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

Trademark Trial and Appeal Board

Sep 2, 2014

No. 91187956 (T.T.A.B. Sep. 2, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: September 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

JEC II LLC, The One Group LLC, and One Marks LLC
v.
SH Group Global IP Holdings, L.L.C.1

Opposition No. 91187956 (parent)
Opposition No. 91188809 (child)
________
JEC II LLC
v.
SH Group Global IP Holdings, L.L.C.
Cancellation No. 92049165 (child)
_______

Michael R. Gilman and Jonathan M. Doloff of Pergament Gilman & Cepeda LLP for
JEC II LLC, The One Group LLC, and One Marks LLC.
Stephen G. Janoski and Stephen A. Straub of Roylance, Abrams, Berdo & Goodman,
L.L.P. for CGG, L.L.C.
_______
Before Bucher, Bergsman and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:

1 By change of name from CGG, L.L.C., recorded at Reel/Frame 5294/0237 on June 3, 2014.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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This consolidated proceeding has been brought by Plaintiffs JEC II LLC (“JEC”),
The One Group LLC (“One Group”), and One Marks LLC (“One Marks”) (collectively
“Opposers” or “Plaintiffs”) against defendant SH Group Global IP Holdings, L.L.C.
(formerly known as CGG, L.L.C.) (“CGG” or “Applicant”), and comprises two
oppositions and one cancellation proceeding against CGG’s marks. The oppositions
were consolidated on June 3, 2009 and the cancellation proceeding consolidated
therewith on March 30, 2012.
I. Consolidated Proceedings
A. Opposition Nos. 91187956 and 91188809
In the oppositions, Plaintiffs oppose registration of Applicant’s three design
marks (the “1HOTEL” marks):

and
2

2 Application Serial Nos. 78926922; 78926965; and 78927075, respectively; each filed on
July 11, 2006 on the basis of Applicant’s bona fide intent to use the mark in commerce.
Disclaimers to “Hotel,” “Hotel & Residences” and “Hotel & Residences New York” have been
entered.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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The services for which Applicant’s applications have been filed are identical,
namely:
“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” in International Class 36,
“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; provision of sport and
recreational facilities” in International Class 41,
“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” in
International Class 43, and
“health spa services for health and wellness of the body
and spirit offered at health resorts; health spa services,
namely, cosmetic body care services” in International
Class 44.3
Plaintiffs allege that Applicant’s 1HOTEL marks so resemble opposer JEC’s
previously used and registered mark ONE MANHATTAN, in typed drawing form,4
for “night club services” in International Class 41 and “café; bar services; cocktail

3 Applicant filed a motion to divide Application Serial Nos. 78926965 and 78927075 to list,
in child applications, additional goods and services that are not the subject of this
proceeding. The motion was granted on June 3, 2009. Child application serial no. 78981115,
created from 78926965, registered on October 16, 2012 under Reg. No. 4226101. Child
application serial no. 78981116, created from 78927075, registered on October 16, 2012
under Reg. No. 4226105.
4 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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lounge; and restaurant services” in International Class 435 that when used in
association with hotel services, restaurants and bars, confusion, mistake or
deception among consumers is likely to result under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d).6 JEC further claims prior use and ownership of pending
applications for the mark ONE for “night club services” in International Class 417
and “café; bar services; cocktail lounge; and restaurant services” in International
Class 438 and that Applicant’s use of its marks is also likely to cause confusion with
the ONE mark. During its trial period, JEC made the subsequently issued
registrations for the ONE mark of record by Notice of Reliance filed January 16,
2013.9 When an application has been clearly identified in the notice of opposition
and use of the applied-for mark is asserted as a bar to registration, if the
registration issues prior to the close of the opposer’s trial period and is properly
made of record, we will construe the notice of opposition to allege a likelihood of
confusion in view of the registration that has issued based on the pleaded
application. Accordingly, we have deemed the notice of opposition amended to allege

5 Reg. No. 2973611; registered July 19, 2005; Section 8 declaration accepted. No claim is
made to the exclusive right to use the word “Manhattan” apart from the mark as shown.
6 Opposers also pleaded claims under Sections 2(a), 15 U.S.C. § 1052(a) (“deceptiveness”
and “false suggestion of a connection”) and 43(a), 15 U.S.C. § 1125(a) (“dilution”). The
claims were not pursued at trial or in the brief and we have given them no further
consideration. See UMG Recordings, 92 USPQ2d at 1045 (Board may consider a pleaded
claim to have been waived if the party raising the claim has not pursued the claim in its
brief).
7 Reg. No. 4214402, registered September 25, 2012, issued from Serial No. 78436394.
8 Reg. No. 3924793, registered March 1, 2011, issued from Serial No. 78458152.
9 53 TTABVue. References to TTABVue are to entries in Opp. No. 91187956 unless
otherwise noted.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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a likelihood of confusion in view of JEC’s registrations for the ONE mark. UMG
Recordings Inc. v. O’Rourke, 92 USPQ2d 1042, 1045 n.12 (TTAB 2009) (“[W]hile an
opposer that pleads ownership of an application would have to make any
subsequently issued registration of record, it would not have to amend its notice of
opposition prior to doing so. The pleading of the application ... provided sufficient
notice to the applicant that the opposer would rely on a registration from the
application for its likelihood of confusion claim.”); Time Warner Entertainment Co.
v. Jones, 65 USPQ2d 1650, 1653 n.2 (TTAB 2002) (opposition deemed amended to
include opposer’s claim of ownership of previously unpleaded registrations where
opposer filed notice of reliance on those registrations at trial and applicant did not
object).
Plaintiffs also plead ownership of pending applications. JEC claims ownership of
a pending application for the mark THE ONE, in standard character form.10
Plaintiff One Marks claims ownership of pending applications for seven marks
beginning with the word “ONE,” such as, e.g., “ONE LAS VEGAS,” “ONE
CHICAGO,” and “ONE NEW YORK,” (the “ONE + city name” marks).11 Plaintiff
One Group claims ownership of a pending application for the mark THE ONE

10 Serial No. 78436384 for “Apartment leasing, rental and management” in International
Class 36 and “Health spa services for health and wellness of the body and spirit” in
International Class 44; filed June 16, 2004 on the basis of applicant’s bona fide intent to use
the mark in commerce.
11 See Plaintiffs’ Notice of Reliance filed January 16, 2013, 53 TTABVue, and infra at p. 24-
5.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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GROUP,12 plus pending applications for marks beginning with the words “THE
ONE” and ending with a place name, such as, e.g., “THE ONE LAS VEGAS,” “THE
ONE CHICAGO,” and “THE ONE NEW YORK” (the “THE ONE + city name”
marks), all in standard character form.13 Plaintiffs allege a likelihood of confusion
with these additional applications.
In its amended answer,14 Applicant denies Plaintiffs’ likelihood of confusion
claims.15 Applicant also alleges, as affirmative defenses, that Plaintiffs’ marks “are
void ab initio” as having been filed in the name of the wrong owner,16 that Plaintiffs
lack standing,17 and that Plaintiffs’ marks have “lost their significance as marks”
due to inadequate quality control and “‘naked licensing’ and consent agreements.”18
To the extent these allegations are directed to JEC’s registered marks, “it is well
settled that an applicant cannot collaterally attack opposer’s registration in the

12 Serial No. 78528430 for “hotels, restaurants, cafes, bar services, cocktail lounges, resort
hotels; health resort services, namely, providing food and lodging that specialize in
promoting patrons’ general health and well-being; and spa services, namely, providing
temporary accommodations and meals to clients of a health or beauty spa” in International
Class 43; filed December 7, 2004 on the basis of applicant’s bona fide intent to use the mark
in commerce. A disclaimer to “Group” has been entered.
13 Id. One Marks and One Group’s applications were pleaded in both the oppositions and
the cancellation action. The city names in the ONE + city name and the THE ONE + city
name marks have all been disclaimed.
14 Applicant amended its initial answer as a matter of course within 21 days after service.
Fed. R. Civ. Pro. 15(a).
15 Applicant also asserted the affirmative defenses of failure to state a claim upon which
relief may be granted and unclean hands, neither of which were pursued at trial or in its
brief and which are therefore deemed to have been waived. Research in Motion Limited v.
Defining Presence Marketing Group Inc., 102 USPQ2d 1187 (TTAB 2012) (affirmative
defenses not pursued at trial deemed waived).
16 Answer, Affirmative defenses ¶6, 4 TTABVue 10.
17 Id. at ¶7.
18 Id. at ¶8.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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absence of a counterclaim for cancellation,” Trademark Rule 2.106(b)(2)(ii), and as
no counterclaim to cancel the pleaded registrations has been filed, the allegations
have not been considered. See The Nasdaq Stock Market, Inc. v. Antartica, S.R.L.,
69 USPQ2d 1718, 1735 (TTAB 2003) (“The law, of course, is well settled that an
applicant cannot collaterally attack opposer’s registration in the absence of a
counterclaim for cancellation”); Cosmetically Yours, Inc. v. Clairol, Inc., 424 F.2d
1385, 165 USPQ 515, 517 (CCPA 1970); Edom Labs. Inc. v. Lichter, 102 USPQ2d
1546, 1546, n. 6 (TTAB 2012) (Board will not consider collateral attack on the
validity of opposer’s pleaded registration absent properly filed counterclaim).19
B. Cancellation No. 92049165
On April 9, 2008, Plaintiff JEC filed a petition to cancel Applicant’s20
registration for the mark ONE (in standard characters) for “hotel services for
preferred customers” in International Class 43.21 Seeking cancellation under
Section 2(d), JEC claims prior use of the marks ONE and ONE MANHATTAN;
ownership of Reg. No. 2973611 for the mark ONE MANHATTAN for “night club
services and café; bar services; cocktail lounge; and restaurant services”; and that

