Association’s use of the Association’s Alleged Mark, 

which is confusingly similar to the SH Group Registered Marks. 

104. Defendants knew that their use of the Association’s Alleged Mark would cause 

confusion or mistake as to SH Group’s sponsorship of, association with, or affiliation with the 

Association’s goods and services. 

105. Defendants’ use of the confusingly similar Association’s Alleged Mark is likely 

to cause irreparable injury to SH Group’s marks, reputation, and goodwill. The extent of this 

harm cannot be quantified, and therefore leaves SH Group with no adequate remedy at law. 

106. Defendants’ use of the Association’s Alleged Mark constitutes infringement of 

the SH Group Registered Marks in violation of Fla. Stat. § 495.131. 

107. By reason of the foregoing, SH Group is entitled to permanent injunctive relief 

against the Association, restraining it and all those in active concert and participation with 

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Defendants from any further acts of infringement, an accounting and disgorgement of 

Defendants’ profits derived from Defendants’ sale of infringing products and services and/or to 

the recovery of any damages (to the extent calculable) proven to have been caused by reason of 

Defendants’ aforesaid acts, pursuant to Fla. Stat. § 495.141, among other remedies as outlined 

below. 

COUNT VII 

COMMON LAW TRADEMARK INFRINGEMENT 

108. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 107 of this Complaint with the same force and 

effect as if herein again set forth in full. 

109. SH Group has prior rights over the Defendants in and to the 1 HOTEL & HOMES 

Marks in the United States by virtue of its use of the 1 HOTEL & HOMES Marks in interstate 

commerce and as evidenced by the Registered SH Group Marks. 

110. The Association’s Alleged Mark is confusingly similar to the 1 HOTEL & 

HOMES Marks. 

111. Defendants’ use of the Association’s Alleged Mark is likely to cause confusion or 

mistake with the 1 HOTEL & HOMES Marks. Consumers likely will believe that the 

Defendants’ goods and services are provided by, sponsored by, associated with, or otherwise 

affiliated with SH Group because of the Association’s use of the Association’s Alleged Mark, 

which is confusingly similar to the 1 HOTEL & HOMES Marks. 

112. Defendants knew that their use of the Association’s Alleged Mark would cause 

confusion or mistake as to SH Group’s sponsorship of, association with, or affiliation with the 

Defendants’ goods and services. 

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113. Defendants’ use of the confusingly similar Association’s Alleged Mark is likely 

to cause irreparable injury to SH Group’s marks, reputation, and goodwill. The extent of this 

harm cannot be quantified, and therefore leaves SH Group with no adequate remedy at law. 

114. Defendants’ use of the Association’s Alleged Mark constitutes common law 

infringement of the 1 HOTEL & HOMES Marks and the Registered SH Group Marks. 

115. By reason of the foregoing, SH Group is entitled to permanent injunctive relief 

against the Association, restraining it and all those in active concert and participation with 

Defendants from any further acts of infringement, and to recovery of any damages (to the extent 

calculable) proven to have been caused by reason of Defendants’ aforesaid acts, among other 

remedies as outlined below. 

COUNT VIII 

COMMON LAW UNFAIR COMPETITION 

116. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 115 of this Complaint with the same force and 

effect as if herein again set forth in full. 

117. The 1 HOTEL & HOMES Marks are protected as common law trademarks by 

virtue of SH Group’s longtime use of such marks in the marketplace. 

118. As noted above, the Association’s Alleged Mark, which has been promoted, 

distributed, and used in commerce, is confusingly similar to the 1 HOTEL & HOMES Marks. 

Defendants’ use of the Association’s Alleged Mark implies to consumers that its services come 

from the same source as SH Group’s services. Such implications are unfair, deceptive, and 

material to consumers’ purchasing decisions. 

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119. Defendants’ unauthorized use of the Association’s Alleged Mark, in connection 

with the promotion or sale of its services deceptively suggests that these services are provided 

by, connected with, sponsored by, affiliated with, or related to, SH Group. 

120. The aforementioned acts by Defendants constitute common law unfair 

competition. 

121. Defendants’ conduct has damaged SH Group and will, unless enjoined by the 

Court, further impair the value of SH Group’s marks, reputation, and goodwill. This harm 

constitutes an injury for which SH Group has no adequate remedy at law. 

