1

UNITED STATES DISTRICT COURT 

SOUTHERN DISTRICT OF FLORIDA 

CASE NO.: 1:20-cv-22423-UU 

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

A Delaware limited liability company, 

 Plaintiff, 

v. 

2399 COLLINS AVENUE CONDOMINIUM 

ASSOCIATION, INC., a Florida corporation, 

and JOHN P. BOSTANY, an Individual, 

 Defendants. 

2399 COLLINS AVENUE CONDOMINIUM 

ASSOCIATION, INC., a Florida corporation, 

 Counterclaimant, 

v. 

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

A Delaware limited liability company, 

 Counter-defendant. 

DEFENDANT 2399 COLLINS AVENUE CONDOMINIUM ASSOCIATION, INC.’S 

ANSWER TO PLAINTIFF’S COMPLAINT, COUNTERCLAIMS, AND JURY DEMAND

Defendant 2399 COLLINS AVENUE CONDOMINIUM ASSOCIATION, INC. 

(“Association”), by and through its undersigned counsel, submit the following answer, 

counterclaims, and jury demand in response to the Complaint [D.E. 1] filed by Plaintiff SH 

GROUP GLOBAL IP HOLDINGS, L.L.C.’s (“SH Group” or “Plaintiff”), and states as follows: 

 

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ANSWER 

NATURE OF THE CASE 

1. Admitted only to the extent this action is described as one for trademark 

infringement. The reminder of this paragraph is denied. 

2. Admitted only to the extent that Defendant Association represents the 

condominiums located at 2399 Collins Avenue, Miami Beach, FL 33139. Admitted that Defendant 

John P. Bostany (“Mr. Bostany”) is the Association’s Board President and owns a unit in the 

condominium. Admitted that the Association has asserted ownership rights in its trademark 1 

HOMES and has filed federal trademark registrations for its 1 HOMES mark. The remainder of 

the paragraph is denied. 

3. Admitted only to the extent that Mr. Bostany executed the Purchase Agreement and 

Buyer’s Acknowledgement in his individual capacity when purchasing his condominium unit. The 

remainder of the paragraph is denied. 

4. Admitted only to the extent that the Association has filed federal trademark 

registrations for its 1 HOMES mark. The remainder of the paragraph is denied. 

5. Admitted only to the extent that on December 31, 2019, the Association moved to 

cancel Plaintiff’s registrations for the marks 1 HOTEL & HOMES (Stylized), Reg. No. 4,837,287; 

1 HOTEL & HOMES (Stylized), Reg. No. 4,832,423; and 1 HOTEL & HOMES SOUTH BEACH 

(Stylized), Reg. No. 4,837,289 (collectively, the “SHG Registrations” or “SHG Marks”) on the 

basis of fraud in the prosecution of the SHG registrations, descriptiveness, lack of bona fide intent 

to use the marks when filing the applications, lack of bona fide use of the marks when filing the 

Statements of Use, and abandonment of the marks. The remainder of the paragraph is denied. 

6. Denied. 

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THE PARTIES 

7. The Association is without sufficient knowledge or information to admit or deny 

the allegations of this paragraph, and therefore denies. 

8. Admitted. 

9. Admitted. 

JURISDICTION AND VENUE 

10. Admitted only to the extent that the Court has subject-matter jurisdiction over this 

action, otherwise denied. 

11. Admitted only to the extent that Court has personal jurisdiction over the 

Association in this action and that the Association is a Florida corporation and conducts business 

in Florida, otherwise denied. 

12. Admitted. 

13. Admitted. 

14. Denied. 

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

15 - 24. The Association is without sufficient knowledge or information to admit or deny 

the allegations of these paragraphs, and therefore denies 

DEFENDANT BOSTANY’S CONTRACTUAL DUTIES 

25. Admitted that Mr. Bostany is the Association’s Board President and owns a unit in 

the condominiums located at 2399 Collins Avenue, Miami Beach, FL 33139. 

26. Admitted only to the extent that Mr. Bostany executed the Purchase Agreement in 

his individual capacity when purchasing his condominium unit. The Association is without 

sufficient knowledge or information to admit or deny the remaining allegations in this paragraphs, 

and therefore denies. 

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27. Denied. 

28. The document speaks for itself. 

29. The document speaks for itself. 

30. Denied. 

31. The Association is without sufficient knowledge or information to admit or deny 

the allegations of this paragraph, and therefore denies. 

32. The Association is without sufficient knowledge or information to admit or deny 

the allegations of this paragraph, and therefore denies. 

33. The document speaks for itself. 

34. Denied. 

35. The document speaks for itself. 

36. The document speaks for itself. 

37. Denied. 

38. The document speaks for itself. 

39. The Association is without sufficient knowledge or information to admit or deny 

the allegations of this paragraph, and therefore denies. 

40. This paragraph appear to be legal a conclusion and, as such, does not require any 

response from the Association. To the extent any allegations present require a response, the 

Association denies the same. 

41. The Association is without sufficient knowledge or information to admit or deny 

the allegations of this paragraph, and therefore denies. 