19 Applicant’s assertion in its brief that the Port Authority of New York and New Jersey
petitioned to cancel the registration, citing Opp. No. 9121146, is of no relevance to this
proceeding. Applicant is not in privity with any party; moreover, said opposition was
terminated on February 5, 2014.
20 Although CGG is actually the “Registrant” in the cancellation proceeding, for the sake of
consistency, this decision uses the term “Applicant” interchangeably with CGC when
making reference to the defendant in both actions.
21 Reg. No. 3349279; filed November 19, 2003; issued December 4, 2007; Section 8
declaration accepted.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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Applicant’s ONE mark so resembles JEC’s ONE and ONE MANHATTAN marks as
to be likely to cause confusion, mistake or deception.22
On February 8, 2010, JEC sought to amend the petition to cancel to add claims
of fraud and lack of bona fide intent to use the mark in commerce.23 The motion to
amend was granted by the Board.24 On January 11, 2011, JEC requested that it be
allowed to further amend the cancellation petition to add a claim of nonuse. This
request was also granted.25 However, JEC’s requests to add claims of non-
ownership, and that Applicant was improperly assigned Reg. No. 3349279 in
violation of Section 10, were denied by the Board.26 Those claims are consequently
not before us and we have given no consideration to any arguments, evidence or
testimony related thereto.
Applicant denied the salient allegations in JEC’s second amended complaint (the
operative pleading in this case). Applicant further asserts that JEC has abandoned
its marks because it “is not rendering any services in connection with ONE, ONE
MANHATTAN, or any other ONE-formative mark. Plaintiffs’ use of its ONE marks

22 Petition for Cancellation ¶ 4, 1 TTABVue 5. Additional claims under Section 2(a),
15 U.S.C. § 1052(a) (“deceptiveness” and “false suggestion of a connection”), Section 14,
15 U.S.C. § 1064 (“misrepresentation of source”) and Section 43(a), 15 U.S.C. § 1125(a)
(“dilution”) were either stricken by the Board on December 29, 2010, 66 TTABVue 4, n.2.,
(as to the dilution and false association claims) or were not pursued at trial or in the briefs
(as to deceptiveness and misrepresentation of source) and are considered waived.
23 39 TTABVue.
24 Board order December 29, 2010, 66 TTABVue.
25 Board order January 31, 2011, 68 TTABVue.
26 Id. In this order, the Board denied JEC’s request for reconsideration of the Board’s
December 29, 2010 order striking such claims. The Board’s holding was upheld on petition
to the Director on May 18, 2011, 92 TTABVue.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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referenced in the Second Amended Petition to Cancel ceased on or before February
2010 and, on information and belief, has not been rendered since.”27 This
affirmative defense may not properly be raised, as noted supra, because no
counterclaim to cancel JEC’s registrations for the marks ONE (Reg. Nos. 4214402,
3924793) or ONE MANHATTAN (Reg. No. 2973611) have been filed. Trademark
Rule 2.114(b)(2)(ii).28 Moreover, it is immaterial that JEC filed a declaration under
Section 8 in the ONE MANHATTAN registration that was accepted on the basis of
JEC’s excusable nonuse rather than on use of the mark in commerce. We do not
consider the affidavit of nonuse to constitute an express abandonment of the ONE
MANHATTAN mark.29 Further, the Internet materials submitted under Applicant’s
Third Notice of Reliance,30 which describe closure of the ONE SUNSET restaurant
(located in West Hollywood, California) in 2009 and closure of the ONE
MANHATTAN restaurant in New York on or before March 2010, are not dispositive
to prove that JEC has abandoned the ONE mark. Mr. Segal’s rebuttal testimonial

27 Answer, affirmative defenses ¶3, 80 TTABVue 7. Applicant also raised additional
affirmative defenses that were not pursued at trial and are considered waived. Applicant’s
offer to “accommodate a restriction of its use” was not pursued as well and does not factor
into our decision herein. Answer, ¶6, 80 TTABVue 9.
28 Likewise, Applicant’s affirmative defense that the registrations issued in the name of the
wrong owner cannot stand as it asserts an impermissible invalidity claim against the
registrations.
29 To the extent Applicant is alleging that it was error to accept JEC’s demonstration of
special circumstances to excuse nonuse, such alleged errors in post-registration
examination practice do not state a ground for cancellation. Flash & Partners S.P.A. v. I. E.
Manufacturing LLC, 95 USPQ2d 1813, 1816 (TTAB 2010) (“Considerations of due process,
as well as fairness to parties against whom allegations of examination error are asserted,
dictate that such matters be solely a matter for ex parte determination, and not grounds for
opposition or cancellation.”).
30 74 TTABVue.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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affidavit states that a ONE restaurant was opened at the Revel Hotel in Atlantic
City, NJ on April 9, 2012, corroborating plaintiff’s intent (despite the subsequent
closure of the restaurant on January 1, 2013) to resume use of the mark ONE
following closure of the California and New York restaurants in 2009 and 2010.31
The affirmative defense of abandonment is denied.
Notably, the ONE mark registrations (as pending applications) were pleaded
only in the oppositions and not in the cancellation action. Nonetheless, Plaintiffs
submitted proof of ownership of the registrations under Notice of Reliance during
their trial period without objection, and Applicant asserted abandonment against
the ONE marks in the cancellation action.32 Thus, Applicant should have been
aware that in all proceedings Plaintiff JEC asserted rights in the ONE mark
applications for which registrations ultimately issued. See Standard Knitting Ltd. v.
Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917, 1919-20 (TTAB 2006)
(opposer’s identification, in notice of opposition, of pending application that later
matured to registration put applicant on notice of opposer’s reliance thereon;
applicant later amended its counterclaim to seek cancellation of the registration
that issued based on the pending application). We therefore find that this issue was
tried by implied consent and consider the ONE mark registrations as having been
pleaded in the cancellation. See Fed. R. Civ. Pro. 15(b)(2) (issues tried by implied

31 Segal Rebuttal Affidavit para. 6, 80 TTABVue 3. See also 77 TTABVue 12-26 (online
articles discussing the closure of the ONE restaurant in Atlantic City, New Jersey).
32 Answer, Affirmative defense ¶ 3, 80 TTABVue 7 (“Petitioner is not rendering any services
in connection with ONE, ONE MANHATTAN, or any other ONE-formative mark.”) (from
92049165).
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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consent must be treated in all respects as if raised in the pleadings); TBMP
§ 507.03(b) (2014) (implied consent found where non-offering party raises no
objection to the introduction of evidence on the issue and was fairly apprised that
the evidence was being offered in support of the issue). Again, there is no
counterclaim to cancel any of JEC’s registrations, which are thus accorded all
benefits under Section 7(b) allocated to valid and subsisting registrations.
In sum, in addition to the claim of priority and likelihood of confusion under
Section 2(d), the second amended petition to cancel includes claims that Applicant
never provided “hotel services for preferred guests,”33 that Applicant committed
fraud on the Office,34 and that Applicant’s predecessor, Southeast Management,
LLC (“Southeast”), “did not have a bona fide intent to use the ONE mark in United
States commerce on or in connection with the services identified in U.S. Application
Serial No. 78/329,983 on the date the Application was filed.”35
II. Evidentiary Matters
On September 7, 2012, the parties stipulated that they would introduce the
“discovery deposition transcript with exhibits for each of the three persons deposed
to date in the consolidated proceeding in lieu of testimonial depositions.”36

33 Petition for Cancellation ¶ 17, 67 TTABVue 50 (from 92049165).
34 Petition for Cancellation ¶18, 67 TTABVue 50 (from 92049165).
35 Petition for Cancellation ¶30, 67 TTABVue 51 (from 92049165).
36 48 TTABVue. These persons are Jonathan Segal for plaintiffs; Applicant’s expert witness,
Dr. Henry D. Ostberg and CGG’s Vice President, Roy C. Shanholtz III for Applicant.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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The parties further stipulated that they would not take testimonial depositions
of four named persons but would agree that “testimony with authenticated exhibits
may be introduced via written affidavit” of such persons.37
The parties further stipulated that affidavits and declarations that were used in
support of earlier-filed motions for summary judgment could be introduced by either
party without further authentication. Finally, the parties agreed that Applicant
would not take the testimony deposition of Michael Robinson, Southeast’s Manager,
relying instead on Mr. Robinson’s affidavit that was executed on January 14, 2011
in support of Applicant’s motion for summary judgment.
Pursuant to the stipulation, Applicant introduced the following into evidence, to
which Plaintiffs object:
1. The April 2011 discovery deposition of Dr. Ostberg, together with the
results of a shopping mall intercept survey entitled “Survey to
Determine Consumer Perceptions of ‘One’ as a Company Name” (the
“Ostberg Survey”);38