122. By reason of the foregoing, SH Group is entitled to permanent injunctive relief 

against Defendants, restraining them and all those in active concert and participation with 

Defendants from any further acts of unfair competition, among other remedies as outlined below. 

COUNT IX 

DECLARATORY JUDGMENT FOR THE 

DENIAL OF THE ASSOCIATION’S 1 HOMES APPLICATIONS 

(15 U.S.C. § 1119; 28 U.S.C. §§ 2201 and 2202) 

123. SH Group repeats and incorporates herein by reference each and every one of the 

allegations contained in paragraphs 1 through 122 of this Complaint with the same force and 

effect as if herein again set forth in full. 

124. Upon information and belief, Defendants were not using the 1 HOMES mark in 

U.S. commerce in connection with each of the services identified in the Application Serial No. 

88/457,662 on June 3, 2019, pursuant to 15 U.S.C. § 1051(a). 

125. Upon information and belief, Defendants were not using the 1 HOMES mark in 

U.S. commerce in connection with each of the services identified in the Association’s ‘662 

Application on May 1, 2016, the claimed date of first use in the Association’s ‘662 Application, 

pursuant to 15 U.S.C. § 1051(a). 

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126. Upon information and belief, any use by Defendants of “1 HOMES” is after SH 

Group applied for, used, and established trademark rights in the 1 HOTEL & HOMES Marks. 

Indeed, the Association was not formed until after SH Group filed the applications for the 1 

HOTEL & HOMES Registrations. Accordingly, any trademark rights possessed by Defendants 

in 1 HOMES are junior to the superior rights of SH Group. 

127. SH Group will be damaged if the Association’s 1 HOMES Applications mature to 

registration because Defendants’ use of the Association’s Alleged Mark is likely to cause 

confusion or mistake with the SH Group Registered Marks due to the similarity in sound, look, 

and meaning of the SH Group Registered Marks, on the one hand, and the Association’s Alleged 

Mark on the other hand. Consumers likely will believe that the Association’s goods and services 

are provided by, sponsored by, associated with, or otherwise affiliated with SH Group because of 

the Association’s use of the Association’s Alleged Mark, which is confusingly similar to the SH 

Group Registered Marks. 

128. The Association’s ‘662 Application was refused by the USPTO based, in part, on 

a likelihood of confusion with the 1 HOTEL & HOMES Registrations. Thus, the issues involved 

in the pending Association’s 1 HOMES Applications share a close nexus with the above-stated 

likelihood of confusion between the SH Group Registered Marks, on the one hand, and the 

Association’s Alleged Mark on the other hand. 

129. Because of the likelihood of confusion resulting from the similarity in sound, 

look, and meaning between the SH Group Registered Marks and the Association’s Alleged Mark 

as reflected in the Association’s 1 HOMES Applications, the registration of the Association’s 1 

HOMES Applications should be denied pursuant to 15 U.S.C. §§ 1051, 1119. 

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PRAYER FOR RELIEF 

WHEREFORE, SH Group demands trial by jury, and respectfully prays that the Court 

enter judgment in its favor on each and every claim for relief set forth above and award it relief 

including, but not limited to, the following: 

A. An Order declaring that Defendants’ use of the mark 1 HOMES infringes the 1 

HOTEL & HOMES Marks and constitutes unfair competition under federal 

and/or state law, as detailed above; 

B. An Order declaring that Bostany has breached his duties under the Purchase 

Agreement and Buyer’s Acknowledgement and agreements incorporated by 

reference, as detailed above; 

C. An Order declaring that Bostany must specifically perform his duties under the 

Purchase Agreement, Buyer’s Acknowledgement, and agreements incorporated 

by reference by ceasing use anywhere in the United States of the mark 1 HOMES, 

or any other trademark that is confusingly similar to the 1 HOTEL & HOMES 

Marks and directing the Association to withdraw the Cancellation Petition and the 

Association’s 1 HOMES Applications; 

D. An injunction permanently enjoining Defendants and all those in active concert or 

participation with it (including, but not limited to all of their respective officers, 

directors, agents, principals, servants, wholesalers, distributors, retailers, 

employees, representatives, attorneys, subsidiaries, related companies, affiliates, 

successors, assigns, and contracting parties) from: 

(i) using anywhere in the United States, applying to register in the United 

States, or maintaining a registration in the United States for the mark 1 

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HOMES, or any other trademark that is confusingly similar to the 1 

HOTEL & HOMES Marks; 

(iii) representing, by any means whatsoever, that any products or services 

manufactured, distributed, advertised, offered, or sold by the Association 

are SH Group’s products or services or vice versa, and from otherwise 

acting in a way likely to cause confusion, mistake, or deception on the part 

of purchasers or consumers as to the origin or sponsorship of such goods 

or services; and 

(iv) seeking to oppose any of SH Group’s applications to register its 1 HOTEL 

& HOMES Marks, or seeking to cancel any of SH Group’s registrations 

for its 1 HOTEL & HOMES Marks, in the USPTO, including but not 

limited to the 1 HOTEL & HOMES Registrations. 