42. The Association is without sufficient knowledge or information to admit or deny 

the allegations of this paragraph, and therefore denies. 

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43. This paragraph appears to be legal a conclusion and, as such, does not require any 

response from the Association. To the extent any allegations present require a response, the 

Association denies the same. 

44. Denied. 

DEFENDANTS’ INFRINGEMENT OF THE 1 HOTEL & HOMES MARKS 

45. Denied. 

46. Admitted only to the extent that Mr. Bostany signed the Association’s federal 

trademark application Serial No. 88/457,662 in his capacity as the Association’s Board President. 

The remainder of the paragraph is denied. 

47. Denied. 

48. The trademark application file history speaks for itself. 

49. Admitted only to the extent that the Association has filed the following trademark 

registrations applications: (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”, otherwise denied. 

50. Admitted. 

51. Denied. 

52. Admitted only to the extent that the Association operates an on-line retail shop that 

offers for sale t-shirts, hats, and bags bearing the Association’s 1 HOMES mark, otherwise denied. 

53. Denied. 

54. Denied. 

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DEFENDANTS’ ATTEMPT TO CANCEL SH GROUP’S REGISTERED MARKS 

55. Denied, the Petition to Cancel for Cancellation Petition (No. 92073091) was filed 

on December 31, 2019 and the proceeding was instituted by the TTAB on January 6, 2020. 

56. Admitted. 

57. Denied. 

COUNT I 

BREACH OF THE PURCHASE AGREEMENT (Against Defendant Bostany) 

58. The Association restates and incorporates by reference its answers to paragraphs 1 

– 57. 

59. Denied. 

60. Denied. 

61. Denied. 

62. Denied. 

63. Denied. 

64. Denied. 

65. Denied. 

66. Denied. 

67. Denied. 

68. Denied. 

69. Denied. 

70. Denied. 

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COUNT II 

BREACH OF THE BUYER’S ACKNOWLEDGEMENT 

(Against Defendant Bostany) 

71. The Association restates and incorporates by reference its answers to paragraphs 1 

– 70. 

72. Denied. 

73. Denied. 

74. Denied. 

75. Denied. 

76. Denied. 

77. Denied. 

COUNT III 

TORTIOUS INTERFERENCE WITH A BUSINESS RELATIONSHIP 

(Against Defendant Association) 

78. The Association restates and incorporates by reference its answers to paragraphs 1 

– 78. 

79. Denied. 

80. Denied. 

81. Denied. 

82. Denied. 

COUNT IV 

INFRINGEMENT OF REGISTERED TRADEMARKS (SECTION 32 OF THE 

LANHAM ACT, 15 U.S.C. § 1114) 

83. The Association restates and incorporates by reference its answers to paragraphs 1 

– 82. 

84. Denied. 

85. Denied. 

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86. Denied. 

87. Denied. 

88. Denied. 

89. Denied. 

90. Denied. 

91. Denied. 

COUNT V 

FALSE DESIGNATION OF ORIGIN 

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

92. The Association restates and incorporates by reference its answers to paragraphs 1 

– 91. 

93. Denied. 

94. Denied. 

95. Denied. 

96. Denied. 

97. Denied. 

98. Denied. 

COUNT VI 

TRADEMARK INFRINGEMENT 

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

99. The Association restates and incorporates by reference its answers to paragraphs 1 

– 98. 

100. Denied. 

101. Denied. 

102. Denied. 

103. Denied. 

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104. Denied. 

105. Denied. 

106. Denied. 

107. Denied. 

COUNT VII 

COMMON LAW TRADEMARK INFRINGEMENT 

108. The Association restates and incorporates by reference its answers to paragraphs 1 

– 107. 

109. Denied. 

110. Denied. 

111. Denied. 

112. Denied. 

113. Denied. 

114. Denied. 

115. Denied. 

COUNT VIII 

COMMON LAW UNFAIR COMPETITION 

116. The Association restates and incorporates by reference its answers to paragraphs 1 

– 115. 

117. Denied. 

118. Denied. 

119. Denied. 

120. Denied. 

121. Denied. 

122. Denied. 

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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. The Association restates and incorporates by reference its answers to paragraphs 1 

– 122. 

124. Denied. 

125. Denied. 

126. Denied. 

127. Denied. 

128. Denied. 

129. Denied. 

PLAINTIFF SH GROUP GLOBAL IP HOLDINGS, L.L.C.’S PRAYER FOR RELIEF 

 In response to the allegations and demands of Plaintiff’s Prayer for Relief, the Association 

denies the same, and respectfully requests that Plaintiff be denied all relief requested by its 

Complaint, that judgment be entered in favor of the Association and John P. Bostany (collectively 

“Defendants”) and that the Court award Defendants the costs of this action and reasonable 

attorneys’ fees as well as such other and further relief as the Court shall deem just. 

AFFIRMATIVE DEFENSES

Without admitting any allegations of the Complaint not otherwise admitted, the 

Association maintains the following affirmative defenses:

First Affirmative Defense 

Counts III and VI fail to state a claim against the Association upon which relief may be 

granted. 