2. Two affidavits executed by Roy Clifton Shanholtz, III, Applicant’s Vice
President, (the first executed March 8, 2010 in support of Applicant’s
motion for summary judgment;39 the second dated July 2, 201340),
together with exhibits; and

3. The affidavit of Michael Robinson executed January 14, 2011 in
support of Applicant’s motion for summary judgment, together with
exhibits.41

37 Id. This list includes Mr. Shanholtz.
38 72 TTABVue, Applicant’s Seventh Notice of Reliance.
39 68 TTABVue, filed July 6, 2013.
40 73 TTABVue, filed July 6, 2013.
41 69 TTABVue, filed July 6, 2013. Plaintiffs’ further motion to exclude Exhibit Nos. 18-21,
25 and 27-28, attached to Applicant’s First Notice of Reliance; and Exhibit Nos. 12-14 and
16-21, attached to Applicant’s Third Notice of Reliance, was denied by Board order dated
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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A. The Ostberg Survey
Plaintiffs object to the introduction of the Ostberg Survey on several grounds,
including witness credibility and that the survey is irrelevant and was improperly
conducted. Although we acknowledge that Plaintiffs’ submission of decisions from
prior courts show that some have discounted or found surveys conducted by Dr.
Ostberg to be inadmissible,42 we find for purposes of this proceeding that Dr.
Ostberg is credible as an expert witness. In its brief, Applicant points out that Dr.
Ostberg has been recognized as an expert witness in federal court at least 36 times,
and at least once before the TTAB.43 Dr. Ostberg has also published written works
regarding survey methodologies.44
As to its relevancy, the Ostberg Survey was self-identified as a “secondary
meaning survey”45 designed to measure the level of awareness of the term ONE as
the name of a bar, lounge, or restaurant among prospective consumers, that is, “to
determine whether consumers believed that the word or number ‘ONE’ is used as a
name by a single company or by various companies in the bar, nightclub,

February 10, 2014. 91 TTABVue. Plaintiffs have also entered objections, via their first
rebuttal Notice of Reliance filed August 21, 2013, 77 TTABVue, to publications attached to
Applicant’s third Notice of Reliance. To the extent the internet materials are no longer
publically available, we have disregarded them.
42 Copies of decisions submitted with plaintiffs’ first rebuttal Notice of Reliance,77
TTABVue. See, e.g., 77 TTABVue at 74 and 101-102.
43 Defendant’s Response to Plaintiffs’ Evidentiary Objections; 88 TTABVue 97.
44 Id. See also, Appendices G and H to the Ostberg Survey, 72 TTABVue 182-190.
45 See, e.g., Major Conclusion, 72 TTABVue 135 and Appendix E, Research Procedures
Used, 72 TTABVue 175.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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restaurant, hotel field.”46 Because the survey was designed to determine only
whether the word “ONE” was known as a mark, and not whether there was a
likelihood of confusion between the parties’ marks, the survey’s probative value is
severely limited. While it may speak to the issue of the strength of Plaintiffs’ ONE
and ONE-derivative marks, it carries virtually no weight as to the ultimate
determination of likelihood of confusion.47 As to the methodology used, any alleged
defects (Plaintiffs argue that the survey improperly defined the universe, contained
a too-small sample, and asked confusing questions) go to the weight and reliability
of the evidence and not its admissibility. With these limitations in mind, we admit
the Ostberg Survey.
B. Shanholtz’s First and Second Affidavits
Plaintiffs have filed objections to both affidavits executed by Mr. Shanholtz,
Applicant’s Vice President: the March 8, 2010 affidavit (“Shanholtz I”) and the July
2, 2013 affidavit (“Shanholtz II”), including exhibits attached to the affidavits.
Plaintiffs contend that Shanholtz I cannot be considered testimony because as
an unsworn document it lacks proper authentication. However, inasmuch as the
affidavit and accompanying exhibits were originally submitted in connection with
the parties’ summary judgment motion, the submission complies with the parties’
stipulation and requires no further authentication.48 Plaintiffs further contend that

46 Ostberg Dep., p. 31, 72 TTABVue 34.
47 During his deposition, Dr. Ostberg was asked, “Did you reach a conclusion regarding
likelihood of confusion?” He answered, “No, no. It wasn’t one of the objectives of the study.”
At p. 81, 72 TTABVue 84.
48 See at 54 TTABVue in Cancellation No. 92049165.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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the affidavit is hearsay. Shanholtz’s statements as to what constitutes “hotel
services for preferred guests” are based on his personal knowledge and we have
considered them as lay opinion. On the other hand, we have not considered
Shanholtz’s statements referring to the existence of alleged third-party federal
registrations, as these statements were not based on personal knowledge or
observation but rather on second-hand information provided by counsel. As for the
website evidence (exhibits 1-3), and the New York City yellow page extracts (exhibit
5) attached to Shanholtz I, these too have only been considered for what they show
on their face; they are not considered for the truth of the matter asserted therein.
Thus, the websites are probative evidence only that the websites exist and that the
public may have been exposed to them, but do not establish the existence of any
hotels referenced or that they provide particular services to their guests. See Mag
Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1708 (TTAB 2010), aff’d
unpublished, No. 11-1052, 11-1053 (Fed. Cir. Nov. 9, 2011); Life Zone Inc. v.
Middleman Group Inc., 87 USPQ2d 1953, 1956 n.5 (TTAB 2008). The yellow page
extracts are also not considered for the truth of the matter asserted (that ONE is
commonly in use for restaurants in New York) but only as showing that prospective
customers may have been exposed to the listings.49 See Syngenta Crop. Prot. Inc. v.
Bio-Chek LLC, 90 USPQ2d 1112, 1117 n.7 (TTAB 2009) (printed publication not
falling within exception to hearsay rule will not be considered to prove truth of any
matter asserted).

49 We note that exhibit 4 is a duplicate copy of the Ostberg Survey and as such need not
have been re-submitted.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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Turning to the Shanholtz II affidavit, to the extent Shanholtz II purports to
authenticate Shanholtz I, such is unnecessary under the parties’ stipulation. To the
extent Shanholtz II authenticates the exhibits attached to Mr. Shanholtz’s
discovery deposition conducted June 11, 2009,50 we find that they are properly
authenticated pursuant to the parties’ stipulation. With respect to the trademark
research report attached as exhibit A to Shanholtz II, as it was introduced in
connection with the parties’ cross-motions for summary judgment, we admit the
report. We have considered it to show that Applicant conducted a trademark search,
and as proof that the various marks were listed thereon, but not as proof that the
registrations are subsisting or that the marks shown therein are in use. We further
accept Mr. Shanholtz’s statement that Applicant first used the mark ONE on
August 2007, as being based on his own personal knowledge.51 On the other hand,
we disregard Mr. Shanholtz’s statements concerning the probative value of the
Ostberg Survey, as Mr. Shanholtz has not been qualified as an expert with respect
to surveys, and further disregard as hearsay those statements made in reliance on
second-hand information from counsel. We also have not considered the references
to alleged third-party registrations of marks containing the term “one” inasmuch as
they are not based on personal knowledge nor supported by evidence. We have also
not considered any testimony or evidence presented in connection with Applicant’s

50 Submitted under Notice of Reliance dated July 6, 2013; 70 TTABVue.
51 Shanholtz II, ¶ 14, 73 TTABVue 9; Exhibits D-H. We note that Mr. Shanholtz stated that
“digging of the foundation opening” for Applicant’s Seattle property (the first and only
construction site to date for a 1HOTEL hotel) commenced in September 2007. Shanholtz
Dep., p. 41-2 (6/11/09), 70-71 TTABVue 46-7 (portions filed under seal). See n.79, infra.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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alleged licensee or assignee status vis-à-vis Southeast, as such pertains to the
stricken claims of non-ownership and improper assignment and are therefore
irrelevant.
C. The Robinson Affidavit
Plaintiffs object to admission of the January 14, 2011 affidavit of Michael
Robinson, Manager of Southeast Management, on a number of grounds. Ultimately,
however, the affidavit is no longer relevant to any pending claims in this proceeding
except the claim that Southeast lacked a bona fide intent to use the mark in
commerce, since the Board has struck the other claims to which it pertains, i.e.,
non-ownership and invalid assignment. Accordingly, we consider the Robinson
affidavit only with respect to the claim of lack of bona fide intent to use.
III. The Record
Pursuant to Trademark Rule 2.122(b), the record includes Applicant’s
application files and the pleadings. In addition, the record consists of certified copies
of JEC’s pleaded registrations and applications for the marks ONE and ONE
MANHATTAN, showing status and title in JEC, and certified copies of trademark
applications for the ONE + city name marks showing status and title in One Marks,
and for THE ONE + city name marks and the mark THE ONE GROUP, showing
status and title in One Group.52