E. An Order directing that Defendants and all those in active concert or participation 

with them (including, but not limited to, their respective officers, directors, 

agents, principals, servants, wholesalers, distributors, retailers, employees, 

representatives, attorneys, subsidiaries, related companies, affiliates, successors, 

assigns, and contracting parties) take affirmative steps in the United States to 

dispel such false impressions that heretofore have been created by their use of the 

mark 1 HOMES, including, but not limited to, recalling from any and all channels 

of trade any and all infringing services and associated materials and undertaking 

corrective advertising. 

F. An Order directing that Defendants account to SH Group for their profits and any 

damages sustained by SH Group, to the extent calculable, arising from the 

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foregoing acts of trademark infringement, false designation of origin, deceptive 

acts and practices in the United States. 

G. An Order requiring that, in accordance with such accounting, Defendants pay to 

SH Group their profits from their infringing conduct, and SH Group’s damages 

and a trebling of such award, and costs of the action, pursuant to 

15 U.S.C. § 1117. 

H. An Order requiring that, in accordance with such accounting, Defendants pay to 

SH Group treble damages. 

I. An Order directing that Bostany account to SH Group for the damages sustained 

by SH Group, to the extent calculable, arising from the foregoing breaches of 

contract. 

J. An Order requiring that Defendants pay SH Group treble damages, in view of 

Defendants’ intentional and willful trademark infringement and other conduct, 

disgorgement of Defendants’ profits and, if the amount of the recovery based on 

profits is inadequate, for judgment for such sum as the court shall find to be just, 

according to the circumstances of the case, pursuant to Fla. Stat. § 495.141(1). 

K. An Order requiring that Defendants compensate SH Group for SH Group’s costs, 

including its reasonable attorneys’ fees and disbursements in this action, pursuant 

to 15 U.S.C. § 1117, Fla. Stat. § 495.141(1), and Section 15(a) of the Purchase 

Agreement. 

L. An Order requiring that Defendants file with the Court and serve on counsel for 

SH Group within thirty (30) days after entry of any injunction issued by the Court 

in this action, a sworn written statement pursuant to 15 U.S.C. § 1116(a) setting 

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forth in detail the manner and form in which Defendants have complied with any 

injunction which the Court may enter in this action. 

M. An Order denying the Association’s 1 HOMES Applications pursuant to 15 

U.S.C. § 1119. 

N. Other relief as the Court may deem just and proper. 

DEMAND FOR JURY TRIAL 

Pursuant to Rule 38 of the Federal Rules of Civil Procedure, SH Group demands trial by 

jury in this action of all issues triable by jury in this matter. 

Respectfully submitted this 12th day of June, 2020. 

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/s/ Gavin C. Gaukroger

 Gavin C. Gaukroger 

Fla. Bar. No. 76489 

Christina M. Perry 

Fla. Bar. No. 1003098 

BERGER SINGERMAN LLP 

350 East Las Olas Boulevard 

Suite 1000 

Fort Lauderdale, FL 33301 

Tel. (954) 525-9900 

Fax (954) 523-2872 

Email: ggaukroger@bergersingerman.com 

Email: cperry@bergersingerman.com 

Email: DRT@bergersingerman.com 

 DALE M. CENDALI 

(Pro Hac Vice Forthcoming) 

CLAUDIA RAY 

(Pro Hac Vice Forthcoming) 

SHANTI SADTLER CONWAY 

(Pro Hac Vice Forthcoming) 

KIRKLAND & ELLIS LLP 

601 Lexington Avenue 

New York, NY 10022

Tel. (212) 446-4800 

Fax (212) 446-6460 

Email: dale.cendali@kirkland.com 

Email: claudia.ray@kirkland.com 

Email: shanti.conway@kirkland.com 

Attorneys for Plaintiff

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