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Second Affirmative Defense 

The Association has not engaged in any acts which constitute infringement of any of 

Plaintiff’s asserted trademarks. 

Third Affirmative Defense 

The Association’s use of Plaintiff’s asserted trademarks constitutes fair use, nominative 

fair use, and/or descriptive use. 

Fourth Affirmative Defense 

The Association’s use of Plaintiff’s asserted trademarks is not likely to cause confusion 

with Plaintiff as to the source or sponsorship of any goods or services. 

Fifth Affirmative Defense 

Plaintiff’s asserted trademarks are not inherently distinctive and have not attained 

secondary meaning because consumers do not associate Plaintiff’s alleged trademarks with 

Plaintiff alone. 

Sixth Affirmative Defense 

The Association has priority of use and is therefore the senior user of the 1 HOMES mark. 

Seventh Affirmative Defense 

Plaintiff has abandoned any rights to its asserted trademarks.

Eighth Affirmative Defense 

Plaintiff’s claims are barred or limited, in whole or in part, by the doctrines of waiver, 

acquiescence, and estoppel. 

Ninth Affirmative Defense 

Plaintiff’s claims are barred by laches, in that Plaintiff has unreasonably delayed efforts to 

enforce its rights, if any, despite its full awareness of the Association’s actions. 

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Tenth Affirmative Defense 

Plaintiff is precluded by the unclean hands doctrine from seeking any relief from this Court, 

let alone equitable relief, including because Plaintiff acquired its SHG registrations through fraud. 

Eleventh Affirmative Defense 

Plaintiff’s claims are barred, in whole or in part, because Plaintiff has misused the asserted 

trademarks. 

 The Association reserves the right to assert additional defenses, affirmative or otherwise, 

if their existence is established through discovery or investigation, particularly with respect to any 

equitable conduct on behalf of Plaintiff or its affiliates. 

 

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DEFENDANT 2399 COLLINS AVENUE CONDOMINIUM ASSOCIATION, INC.’S 

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

 Defendant and Counter-Plaintiff 2399 COLLINS AVENUE CONDOMINIUM 

ASSOCIATION, INC. (the “Association”), presents the following counterclaims against Plaintiff 

and Counter-Defendant SH GROUP GLOBAL IP HOLDINGS, L.L.C. (“Plaintiff” or “SH 

Group”): 

NATURE OF THE CASE 

1. The Association’s claims arise out of Plaintiff’s willful infringement of the 

Association’s 1 HOMES mark and the Association’s hard-earned goodwill therein. 

2. Plaintiff has made infringing use of the Association’s 1 HOMES mark. 

PARTIES 

3. The Association is a condominium association organized pursuant to the provisions 

of Chapter 718, Florida Statutes. It is a Florida not-for-profit corporation having a principal place 

of business at 2399 Collins Avenue, Miami Beach, Florida 33139. The Association is the 

condominium association for the condominiums situated within a mixed-use residential, hotel and 

commercial facility located at 2301-2399 Collins Avenue, Miami Beach FL 33139 (the “Project”). 

4. Mr. Bostany is the Association’s Board President who resides in Miami Beach, 

Florida. Mr. Bostany has been the Association’s Board President continuously since June 2018. 

5. On information and belief, Plaintiff is a Delaware limited liability company with 

its principal place of business at 591 West Putnam Avenue, Greenwich CT 06830. Plaintiff is the 

owner of record of the registered trademark registrations at issue in this case. 

JURISDICTION AND VENUE 

6. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338, and 

1367, and 15 U.S.C. § 1125(A). 

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7. Plaintiff has submitted itself to the jurisdiction of this Court by filing its Complaint 

initiating this Action. 

8. Venue is proper in this district under 28 U.S.C. § 1391(b) and (c) because the acts 

complained of occurred and are occurring in the United States and in this District and have caused 

damage to the Association in the United States and in this District. 

STATEMENT OF FACTS 

9. The Association is the sole and exclusive owner of the common law trademark 1 

HOMES. 

10. The Association applied for the mark 1 HOMES in United States Service Mark 

Application Serial No. 88457662 (the “First Association Application”) on June 3, 2019. The First 

Association Application is for the following services: Building management; Real estate services, 

namely, condominium management services. The Association has used the mark in commerce in 

connection with such services since at least as early as December 31, 2018. 

11. On August 22, 2019, the United States Patent and Trademark Office (“USPTO”) 

issued a non-final office action including a Section 2(d) Refusal to the First Association 

Application based, in part, on alleged likelihood of confusion with the following registrations 

(herein the “SHG Registrations” or “SHG Marks”), the record owner of which is Plaintiff: 

Mark Registration 

No. 

Alleged Date 

of First Use 

in 

Commerce 

Goods and Services 

1 HOTEL & HOMES 

(Stylized) 

4,837,287 August 1, 

2015 

IC 035. US 100 101 102. G & S: 

Hotel management for others; 

business management and 

consultation in the hotel industry. 

IC 036. US 100 101 102. G & S: 

Leasing, rental, and management of 

condominiums, apartments, villas and 

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residential homes; leasing, rental, and 

management of condominiums, 

apartments, villas and residential 

homes in vacation and resort 

communities; real estate brokerage 

services. 