52 53 TTABVue.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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Plaintiffs have also introduced the following evidence under Notices of Reliance
pursuant to the parties’ stipulation filed September 7, 2012:53
1. Copy of the September 9, 2009 discovery deposition of Jonathan A. Segal,
Plaintiffs’ managing member;54

2. Copies of third-party registrations that purport to show similarity of
“hotel services” and “hotel services for preferred guests” with “restaurant,”
“bar,” “nightclub” and “lounge” services;55

3. Affidavit of Steve Barnett, Ph.D., dated January 26, 2011 and exhibit (the
“Barnett rebuttal report”);56

4. Official records of the USPTO purporting to show prior proceedings
involving Plaintiffs, and internet materials purporting to show Applicant’s
use of its mark;57

5. Copies of Applicant’s partial answers to Opposer JEC’s first set of
interrogatories propounded in the consolidated oppositions and its first set
of interrogatories propounded in the cancellation;58

6. Copies of excerpts from the USPTO Trademark Acceptable Identification
of Goods & Services, and copies of printed publications purporting to show
publicity of Plaintiffs’ ONE and ONE MANHATTAN marks;59

7. Copies of official records regarding lawsuits involving Plaintiffs with
respect to ONE marks;60

8. Copies of internet materials to show Plaintiffs’ continuing use of its marks
and regarding the Ostberg survey;61

53 48 TTABVue.
54 51-52 TTABVue; portions submitted under seal.
55 54 TTABVue.
56 55 TTABVue.
57 56 TTABVue.
58 59 TTABVue.
59 60 TTABVue.
60 75 TTABVue.
61 77 TTABVue. In light of our evidentiary holdings, supra, we have not considered the
materials submitted to show Southeast’s current corporate status.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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9. Copies of USPTO file histories and internet materials for third-party
registrations introduced by Applicant;62 and

10. Copies of portions of Plaintiffs’ interrogatory responses propounded on
Applicant and of USPTO records showing current status of Plaintiffs’
ONE + city name marks and THE ONE + city name marks (collectively,
the ONE-derivative” marks).63

Plaintiffs submitted the following testimony:

11. Affidavit of Jonathan A. Segal dated January 17, 2013 and exhibits;64 and

12. Rebuttal Testimonial Affidavit of Jonathan Segal.65

In light of our evidentiary holdings, supra, the record for Applicant consists of:
1. Notice of Reliance on third-party marks purporting to show the
widespread use of the term ONE in connection with restaurants;66

2. Notice of Reliance on third-party registrations to show that the Office
accepts the recitation of services “hotel services for preferred customers”;67

3. Notice of Reliance on portions of the file histories of Plaintiffs’ pending
trademark applications and JEC’s two ONE MANHATTAN registrations,
purporting to show lack of ownership or unity of control, unfettered
licensing and nonuse.68

4. Notice of Reliance on Plaintiffs’ interrogatory responses and answers to
requests for admissions;69

5. Notice of Reliance on June 11, 2009 discovery deposition of Roy Shanholtz,
and exhibits;70

62 78 TTABVue.
63 79 TTABVue.
64 57 and 58 TTABVue; portions submitted under seal.
65 80 TTABVue.
66 63-64 TTABVue.
67 65 TTABVue.
68 66 TTABVue.
69 67 TTABVue.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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6. Notice of Reliance on April 7, 2011 discovery deposition of Henry Ostberg
and exhibits;71

7. Notice of Reliance on printed publications purporting to illustrate the
weakness of Plaintiffs’ marks and to discredit Steve Barnett, Plaintiffs’
rebuttal expert witness;72

and the following testimony:

8. March 8, 2010 affidavit of Roy Shanholtz, as limited;73 and

9. July 2, 2013 Shanholtz affidavit, as limited.74

IV. Standing
We first consider whether Plaintiffs have standing to bring this proceeding.
Standing is a threshold issue that must be proven by a plaintiff in every inter partes
case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982) (“The facts regarding standing… must be affirmatively proved. Accordingly,
[plaintiff] is not entitled to standing solely because of the allegations in its
[pleading].”). To establish standing, a plaintiff must show both “a real interest” in
the proceedings as well as a “reasonable” basis for its belief of damage. Ritchie v.
Simpson, 50 USPQ2d at 1025.

70 70-71 TTABVue, portions submitted under seal.
71 72 TTABVue.
72 74 TTABVue. In light of our evidentiary holdings, supra, we have not considered these
materials to show that JEC abandoned its marks or Southeast’s corporate status.
73 68 TTABVue.
74 73 TTABVue.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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JEC has established its standing in the oppositions and cancellation by properly
making its pleaded registrations of record. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Plaintiffs One Mark and One Group
have established their standing based on their proof of ownership of federal
trademark applications for the ONE-derivative marks, and their proven intent to
use these marks. See Anosh Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872
(TTAB 2010) (petitioner established his standing based solely on his testimony that
he filed an application for an identical mark for goods that are similar to those in
the respondent’s registration). Certified copies of trademark applications for the
marks showing current status and title in One Marks and One Group were
submitted under Notice of Reliance dated January 16, 2013.75 Mr. Segal testified to
his personal knowledge of Plaintiffs’ intent “to use all of the asserted marks”76 and
evidence of both parties’ intent to use the marks were attached to the Segal
affidavit in the form of emails (exhibit 49, submitted under seal), and a copy of a
federal tax return for One Group (exhibit 51, submitted under seal).77 It would be
reasonable for Plaintiffs to conclude that the presence on the register of Applicant’s
marks may hinder their use of the ONE-derivative marks. One Marks and One
Group therefore are no mere intermeddlers, but have a real interest in this
proceeding and a reasonable basis for their belief that they are or will be damaged
by Applicant’s registrations.

75 53 TTABVue.
76 Segal Affidavit, ¶2; 58 TTABVue 3.
77 Id., ¶ 3(h)-(i), 57-58 TTABVue.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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Applicant argues that Plaintiffs One Marks and One Group lack standing
because they are not the owner of the marks for which they have made application,
and that Opposer JEC lacks standing because it failed to police the licenses it gave
to One Marks and One Group to use the ONE mark. Plaintiffs, on the other hand,
argue that One Marks and One Group are operated under a unity of control by JEC
and that all three companies are controlled by Mr. Segal. Because we find standing
on the basis of Plaintiffs’ applied-for marks and stated intent to use these marks, it
is not necessary for us to make findings of fact regarding the complex record
supporting the issue of alleged unity of control, uncontrolled licensing, and
ownership. Suffice it to say that on this record, Plaintiffs have satisfied the
relatively low threshold to establish their standing. See Cunningham, 55 USPQ2d
at 1844.
We now turn to the substantive grounds alleged in the operative notice of
opposition and initially address priority and likelihood of confusion.
V. Priority
A. Priority in the Oppositions - JEC
JEC has properly made its pleaded registrations of record under Trademark
Rule 2.122(d)(1) by attaching to its first Notice of Reliance printouts obtained from
the Office’s TARR database showing the registrations’ current status and title.
Because the pleaded registrations show JEC as owner and that the registrations are
subsisting, JEC’s Section 2(d) priority is not at issue in the oppositions as to the
marks ONE and ONE MANHATTAN and the services covered thereby. King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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B. Priority in the Oppositions – One Group and One Marks
One Marks and One Group have established their priority based on the filing
dates of their trademark applications for the ONE-derivative marks. A party may
rely upon the filing date of its application, contingent upon registration, as a
“constructive use date” for purposes of priority. See Trademark Act § 7(c). This
includes an opposer with an intent-to-use application, who may rely on the filing
date of its application to establish priority. See Larami Corp. v. Talk To Me
Programs Inc., 36 USPQ2d 1840 at n. 7 (TTAB 1995) (“An opposer may rely on
Section 7(c) to establish priority if it owns a registration for the mark it is asserting
under Section 2(d) or if it has filed an application for registration of that mark. We
might put the matter more simply by saying that in proceedings before the Board
the constructive use provisions of Section 7(c) may be used both defensively and
offensively.”). See also Syngenta Crop Prot. Inc. v. Bio-Chek LLC , 90 USPQ2d 1112,
1119 (TTAB 2009); Zirco Corp. v. American Telephone & Telegraph Co., 21 USPQ2d
1542 (TTAB 1991).
As the following chart illustrates, Opposers filed their ONE-derivative
applications in 2004 and 2005, before Applicant filed its applications in 2006.
App. No. Mark Registrant/Applicant Filing Date
78530113 ONE NEW ORLEANS One Marks LLC 12/9/04
78530118 ONE LOS ANGELES One Marks LLC 12/9/04
78530122 ONE CHICAGO One Marks LLC 12/4/04
78530126 ONE LAS VEGAS One Marks LLC 12/9/04
78530130 ONE ATLANTIC CITY One Marks LLC 12/9/04
78663816 ONE NEW YORK One Marks LLC 7/5/05
78663810 ONE MIAMI One Marks LLC 7/5/05
78528391 THE ONE NEW YORK The One Group LLC 12/7/04
78528405 THE ONE NEW ORLEANS The One Group LLC 12/7/04
78528408 THE ONE LAS VEGAS The One Group LLC 12/7/04
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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78528416 THE ONE CHICAGO The One Group LLC 12/7/04
78528424 THE ONE LOS ANGELES The One Group LLC 12/7/04
78528430 THE ONE GROUP The One Group LLC 12/7/04
78663799 THE ONE MIAMI The One Group LLC 7/5/05
78663803 THE ONE ATLANTIC CITY The One Group LLC 7/5/05