IC 037. US 100 103 106. G & S: Real 

estate development, namely, hotel 

development for others; real estate 

development, namely, resort 

communities development for others; 

real estate development in the nature 

of hotel development and resort 

communities. 

IC 041. US 100 101 107. G & S: 

Casinos, namely, gambling and 

gaming services; live entertainment, 

namely, live performances by musical 

bands and live comedy shows; night 

club services; health club services, 

namely, providing instruction and 

equipment in the field of physical 

exercise; leisure club services, 

namely, country club and golf club 

services; providing golf facilities; 

providing golf instruction and golf 

equipment; providing tennis facilities; 

providing tennis instruction and tennis 

equipment; ski resorts; providing 

skiing facilities; providing skiing 

instruction and skiing equipment; 

provision of sport and recreational 

facilities; arranging and conducting 

educational conferences; arranging 

and conducting entertainment 

exhibitions in the nature of comedy 

acts, dance acts, theater acts, plays, 

stage productions, magic shows, 

performance art shows; theatrical 

booking agencies, namely, theater, 

opera and concert ticket reservations. 

IC 043. US 100 101. G & S: Hotels; 

condominium hotels; hotel services; 

resort hotel services; spa services, 

namely, providing temporary 

accommodations and meals to clients 

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of a health or beauty spa; restaurants; 

bars; restaurant and bar services. 

IC 044. US 100 101. G & S: Health 

spa services for health and wellness of 

the body and spirit offered at health 

resorts; health spa services, namely, 

cosmetic body care services. 

1 HOTEL & HOME 

(Stylized) 

4,832,423 August 1, 

2015 

IC 035. US 100 101 102. G & S: 

Hotel management for others; 

business management and 

consultation in the hotel industry. 

IC 036. US 100 101 102. G & S: 

Leasing, rental, and management of 

condominiums, apartments, villas and 

residential homes; leasing, rental, and 

management of condominiums, 

apartments, villas and residential 

homes in vacation and resort 

communities; real estate brokerage 

services. 

IC 037. US 100 103 106. G & S: Real 

estate development, namely, hotel 

development for others; real estate 

development, namely, resort 

communities development for others; 

real estate development in the nature 

of hotel development and resort 

communities. 

IC 041. US 100 101 107. G & S: 

Casinos, namely, gambling and 

gaming services; live entertainment, 

namely, live performances by musical 

bands and live comedy shows; night 

club services; health club services, 

namely, providing instruction and 

equipment in the field of physical 

exercise; leisure club services, 

namely, country club and golf club 

services; providing golf facilities; 

providing golf instruction and golf 

equipment; providing tennis facilities; 

providing tennis instruction and tennis 

equipment; ski resorts; providing 

skiing facilities; providing skiing 

instruction and skiing equipment; 

provision of sport and recreational 

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facilities; arranging and conducting 

educational conferences; arranging 

and conducting entertainment 

exhibitions in the nature of comedy 

acts, dance acts, theater acts, plays, 

stage productions, magic shows, 

performance art shows; theatrical 

booking agencies, namely, theater, 

opera and concert ticket reservations. 

IC 043. US 100 101. G & S: Hotels; 

condominium hotels; hotel services; 

resort hotel services; spa services, 

namely, providing temporary 

accommodations and meals to clients 

of a health or beauty spa; restaurants; 

bars; restaurant and bar services. 

IC 044. US 100 101. G & S: Health 

spa services for health and wellness of 

the body and spirit offered at health 

resorts; health spa services, namely, 

cosmetic body care services. 

1 HOTEL & HOMES 

SOUTH BEACH 

(Stylized) 

4,837,289 March 1, 

2015 

IC 035. US 100 101 102. G & S: 

Hotel management for others; 

business management and 

consultation in the hotel industry. 

IC 036. US 100 101 102. G & S: 

Leasing, rental, and management of 

condominiums, apartments, villas and 

residential homes; leasing, rental, and 

management of condominiums, 

apartments, villas and residential 

homes in vacation and resort 

communities; real estate brokerage 

services. 

IC 037. US 100 103 106. G & S: Real 

estate development, namely, hotel 

development for others; Real estate 

development, namely, resort 

communities development for others; 

real estate development in the nature 

of hotel development and resort 

communities. 

IC 041. US 100 101 107. G & S: 

Casinos, namely, gambling and 

gaming services; live entertainment, 

namely, live performances by musical 

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bands and live comedy shows; night 

club services; health club services, 

namely, providing instruction and 

equipment in the field of physical 

exercise; leisure club services, 

namely, country club and golf club 

services; providing golf facilities; 

providing golf instruction and golf 

equipment; providing tennis facilities; 

providing tennis instruction and tennis 

equipment; ski resorts; providing 

skiing facilities; providing skiing 

instruction and skiing equipment; 

provision of sport and recreational 

facilities; arranging and conducting 

educational conferences; arranging 

and conducting entertainment 

exhibitions in the nature of comedy 

acts, dance acts, theater acts, plays, 

stage productions, magic shows, 

performance art shows; theatrical 

booking agencies, namely, theater, 

opera and concert ticket reservations. 

IC 043. US 100 101. G & S: Hotels; 

condominium hotels; hotel services; 

resort hotel services; spa services, 

namely, providing temporary 

accommodations and meals to clients 

of a health or beauty spa; restaurants; 

bars; restaurant and bar services. 

IC 044. US 100 101. G & S: Health 

spa services for health and wellness of 

the body and spirit offered at health 

resorts; health spa services, namely, 

cosmetic body care services. 

12. The SHG Registrations were filed September 10, 2013, pursuant to Section 1(b) of 

the Lanham Act, 15 U.S.C. § 1051(b), based on alleged bona fide intention to use the marks in 

U.S. commerce in connection with all of the applied-for services. 

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13. In each application for the SHG Marks, Plaintiff declared that it “has a bona fide 

intention to use or use through the applicant’s related company or licensee the mark in commerce 

on or in connection with the identified goods and/or services.”

14. On August 6, 2015, Plaintiff filed Statements of Use for each of the SHG Marks 

with the USPTO alleging dates of first use of the marks in U.S. commerce of at least as early as 

March 1, 2015 (the '289 Registration) and August 1, 2015 (the '287 Registration and the '423 

Registration) and claiming use of the SHG Marks in connection with all of the applied-for 

services, sworn and attested to by Plaintiff. 

15. In the Statements of Use for each of the SHG Registrations, Plaintiff declared that 

it “is using the mark in commerce on or in connection with all the goods/services in the application 

or notice of allowance, or as subsequently modified.” 

16. In the mark 1 HOTEL & HOMES that is the subject of the '287 Registration, 

Plaintiff disclaimed the exclusive right to use HOTEL & HOMES apart from the mark as shown 

in the registration. 

17. In the mark 1 HOTEL & HOME that is the subject of the '423 Registration, Plaintiff 

disclaimed the exclusive right to use HOTEL & HOME apart from the mark as shown in the 

registration. 

18. In the mark 1 HOTEL & HOMES SOUTH BEACH that is the subject of the '289 

Registration, Plaintiff disclaimed the exclusive right to use HOTEL & HOMES SOUTH BEACH 

apart from the mark as shown in the registration. 

19. On December 31, 2019, the Association filed a cancellation petition before the 

United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) to 

cancel the SHG Registrations on the basis of fraud in the prosecution of the SHG registrations, 

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descriptiveness, lack of bona fide intent to use the marks when filing the applications, lack of 

bona fide use of the marks when filing the Statements of Use, and abandonment of the marks. 

20. On April 20, 2020, the Association applied for the mark 1 HOMES in United States 

Service Mark Application Serial No. 88879248 (the “Second Association Application”) on an 

intent to use basis in International Class 25 for “Hats; Shirts.” 

21. On May 13, 2020, the Association filed U.S. Application Serial No. 88914537 (the 

“Third Association Application”) before the USPTO to register “1 HOMES” on an intent to use 

basis 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.” 

22. On May 20, 2020, the Association filed U.S. Application Serial No. 88925433 (the 

“Fourth Association Application”) before the USPTO on May 20, 2020 to register “1 HOMES” 

in International Class 35 for “online retail store services for clothing and accessories; On-line 

retail gift shops.” 

23. The Association’s First Association Application, Second Association Application, 

Third Association Application, and Fourth Association Application (collectively, the 1 HOMES 

Applications) remain pending before the United States Patent and Trademark Office. 

24. The Association’s 1 HOMES mark is protected as a common law trademark due to 

the Association’s extended use of the mark in commerce. 

25. Upon information and belief, Plaintiff has improperly used in commerce in the 

United States the Association’s 1 HOMES mark. 

26. Plaintiff’s use of the 1 HOMES mark was without permission or consent of the 

Association. 

27. The Association has not granted Plaintiff a license to use its 1 HOMES mark. 

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28. Plaintiff’s unauthorized use of the 1 HOMES mark constitutes direct infringement 

of the Association’s exclusive rights in its 1 HOMES mark. 

29. Plaintiff’s use of the Association’s 1 HOMES mark in interstate commerce in 

connection with its services is likely to confuse, mislead, or deceive the public as to the origin of 

the mark, or cause these persons to believe that the services or products have been sponsored, 

approved, authorized, licensed by, or are in some way affiliated or connected with the Association. 

30. The Association has requested that Plaintiff cease its acts of trademark infringement 

and has given Defendants actual notice of its common law trademark rights in the mark 1 HOMES 

but Defendants refused to cease their infringing acts. 

31. Moreover, Plaintiff and its counsel have engaged in what can only be characterized 

as a campaign of harassment against the Association’s members. Plaintiff, via its counsel, has been 

contacting individual members of the Association, without the inclusion of the Association’s 

counsel in an effort to harass and intimidate members of the Association by spreading 

misinformation regarding the dispute between the Parties and threatening further legal action 

against members of the Association in their individual capacity. 