Because the filing dates of the applications filed by One Marks and One Group
predate Applicant’s July 11, 2006 intent-to-use applications, Applicant’s reliance on
the filing dates of its applications under Section 7(c) is unavailing; Applicant must
prove an earlier date of use to prevail on the priority issue. According to the record,
and assuming for the purposes of priority that the start of construction and hosting
a launch party constitute proper service mark use for hotel services, the earliest
date of actual use of its mark upon which Applicant may rely is September 2007.78
Therefore, Applicant cannot prevail on the basis on an earlier use date.
Further, while Applicant owns Reg. No. 3349279 (the registration involved in
the cancellation) and Applicant alleged in its Answer in Opposition No. 91187956 at
paragraph 13 that its rights therein are superior to any rights arising from One
Marks and One Group’s ownership of those marks which are the subjects of pending
applications,79 Applicant did not plead a prior registration affirmative defense, nor
did Applicant pursue such an affirmative defense at trial.80

78 Shanholtz Dep., p. 41-2 (6/11/09), 70-71 TTABVue 46-7 (portions filed under seal). The
launch party was on 9/25/07, Id. p. 56, and construction began on a hotel in Seattle,
Washington that same year. According to testimony, the project stalled due to “the
economic collapse and the liquidity crisis” and no other 1HOTEL operations have been
opened. When asked, “There has never been a 1 Hotel that has had a guest stay there? Is
that correct?” Mr. Shanholtz replied, “That is correct.” Id. p. 40-1.
79 Opposition No. 91187956, Answer, ¶13, 4 TTABVUE 8.
80 Under Morehouse Mfg Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (CCPA
1969), an applicant’s ownership of an existing registration for the same mark and goods (or
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 25 -
In view thereof, One Marks and One Group may rely on the constructive use
(filing) dates of their pleaded applications in establishing their priority over the
subject 1HOTEL applications.
C. Priority in the Cancellation - JEC
In the cancellation, because both parties own registrations, JEC must prove
priority of use in order to prevail. M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544,
1550 (TTAB 2010) (where both parties own registrations, priority is always an issue
because both parties are entitled to the presumptions accorded a registration under
Section 7(c) of the Trademark Act). See also, Brewski Beer Co. v. Brewski Brothers
Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (“of course, [either party] may rely on its
registration for the limited purpose of proving that its mark was in use as of the
application filing date.”).
JEC prevails on the priority issue on the basis of its earlier filing date of the
mark ONE MANHATTAN. Although Applicant can rely on November 19, 2003, (the
filing date of its application that matured to Reg. No. 3349279), bettering JEC’s first
use date of the ONE and ONE MANHATTAN marks of December 3, 2003, (in
association with “restaurant, bar, café, nightclub” services),81 JEC’s registration for

services) may provide, as a matter of law, an affirmative defense against the claim of
damage by an opposer. However, the defense only applies where the marks create the same,
continuing commercial impressions such that they would be considered legal equivalents,
and cover the same goods or services.
81 Segal Dep. p. 26, 51 TTABVue 33. Exhibits attached to Mr. Segal’s deposition transcript
show use of the mark ONE (exhibit 42, a brochure), 51 TTABVue 782, and ONE
MANHATTAN (exhibit 43, a menu), 51 TTABVue 788. In addition, the first use date is
corroborated by press articles (e.g., exhibit 58, 51 TTABVue 827). On December 2, 2003,
JEC held a pre-public opening for invited guests at “ONE Little West 12” (exhibit AA to
Segal Affidavit dated January 17, 2013, 58 TTABVue 65).
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 26 -
the ONE MANHATTAN mark was filed on August 11, 2003. Thus, JEC prevails on
the issue of priority in the cancellation on the basis of this constructive use date.
JEC alleges that it can “piggyback”82 its August 11, 2003 constructive use date of
the ONE MANHATTAN mark to its later use of the ONE mark.83 In order to find
that JEC has priority with respect to the ONE mark, we must find that ONE is the
“legal equivalent” of ONE MANHATTAN. The test for legal equivalence is very
strict, much stricter than the test for confusing similarity. “To meet the legal
equivalents test, the marks must create the same commercial impression, and
cannot differ materially from one another.” Pro-Cuts v. Schilz-Price Enterprises Inc.,
27 USPQ2d 1224, 1226-27 (TTAB 1993) (PRO-CUTS and PRO-KUT materially
differ due to different design features). “No evidence need be entertained other than
the visual or aural appearance of the marks themselves.” In re Dial-A-Mattress, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001) (“1-888-M-A-T-R-E-S-S” mark constitutes
“‘same mark’ or ‘legal equivalent’” of “(212) M-A-T-T-R-E-S”). See also Van Dyne-
Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991)
(“Clothes That Work. For The Work You Do,” is not legal equivalent of “Clothes
That Work”); American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036
(TTAB 1989), affirmed [in an unpublished opinion], 17 USPQ2d 1726 (Fed. Cir.
1990) (“AMERICAN MOBILPHONE” and “AMERICAN MOBILPHONE PAGING”

82 JEC claims that its use of the ONE mark “commenced shortly after, and is therefore
piggybacked onto,” its use of the ONE MANHATTAN mark. Petition to Cancel ¶2, 1
TTABVue 4.
83 JEC’s registrations for the ONE mark were not filed until June 16, 2004 (Reg. No.
4214402) and July 28, 2004 (Reg. No. 3924793) and therefore do not give JEC priority even
though JEC used the ONE mark before Applicant first used its ONE mark in 2007.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 27 -
not legally equivalent); Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221,
188 USPQ 485, 487 (CCPA 1976) (“HOME PROTECTION HARDWARE” creates a
different commercial impression than “HOME PROTECTION CENTER”).
Additionally, tacking requires that the goods and/or services marketed under the
later mark must be the same as or similar to the goods and/or services marketed
under the earlier mark. See, e.g., In re Baroid Drilling Fluids Inc. v. Sun Drilling
Products, 24 USPQ2d 1048, 1051 (TTAB 1992) [dictum]; Big Blue Products Inc. v.
International Business Machines Corp., 19 USPQ2d 1072, 1075 (TTAB 1991)
[dictum]. Tacking is permitted only in “rare instances.” Van Dyne-Crotty, 17
USPQ2d at 1868.
In this case, the services are identical. However, the marks do not create the
same, continuing commercial impression. Even though “Manhattan” is
geographically descriptive, it establishes a unique relationship to New York that the
term ONE alone does not convey. Consumers would not consider both marks to be
the same mark. Even if the earlier and later marks would be found to be
confusingly similar for purposes of a likelihood of confusion analysis, “the standard
of legal equivalence used in reviewing efforts to ‘tack’ the prior use of one mark onto
that of another is higher than that used in evaluating two competing marks.” Van
Dyne-Crotty, 17 USPQ2d at 1868. The marks are not legal equivalents eligible for
tacking. Accordingly, JEC cannot “piggyback” its constructive date of first use
derived from the ONE MANHATTAN registration to its use date of the ONE mark
or the ONE registrations. The first use dates for the ONE marks post-date the filing
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 28 -
date of Applicant’s registration. Thus, JEC’s priority is based only on its
registration and prior use of the mark ONE MANHATTAN.
VI. Opposition Nos. 91187956 and 91188809 – Likelihood of
Confusion
We now turn to a consideration of the issue of likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Plaintiffs must establish
that there is a likelihood of confusion by a preponderance of the evidence. Our
determination under Trademark Act § 2(d) is based on an analysis of the probative
facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
We begin our analysis of the relevant du Pont factors by addressing the issues
arising in the consolidated opposition proceedings.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 29 -
A. The Similarity or Dissimilarity and Nature of the Services
Described in the Application and Registrations, Likely-To-
Continue Trade Channels and Classes of Consumers
Before turning to the marks, we first compare the services in JEC’s registrations
and Plaintiffs’ pending applications with those recited in Applicant’s applications. It
has been repeatedly held that when evaluating the issue of likelihood of confusion
in Board proceedings regarding the registrability of marks, the Board must compare
the services as identified in the application with the services as identified in the
pleaded registration(s). See Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); cf. Canadian Imperial Bank of
Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). “The description of the goods [or services] in an application for registration is
critical because any registration that issues will carry that description.” CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983).
Applicant’s applications recite multiple services in several international classes.
In each class, “[l]ikelihood of confusion may be found based on any item that comes
within the identification of [services] in the involved application and registration.”
In re La Peregrina Ltd., 80 USPQ2d 1645, 1646 (TTAB 2008). See also Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB
2007); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9
(TTAB 2004).
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 30 -
INTERNATIONAL CLASSES 41 AND 43
In International Classes 41 and 43, the “night club” and “restaurant services”
recited in JEC’s ONE and ONE MANHATTAN registrations are identical to the
“night club” and “restaurants” for which Applicant’s applications have been filed.
Because there is a likelihood of confusion within each of Class 41 and 43 as a result
of this overlap, likelihood of confusion may be found with respect to these and any of
the remaining services within each class. Further considering Applicant’s hotel
services, we note the Board has previously found restaurant and hotel services
related. See, e.g., Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81
USPQ2d 1887 (TTAB 2007) (CABANA BAR for casino, restaurant, bar, and cocktail
lounge services confusingly similar with CABANA for hotel services). The evidence
also corroborates the close relationship between restaurants and hotels. Mr. Segal
states his belief that “food and beverage service” is included within the range of
services encompassed by “hotel services,”84 and describes other hotels where the
restaurant is so integral to the hotel that the restaurant does not have a separate
name from the hotel,85 calling these spaces “hotel restaurant[s].”86 In a press release
dated September 11, 2007, Applicant advertises that the 1 Hotel & Residences in
Seattle will offer all of its hotel amenities and services to its permanent residents,
including “in-home dining from a certified-green restaurant.”87 Promotional

84 Segal Dep., p. 41, 51 TTABVue 48.
85 Segal Dep., p. 42, 51 TTABVue 49.
86 Segal Dep., p. 43, 51 TTABVue 50.
87 Shanholtz II, Exhibit E, 73 TTABVue 446.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 31 -
literature advertises Applicant’s intent to offer “ONE restaurants” at its 1HOTELS-
branded hotels.88
Plaintiffs have also filed copies of numerous use-based, third-party registrations
wherein “hotels” and “hotel services for preferred guests” are listed in the same
registration as “bar and restaurant” and/or “nightclub” services and/or “cocktail
lounge” services.89 Although not evidence that the marks shown therein are in use
or that the public is familiar with them, these third-party registrations nonetheless
have probative value to the extent that they serve to suggest that the goods listed
therein are of a kind which may emanate from a single source under a single mark.
In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) aff’d, 864 F.2d 149 (Fed.
Cir. 1988). See also, In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and TMEP § 1207.01(d)(iii) (October 2012).
Because the services are legally identical in part, and neither Plaintiffs’
registrations nor the involved applications contain any limitations on the channels
of trade and classes of purchasers, we must presume that the channels of trade and

88 Shanholtz Dep. (6/11/09), Exhibit 16, 70 TTABVue 433-440.
89 For example, SOHO BEACH HOUSE (“Beach House” disclaimed) has been registered for,
inter alia, “hotel services for preferred customers; hotel, bar and restaurant services” (Reg.
No. 4016723, registered August 23, 2011); ENCORE WYNN LAS VEGAS (stylized) has
been registered for, inter alia, “resort hotel, restaurant, bar, lounge services; cafes; cocktail
lounges; hotel services for preferred customers” (Reg. No. 3623305, registered May 19,
2009); B OUR GUEST has been registered for, inter alia, “hotel services; restaurants,
namely fine-dining, bistro and café restaurants, bar and cocktail lounge services; hotel
services for preferred customers; reservation services for hotel accommodations for others”
(Reg. No.3909087, registered January 18, 2011); and SEEK LOVELY SENSATIONS has
been registered for “Hotel services; hotel services for preferred customers; hotel, bar and
restaurant services; hotels” (Reg. No. 3793547, registered May 25, 2010). Opposer’s
January 16, 2013 Notice of Reliance, 54 TTABVue Exhibits A1, A9, A23 and AA72.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 32 -
classes of purchasers are the same in these classes. See Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed Cir. 2014); In
re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
there are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion). As such, the second and third du Pont factors strongly favor a finding of
likelihood of confusion.
INTERNATIONAL CLASS 36
The services in International Class 36 for which Applicant’s applications have
been filed are “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.”
Plaintiffs have not shown that these services are related to the services (night club,
café, bar, cocktail lounge, and restaurant services) for which JEC holds
registrations or in association with which it has used its marks. Plaintiffs have not
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
- 33 -
shown that the services in any of the pending applications held by One Marks or
One Group are related to those in this class.90
On the other hand, JEC’s pending application for the mark THE ONE, which
filing date is senior to Applicant’s application filing dates, includes “apartment
leasing, rental and management” in International Class 36. The application gives
JEC an inchoate constructive date of first use as of its filing date, contingent upon
registration. Trademark Act § 7(c), 15 USC § 1057(c). In such a circumstance, the
Board will not enter a final judgment until the involved applications issue to
registration. Under Trademark Act § 7(c), constructive use is “[c]ontingent on the
registration of a mark on the principal register,” and Section 18 provides that “no
final judgment shall be entered in favor of an applicant under Section 1(b) before
the mark is registered, if such applicant cannot prevail without establishing
constructive use pursuant to Section 7(c).” See Compagnie Gervais Danone v.
Precision Formulations LLC, 89 USPQ2d 1251, 1254 n.4 (TTAB 2009). Here, the
parties’ services directly overlap in this class, the channels of trade and classes of
consumers are presumed to be the same, and likelihood of confusion may be found
with respect to the services of Class 36, contingent on JEC’s obtaining a registration
for THE ONE mark.

90 While One Group’s pending application for the mark THE ONE GROUP (Serial No.
78528430) includes “resort hotels,” there is no evidence comparing resort hotels to “resort
communities” or that the leasing, rental, and management of resort communities is in any
way related to operating a resort hotel.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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INTERNATIONAL CLASS 44
In International Class 44, Applicant’s services are: “health spa services for
health and wellness of the body and spirit offered at health resorts; health spa
services, namely, cosmetic body care services” Plaintiffs have not shown that health
spa services are related to the services for which JEC holds registrations or in
association with which it has used its marks. While One Group’s pending
application for the mark THE ONE GROUP includes services in Class 43 that
appear to overlap with those in Applicant’s pending applications: “health resort
services, namely, providing food and lodging that specialize in promoting patrons’
general health and well-being; and spa services, namely, providing temporary
accommodations and meals to clients of a health or beauty spa,” on the record before
us, there is no evidence or testimony linking the services of providing food and
lodging at health resorts, or meals and temporary accommodations at health or
beauty spas, with the offering of health spa services.91 However, JEC’s pending
application for THE ONE includes “health spa services for health and wellness of
the body and spirit” in International Class 44. These services are identical in part to
those in Applicant’s applications. Accordingly, likelihood of confusion may be found
with respect to the services in Class 44, contingent on JEC’s obtaining a
registration for THE ONE mark.

91 All but one of the other applications owned by One Group also include these services in
International Class 43. That exception is application Serial No. 78528416, which does not
include “health resort services, namely, providing food and lodging that specialize in
promoting patrons’ general health and well-being,” but does include “spa services, namely,
providing temporary accommodations and meals to clients of a health or beauty spa.”
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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B. Strength of the Plaintiffs’ Marks; Third-Party Uses
Applicant argues that Plaintiffs’ marks are weak. In particular, Applicant
contends that numerous third parties have registered marks containing the word
ONE in combination with other designs or words for the same or similar services.92
Insofar as Plaintiff JEC’s marks ONE and ONE MANHATTAN are concerned,
because they were registered on the Principal Register without resort to the
provisions of Section 2(f) of the Trademark Act, and because Applicant did not
counterclaim to cancel the registrations or, for that matter, assert that the marks
were merely descriptive, the marks must be deemed to be inherently distinctive.
Nonetheless, we may look to third party registrations to show the sense in which
the words of the marks at issue are used in ordinary parlance, as such registrations
“may show that a particular term has descriptive significance as applied to certain
goods or services.” Institut National Des Appellations D’Origine v. Vintners
International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). Absent
evidence of actual use, the third-party registrations have little other probative
value, however, because they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar with them. In re Mighty
Leaf Tea, 94 USPQ2d 1257, 1259-60 (Fed. Cir. 2010); Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is
not aware of registrations reposing in the U.S. Patent and Trademark Office).