COUNT I: 

DECLARATORY JUDGMENT OF CANCELLATION OF PLAINTIFF’S SHG 

REGISTRATIONS BASED ON FRAUD COMITTED DURING PROSECUTION 

32. The Association herein restates and reincorporates into this Count the allegations 

of Paragraphs 1 through 31 herein. 

33. Upon information and belief, contrary to Plaintiff’s declaration, it did not have the 

requisite bona fide intention to use the SHG Marks in U.S. commerce in connection with all of the 

applied-for services when it filed its applications for the SHG Marks. 

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34. Upon information and belief, contrary to Plaintiff’s declaration, Plaintiff was not 

using the SHG Marks in U.S. commerce in connection with all of the applied-for services when it 

filed its Statements of Use for the 1 HOTEL & HOMES Registrations. 

35. Upon information and belief, Plaintiff falsely represented to the USPTO that it had 

the requisite bona fide intention to use the SHG Marks in U.S. commerce in connection with all of 

the applied-for services when Plaintiff filed its applications for the SHG Marks. 

36. Upon information and belief, Plaintiff falsely represented to the USPTO that it was 

using the SHG Marks in U.S. commerce in connection with all of the applied-for services when 

Plaintiff filed its Statements of Use for the SHG Marks. 

37. Upon information and belief, at the time of filing its applications for the 

SHG Marks, Plaintiff had knowledge that its representation that it had the requisite bona fide 

intention to use the SHG Marks in U.S. commerce in connection with all of the applied-for services 

was false. 

38. Upon information and belief, at the time of filing its Statements of Use for the SHG 

Marks, Plaintiff had knowledge that its representation that it was using the SHG Marks in U.S. 

commerce in connection with all of the applied-for services was false. 

39. Upon information and belief, at the time of filing its applications for the SHG 

Marks, Plaintiff intended to induce the USPTO into conferring registration upon Plaintiff for the 

SHG Marks. 

40. Upon information and belief, at the time of filing its Statements of Use for the SHG 

Marks, Plaintiff intended to induce the USPTO into conferring registration upon Plaintiff for the 

SHG Marks. 

41. Based upon the foregoing, and upon information and belief, Plaintiff knowingly 

committed fraud on the USPTO by making false, material representations in its applications and 

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Statements of Use for the SHG Marks that Plaintiff knew were false with intent to deceive the 

USPTO. 

42. Based on the foregoing, and upon information and belief, the SHG Registrations, 

resulting from the USPTO’s reliance on Plaintiff’s false representations, were obtained 

fraudulently, rendering the SHG Registrations invalid and subject to cancellation. 

43. Fraud cannot be cured by the deletion of services from registrations. 

44. Based upon the foregoing, the SHG Registrations should be cancelled for having 

been procured by fraud under Section 14(3) of the Lanham Act. 

COUNT II: 

DECLARATORY JUDGMENT OF CANCELLATION OF PLAINTIFF’S SHG 

REGISTRATIONS BASED ON DESCRIPTIVENESS OF THE SHG MARKS AND 

LACK OF SECONDARY MEANING 

 

45. The Association herein restates and reincorporates into this Count the allegations 

of Paragraphs 1 through 31 herein. 

46. Each of the SHG Marks is merely descriptive. 

47. The SHG Marks had not obtained at the time of the filing of the applications 

sufficient secondary meaning to qualify for registration and have not acquired secondary meaning 

at this time to qualify for registration. 

48. The term “1” in the SHG Marks is merely descriptive and had not obtained at the 

time of the filing of the applications sufficient secondary meaning to qualify for registration and 

has not acquired secondary meaning at this time to qualify for registration. 

49. The wording “HOTEL & HOMES” in the '287 Registration is merely descriptive. 

50. The wording “HOTEL & HOME” in the '423 Registration is merely descriptive. 

51. The term “HOTEL & HOMES SOUTH BEACH” in the '289 Registration is merely 

descriptive. 

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52. The term “SOUTH BEACH” in the '289 Registration is geographically descriptive. 

53. As merely descriptive marks, the SHG Registrations should not stand as an obstacle 

to the Association Application. 

54. Based upon the foregoing, the SHG Registrations should be cancelled for being 

merely descriptive under Section 2(e) of the Lanham Act. 

COUNT III: 

DECLARATORY JUDGMENT OF CANCELLATION OF PLAINTIFF’S SHG 

REGISTRATIONS BASED ON LACK OF BONA FIDE INTENT TO USE THE SHG 

MARKS AT THE TIME OF APPLICATION 

55. The Association herein restates and reincorporates into this Count the allegations 

of Paragraphs 1 through 31 herein. 

56. Upon information and belief, Plaintiff did not have the requisite bona fide intention 

to use the SHG Marks in U.S. commerce in connection with all of the applied-for services when 

Plaintiff filed its applications for the SHG Marks. 