92 63-64 TTABVue.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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Here, the third-party registrations do not show that Plaintiff’s marks are
suggestive or descriptive of any services in association with which JEC, One Marks,
or One Group uses its respective marks, or for which they hold registrations or
applications. The record contains copies of forty-eight such registrations. Of these,
nine are illegible, incomplete or not based on use, and six cover unrelated services
such as travel agency services93 or providing a discount coupon membership
program.94 Of the remainder, seven include hotel services and twenty-nine include
restaurant or café services of some type, although one specifically serves only
burgers, one only “fried onion rings,” one is a barbeque restaurant and several are
pizza or fast food restaurants. These registrations have limited probative value. The
term ONE in the third-party registrations is combined with various other wording
or is used in association with other matter, to create different connotations of the
word ONE than that created by Plaintiffs’ marks. See, e.g., in the restaurant
category, the mark ONE MARKET,95 which is shown to be located “at the foot of
Market Street”96; the mark ONE HOT MAMA’S,97 which is displayed in design with
words American Grille98; and the mark 1 PLUS 1 CAFÉ,99 which is shown to be a

93 Reg. No. 3161519 for the mark TRAVELONE, 64 TTABVue 61.
94 Reg. No. 2437281 for the mark ONE FOR THE COMMUNITY, 64 TTABVue 21.
95 CGG’s First Notice of Reliance, Exhibit 10, 64 TTABVue 29.
96 Plaintiffs’ 2d Rebuttal Notice of Reliance, exhibit K, 78 TTABVue 110.
97 CGG’s First Notice of Reliance, Exhibit 12, 64 TTABVue 35.
98 Plaintiffs’ 2d Rebuttal Notice of Reliance, exhibit L, 78 TTABVue 116.
99 CGG’s First Notice of Reliance, Exhibit 34, 64 TTABVue 101.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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noodle house.100 In this regard, we note Mr. Segal’s intent when describing the
concept behind ONE MANHATTAN as “all-encompassing”; that “whether it was
hotels or whether it was the bar, where you go there for your meal, for a drink, for
the late night, so everything takes place within one environment.”101 These usages
illustrate that the term ONE does not have the same connotation in all of the third-
party registrations vis-à-vis JEC’s mark and that there is no commonly accepted
meaning of ONE.
We have also considered, under the sixth du Pont factor, “the number and
nature of similar marks in use on similar goods” in analyzing whether Plaintiffs’
marks are weak. The principle behind this factor is that if a certain term appears in
many marks that are owned by separate entities and that are used for similar
goods, consumers will look to other elements in the marks to distinguish them.
“[T]he purpose of a defendant introducing third-party uses is to show that
customers have become so conditioned by a plethora of such similar marks that
customers ‘have been educated to distinguish between different [such] marks on the
bases of minute distinctions.’” Palm Bay, 73 USPQ2d at 1694 (citation omitted). In
this connection, Applicant submitted its Third Notice of Reliance on copies of eleven
websites for restaurants utilizing the term ONE in their name.102 Insofar as these

100 Plaintiffs’ 2d Rebuttal Notice of Reliance, exhibit DD, 78 TTABVue 236.
101 Segal Dep., p. 24, 51 TTABVue 31.
102 “ONE Restaurant Chapel Hill” in Chapel Hill, NC at http://one-restaurant.com;
“ONELOUNGE Kitchen and Cocktail Bar” in Washington, D.C. at http://oneloungedc.com;
“LEVEL ONE” restaurant in Washington, D.C. at http://levelonedc.com/about;
“BANGKOK ONE The House of Thai Gourmet” in Washington, D.C. at
http://bangkok1dc.com; “ONE Restaurant and Lounge” in New Orleans, LA at
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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third-party uses are concerned, they are relatively few in number, and even with
the addition of “One if By Land and By Sea,” a restaurant in New York known to
Jonathan Segal,103 and the evidence submitted by Plaintiffs showing that at least
some of the marks for which CGG submitted registration certificates are in use, we
do not find the evidence to be compelling. A restaurant may go out of business early
in its corporate life,104 and given the absence of any corroborating facts bearing on
the extent of these third-party uses or the likely impact such uses may have on the
relevant purchasing public, the probative weight of the websites is limited. Nor does
the listing of New York restaurants from SuperPages.com compel a different
conclusion.105 Only one of the restaurant names listed therein is for the term ONE
alone, and that with a given address on Little West 12th St. in New York, i.e., the
address of plaintiffs’ ONE MANHATTAN restaurant.106 The other names combine
the term ONE with additional matter serving to distinguish it. Further, the record
does not indicate whether the public is aware of the businesses identified by the
websites or the number of customers each may attract and there is no additional

http://onerestaurantnola.com/about.htm; “ONE Restaurant and Lounge” in New York at
http://oneryan.com; “ONE: Restaurant and Bar” in Illinois at
http://www.onerestaurantandbar.com; “1 OAK” in New York at http://1oaknyc.com/about;
“PHASE 1 THE PLACE TO BE” in Washington, D.C. at http://phase1dc.com/; “ONE2ONE”
in Texas at http://www.one2onerestaurant.com; and “ONE Atlantic” in Atlantic City, NJ at
http://oneatlanticevents.com/.
103 Segal Dep., pp. 25 and 113, 51 TTABVue 33 and 120.
104 Segal Dep., p 125, 51 TTABVue 132. Q: “[W]hat is the lifetime for a restaurant to be
open? A: “Well, it varies. … But a restaurant life, there’s restaurants that have been opened
30 years and there’s restaurants that have been open five minutes.”
105 Exhibit 5 to Shanholtz Aff., 7/6/13, 68 TTABVUE 95.
106 Segal Dep., p. 24, 101, 51 TTABVue 31, 108.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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evidence of the actual trading area of these businesses. See Anthony’s Pizza & Pasta
Inter’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271 (TTAB 2009), aff’d, 415
Fed. Appx. 222 (Fed. Cir. 2010) (fact that 29 third parties adopted and used the
name “Anthony’s” as the name for restaurant “does not tell us the extent of the
usage and whether there are multiple ‘Anthony’s’ restaurants in the same trading
areas so that consumers are likely to encounter overlapping uses of ‘Anthony’s’.”).
Based on the evidence of record of third-party registrations and common law
uses, we are unable to find that customers have become so conditioned to recognize
that other entities use “ONE” marks for restaurants that Plaintiffs’ ONE and ONE-
derivative marks would be considered weak, but acknowledge that the mark ONE
cannot be regarded as a particularly strong mark that is entitled to broad
protection. Nevertheless, it is well established that even weak marks are entitled to
protection against confusion. King Candy, 182 USPQ at 109 (“Confusion is
confusion. The likelihood thereof is to be avoided, as much between ‘weak’ marks as
between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark”); In re The
Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for a laundry
soil and stain remover held confusingly similar to STAIN ERASER, registered on
the Supplemental Register, for a stain remover). See also Anthony’s Pizza, 95
USPQ2d at 1276-78; Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1112
(TTAB 2007); Carl Karcher Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d
1125, 1130-31 (TTAB 1995). Cf. In re Hartz Hotel Services Inc., 102 USPQ2d 1150
(TTAB 2012) (marks comprising term “Grand Hotel” for hotels accorded narrow
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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scope of protection in view of numerous third-party uses of GRAND HOTEL for
hotel services); In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1565 (TTAB 1996)
(evidence of third-party use of the term “Broadway” for restaurant services was so
common that consumers would look to the other elements of applicant’s mark
BROADWAY CHICKEN to distinguish the source of the goods from BROADWAY
PIZZA and BROADWAY BAR & PIZZA).
Applicant further contends that the Ostberg Survey results prove that JEC’s
ONE mark is not well-known. We accord the Ostberg Survey limited probative
value in this regard, but as noted above, the Ostberg Survey was designed to gauge
the awareness among shoppers of the designation “ONE” for a restaurant, and
while the results support its conclusion that among potential consumers the ONE
mark is not well-known, as Dr. Barnett points out, there are several weaknesses in
the Ostberg Survey that go to its reliability. In particular, the Survey probed the
opinions of a relatively small sample (only 242 persons), did not establish an income
criteria for the selected universe even though plaintiffs’ ONE restaurants cater to a
higher-end of the market,107 and some of the questions incorrectly assumed that
plaintiff operated a single location, whereas it operated two (New York and Los
Angeles)108 and that the expression “83” did not name a restaurant when it actually
names several different restaurants.109 Nonetheless, while we accord the Survey