57. Upon information and belief, as of the application filing date for the 

SHG Registrations, Plaintiff did not have the requisite bona fide intention to use the 

SHG Marks in U.S. commerce in connection with, inter alia, the following services identified in 

the applications for the SHG Marks: 

“leasing, rental, and management of condominiums; real estate brokerage 

services” [Class 36]; “casinos, namely, gambling and gaming services; live 

entertainment, namely, live performances by musical bands and live comedy shows; 

night club services; leisure club services, namely, country club and golf club 

services; ski resorts; providing skiing facilities; providing skiing instruction and 

skiing equipment; arranging and conducting entertainment exhibitions in the 

nature of comedy acts, dance acts, theater acts, plays, stage productions, magic 

shows, performance art shows” [Class 41]; and “health spa services, namely, 

cosmetic body care services” [Class 44]. 

58. Based on the foregoing, Plaintiff did not have a bona fide intent to use the SHG 

Marks in U.S. commerce in connection with all of the identified services as of the filing date of 

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the applications under Section 1(b) of the Lanham Act, rendering the SHG Registrations invalid 

and subject to cancellation. 

59. The SHG Registrations should therefore be cancelled. 

COUNT IV: 

DECLARATORY JUDGMENT OF CANCELLATION OF PLAINTIFF’S SHG 

REGISTRATIONS BASED ON LACK OF BONA FIDE INTENT TO USE THE SHG 

MARKS AT THE TIME OF FILING ITS STATEMENT OF USE 

60. The Association herein restates and reincorporates into this Count the allegations 

of Paragraphs 1 through 31 herein. 

61. Upon information and belief, Plaintiff was not using the SHG Marks in U.S. 

commerce in connection with all of the applied-for services when Plaintiff filed its Statements of 

Use for the SHG Marks. 

62. Pursuant to Sections 1(b), 1(d) and 3 of the Lanham Act and 37 C.F.R. 

Section 2.88, all services included in the Statement of Use filed for in an application for registration 

under Section 1(b) must have been “in use” at the time of filing of the Statement of Use. 

63. Upon information and belief, as of the date the Statements of Use for the SHG 

Marks were filed, Plaintiff was not using the SHG Marks in U.S. commerce in connection with, 

inter alia, the following services identified in the Statements of Use for the SHG Marks: 

“leasing, rental, and management of condominiums; real estate brokerage 

services” [Class 36]; “casinos, namely, gambling and gaming services; live 

entertainment, namely, live performances by musical bands and live comedy shows; 

night club services; leisure club services, namely, country club and golf club 

services; ski resorts; providing skiing facilities; providing skiing instruction and 

skiing equipment; arranging and conducting entertainment exhibitions in the 

nature of comedy acts, dance acts, theater acts, plays, stage productions, magic 

shows, performance art shows” [Class 41]; and “health spa services, namely, 

cosmetic body care services” [Class 44]. 

64. Based on the foregoing, Plaintiff did not have bona fide use of the SHG Marks in 

U.S. commerce in connection with all of the identified services as of the date the Statements of 

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Use were filed or otherwise within the expiration of the time for filing Statements of Use, rendering 

the SHG Registrations invalid and subject to cancellation. 

65. The SHG Registrations should therefore be cancelled. 

COUNT V: 

DECLARATORY JUDGMENT OF CANCELLATION OF PLAINTIFF’S SHG 

REGISTRATIONS BASED ON ABANDONMENT OF THE SHG MARKS 

66. The Association herein restates and reincorporates into this Count the allegations 

of Paragraphs 1 through 31 herein. 

67. Upon information and belief, despite the SHG Registrations having registered more 

than four (4) years ago, Plaintiff has never used, does not presently use, and has no bona fide 

intention to use the SHG Marks in U.S. commerce in connection with all of the services for which 

the SHG Marks are registered. 

68. Upon information and belief, despite the SHG Registrations having registered more 

than four (4) years ago, Plaintiff has never used, does not presently use, and has no bona fide 

intention to use the SHG Marks in U.S. commerce in connection with, inter alia, the following 

services for which the SHG Marks are registered: 

“leasing, rental, and management of condominiums; real estate brokerage 

services” [Class 36]; “casinos, namely, gambling and gaming services; live 

entertainment, namely, live performances by musical bands and live comedy shows; 

night club services; leisure club services, namely, country club and golf club 

services; ski resorts; providing skiing facilities; providing skiing instruction and 

skiing equipment; arranging and conducting entertainment exhibitions in the 

nature of comedy acts, dance acts, theater acts, plays, stage productions, magic 

shows, performance art shows” [Class 41]; and “health spa services, namely, 

cosmetic body care services” [Class 44]. 

69. Upon information and belief, given that more than four (4) years have elapsed since 

the SHG Registrations registered, Plaintiff has no bona fide intention to use the SHG Marks in 

U.S. commerce in connection with, inter alia, the foregoing services. 

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70. Consequently, the SHG Registrations have been abandoned and are therefore 

subject to cancellation for such services. 

71. The SHG Registrations should therefore be cancelled. 

COUNT VI: 

FALSE DESIGNATION OF ORIGIN 

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

72. The Association herein restates and reincorporates into this Count the allegations 

of Paragraphs 1 through 31. 

73. Plaintiff’s use of the Association’s 1 HOMES mark improperly suggests to relevant 

prospective and/or actual consumers that Plaintiff’s services and/or products are affiliated, 

sponsored or related to the Association. 

74. Plaintiff’s use of the Association’s 1 HOMES mark is likely to cause confusion or 

mistake, or is likely to deceive as to the origin or sponsorship of Plaintiff’s services or commercial 

activities in violation of 15 U.S.C. §1125(a). More specifically, Plaintiff has used and continues to 

use, in relation to commercial activities, a false designation or origin, or a false or misleading 

description which is likely to cause confusion, and to cause mistake, and to deceive, as to the 

affiliation, connection, or association of Plaintiff with the Association. 

75. As a direct and proximate result of Plaintiff’s willful and deliberate conduct, the 

Association has suffered, and will continue to suffer, substantial injuries, loss, and damage to its 

business and goodwill. 

76. Upon information and belief, Plaintiff’s acts of unfair competition are willful, and 

this is an exceptional case. 

77. If Plaintiff is permitted to continue its willful and deliberate acts of infringement, 

the Association will be irreparably harmed. As such, the Association is entitled to injunctive relief 

prohibiting Plaintiff and its affiliates from using the 1 HOMES mark with their services.

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COUNT VII: 

COMMON LAW TRADEMARK INFRINGEMENT 

78. The Association herein restates and reincorporates into this Count the allegations 

of Paragraphs 1 through 31. 

79. Plaintiff’s use of the Association’s 1 HOMES mark is likely to cause confusion or 

mistake, or is likely to deceive as to the origin or sponsorship of Plaintiff’s services or commercial 

activities. 

80. Plaintiff’s’ use of the Association’s 1 HOMES mark constitutes common law 

trademark infringement. 

81. Upon information and belief, Plaintiff’s acts of infringement are willful, and this is 

an exceptional case. 

82. If Plaintiff is permitted to continue its willful and deliberate acts of infringement, 

the Association will be irreparably harmed. As such, the Association is entitled to injunctive relief 

prohibiting Plaintiffs from using the 1 HOMES mark with their services. 

JURY TRIAL REQUEST 

 

Pursuant to Rule 38(a) of the Federal Rules of Civil Procedure, the Association demands a 

trial by jury of all issues properly triable as of right by a jury. 

PRAYER FOR RELIEF 

WHEREFORE, Defendant 2399 COLLINS AVENUE CONDOMINIUM 

ASSOCIATION, INC. prays for entry of judgment in its favor and against Plaintiff as follows: 

a) A judgment that Plaintiff has infringed the Association’s 1 HOMES mark; 

b) A judgment that Plaintiff has committed acts of unfair competition, false designation of 

origin and false advertising under 15 U.S.C. §1125(a); 

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c) A permanent injunction restraining and enjoining Plaintiff, and all of their parents, officers, 

directors, managers, owners, executives, employees, contractors, agents, successors and 

assigns, and all persons in active concert or participation with any of them from using the 

Association’s 1 HOMES mark; 

d) An award to the Association of the costs of this action and reasonable attorneys’ fees; and 

e) An award to the Association of such other and further relief as the Court shall deem just. 

 Respectfully submitted this July 20, 2020. 

/s/ Stephanie Vazquez 

Stephanie Vazquez, Esq., FL Bar #1011124 

Email: svazquez@allendyer.com 

ALLEN, DYER, DOPPELT + GILCHRIST, PA 

1221 Brickell Ave., Suite 2400 

Miami, Florida 33131 

Telephone: (305) 374-8303 

Facsimile: (305) 374-8306 

Brian R. Gilchrist, Esq., FL Bar #774065 

Email: bgilchrist@allendyer.com 

ALLEN, DYER, DOPPELT + GILCHRIST, PA 

255 South Orange Avenue, Suite 1401 

Orlando, Florida 32801 

Telephone: (407) 841-2330 

Facsimile: (407) 841-2343 

Counsel for Defendants-Counterclaimants

 

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CERTIFICATE OF SERVICE 

I HEREBY CERTIFY that on July 20, 2020, I presented the foregoing to the Clerk of the 

Court for uploading to the Case Management/Electronic Case Files (“CM/ECF”) System, which 

will send a Notice of Electronic Filing to Counsel of Record: 

Gavin Cunningham Gaukroger 

Berger Singerman LLP 

350 East Las Olas Blvd., Ste 1000 

Fort Lauderdale, FL 33301 

(954) 525-9900 

Fax: (954) 523-2872 

Email: ggaukroger@bergersingerman.com

Claudia Ray 

Email: claudia.ray@kirkland.com

Dale M. Cendali 

Email: dale.cendali@kirkland.com

Shanti Sadtler Conway 

Email: shanti.conway@kirkland.com

Kirkland & Ellis LLP 

601 Lexington Avenue 

New York, NY 10022 

(212) 446-4800 

Christina Michele Perry 

Berger Singerman LLP 

1450 Brickell Avenue, Ste. 1000 

Miami, FL 33131 

305-755-9500 

Fax: 305-714-4340 

Email: cperry@bergersingerman.com 

/s/ Stephanie Vazquez 

Stephanie Vazquez, Esq.

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