107 Segal Dep., p. 22, 51 TTABVue 29. “For the restaurant, the ticket price is average of $55
per head.”
108 Segal Dep., p. 158, 51 TTABVue 165, exhibit 65.
109 Plaintiffs’ First Rebuttal Notice of Reliance on official records, internet materials, and
printed publications, 77 TTABVue 127-198, exhibits O-BB.
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only limited value in determining whether the ONE mark is well-known, we do not
otherwise find in the record sufficient evidence from which to conclude that the
ONE mark is particularly well-known.
In view of the above, we consider the sixth du Pont factor to slightly favor
Applicant.
C. The Similarity or Dissimilarity of the Marks in their Entireties
as to Appearance, Sound, Connotation and Commercial
Impression
Plaintiff JEC’s registered marks are ONE and ONE MANHATTAN. Plaintiffs
One Marks and One Group’s marks are ONE-plus a city name and THE ONE-plus a
city name. One Group also owns a pending application for the mark THE ONE
GROUP and JEC owns a pending application for the mark THE ONE. Applicant’s
design marks are:
and .
Because the similarity or dissimilarity of the marks is determined based upon
the marks in their entireties, the analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). On the other hand, different features may be
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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analyzed to determine whether the marks are similar, and more or less weight may
be given to a particular feature of a mark, provided the ultimate conclusion rests on
a consideration of the marks in their entireties. Id. The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975). Since the services at issue are not restricted, the average purchaser is
an ordinary consumer.
The dominant portion of each of plaintiffs’ marks is the word “ONE.” We accord
less weight to the geographically descriptive and disclaimed elements in the marks
ONE MANHATTAN and the ONE + city name marks; the word “THE” in JEC’s
application for the mark THE ONE and the pending THE ONE + city name marks;
and the word GROUP in One Group’s pending application for THE ONE GROUP.
The word ONE is the only component of each of plaintiffs’ composite marks that is
not merely descriptive of a location (e.g. “Manhattan”) or corporate entity (i.e.,
“Group”) or has not been disclaimed in recognition of the word’s descriptiveness
(“Group” and “city names”). It is well-settled that descriptive matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser
Golf Corp., 55 USPQ2d at 1846, quoting, In re National Data Corp., 224 USPQ at
752 (“Regarding descriptive terms, this court has noted that the descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion”); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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“less significant in creating the mark’s commercial impression”). In addition, the
word “The” has no trademark significance. In re Thor Tech, Inc., 90 USPQ2d 1634,
1635 (TTAB 2009). See also In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB
2005); In re The Computer Store, Inc., 211 USPQ 72, 73 (TTAB 1981) (the definite
article “the” is of no consequence to the mark’s registrability).
The dominant portion of Applicant’s mark is the numeral “1.” The words “hotel”
and “residences” in Applicant’s marks have little trademark significance because
they are generic for the services of providing hotels and residences, and the city
name “New York” is geographically descriptive. The numeral “1” is visually larger
than the descriptive wording and is positioned in such a way as to attract the
consumer’s eye. Moreover, the fact that Applicant uses the numeral “1” instead of
the word ONE is immaterial. The numeral “1” is the phonetic equivalent of the
word “one.” As used in the marks, the numeral “1” means the same thing as the
word “one.” Cf. In re Vanilla Gorilla L.P., 80 USPQ2d 1637, 1640 (TTAB 2006)
(“There is no difference between using the Arabic numeral ‘30’ or the word ‘thirty.’
Both mean exactly the same thing.”). We further note that Applicant’s website
advertising intermingles its use of the numeral with the word.110
Because they share the dominant element ONE, the parties’ marks are similar
in appearance, pronunciation, and meaning. While Applicant argues that the design
elements distinguish its marks from Plaintiffs’ marks, as a general rule, the words

110 At http://www.1hotels.com, attached to plaintiffs’ Notice of Reliance dated January 16,
2013, 54 TTABVue 335-338. See also exhibit 10 (launch party advertising) and exhibit 14
(promotional teaser) to Shanholtz Dep., p. 103, 70 TTABVue 334-341 and p. 176, 71
TTABVue 431, respectively.
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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in a mark dominate designs in trademark significance because such words readily
identify the goods or services and are most likely to be used by customers when
requesting them. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987);
CBS Inc. v. Morrow, 218 USPQ at 200 (“[I]n a composite mark comprising a design
and words, the verbal portion of the mark is the one most likely to indicate the
origin of the goods [or services] to which it is affixed.”). See also, In re Mighty Leaf
Tea, 94 USPQ2d at 1260 (“the presence of an additional term in the mark does not
necessarily eliminate the likelihood of confusion if some terms are identical,” citing
China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123
(Fed. Cir. 2007); CBS Inc., 218 USPQ at 200 (presence of light bulb in applicant’s
mark insufficient to distinguish it from typed mark TINKERTOY; “minor design
features do not necessarily obviate likelihood of confusion arising
from consideration of the marks in their entireties.”); In re Max Capital Group Ltd.,
93 USPQ2d 1243 (TTAB 2010) (design element in applicant’s mark
for insurance services not sufficient to distinguish the mark from the cited marks
MAX and for insurance services).
Here, the black background and carrier border in Applicant’s marks are not
striking, unusual or distinctive. They frame the numeral “1” and serve to emphasize
it as the dominant element. Compared with JEC’s mark ONE in particular,
Applicant’s marks merely incorporate additional non-distinctive wording and design
features. Moreover, because Plaintiffs’ marks are displayed in standard character
form or typed drawing form, they may be displayed in any format, including white
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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letters against a black background and carrier border serving to emphasize the
term “One.” Marks presented in standard characters are not limited to any
particular depiction. The rights associated with a mark in standard characters
reside in the wording and not in any particular display. In re Viterra Inc., 101
USPQ2d at 1909-11; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
The marks are similar in appearance, pronunciation, meaning and commercial
impression. The first du Pont factor favors a finding of likelihood of confusion.
D. Conclusion – Opposition Nos. 91187956 and 91188809
For the reasons discussed above, we find that Applicant’s registration of its
design marks is likely to cause confusion with Plaintiffs’ previously used and
registered marks ONE and ONE MANHATTAN under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d)..
VII. Cancellation No. 92049165
Turning now to the cancellation, JEC pleaded four separate claims: priority and
likelihood of confusion under Section 2(d); that Applicant never provided “hotel
services for preferred guests”; that Applicant committed fraud on the Office; and
lack of bona fide intent to use the ONE mark as of its filing date.
We turn first to the issue of likelihood of confusion. As noted supra, JEC prevails
on priority based on the filing date of its mark ONE MANHATTAN. For the reasons
discussed in connection with the oppositions, we find that Applicant’s standard
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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character mark ONE is confusingly similar to the mark ONE MANHATTAN. When
used in association with the recited services, there is a likelihood of confusion.
Applicant argues that “hotel services for preferred customers” covers a broad
range of extra or supplemental services such as providing tickets to sold-out shows,
reservations at the best restaurants, private island bookings, “even plumbing
services, all provided by companies that service the hotel business.”111 In
determining the scope of a recitation in an application, the ordinary meaning of the
wording defines the service. In re Fiat Grp. Mktg. & Corporate Commc’ns S.p.A.,
109 USPQ2d 1593, 1597 (TTAB 2014) (applicant listed entire class heading as its
statement of services; held that although “retail store services” are included in the
class, the ordinary meaning of the words in the class heading do not encompass
retail stores). Here, the ordinary meaning of “hotel services,” namely, “services for
providing temporary accommodation,”112 remains the same whether such services
are provided to all guests or only to preferred guests. As explained in Section
1401.02(a) of the TMEP, “Class 43 includes mainly services provided by persons or
establishments whose aim is to prepare food and drink for consumption and
services provided to obtain bed and board in hotels, boarding houses or other
establishments providing temporary accommodation.”113 The Explanatory Note

111 Applicant’s Trial Brief, p. 27, 88 TTABVue 32.
112 See Class Headings and Explanatory Notes, Nice Agreement Tenth Edition – General
Remarks, Class Headings and Explanatory Notes – Version 2012; Trademark Manual of
Examining Procedure (“TMEP”) § 1401.02(a).
113 TMEP § 1401.02(a), Explanatory Note.

Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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further indicates that this Class includes, in particular: “reservation services for
travellers’ accommodation, particularly through travel agencies or brokers;
boarding for animals,” and does not include, in particular: “rental services for real
estate such as houses, flats, etc., for permanent use (Cl. 36); arranging travel by
tourist agencies (Cl. 39); preservation services for food and drink (Cl. 40);
discotheque services (Cl. 41); boarding schools (Cl. 41); rest and convalescent homes
(Cl. 44).”
The extra or supplemental services, which Applicant argues would be covered by
its recitation, are not considered hotel services as defined by the USPTO; rather
they are stand-alone services outside the scope of hotel services and therefore do not
fall under the umbrella of “hotel services.”114 Accordingly, as discussed above,
Applicant’s mark ONE for “hotel services for preferred guests” is likely to cause
confusion among consumers with JEC’s mark ONE MANHATTAN for “night club
services and café; bar services; cocktail lounge; and restaurant services.”
Decision: The petition to cancel is sustained under Section 2(d) and Applicant’s
registration for the mark ONE will be cancelled in due course. Because we have
sustained the cancellation on the ground of priority and likelihood of confusion, we

114 In this regard, we note that whereas “hotel services” are classified in Class 43, the Office
classifies “hotel concierge services” in Class 35 and “transportation services (by rail, road,
water, air or pipeline)” in class 39. See TMEP § 1401.02(a). See also the Acceptable
Identification of Goods and Services (“ID Manual”) at www.uspto.gov, wherein “hotel
services for preferred customers” is notated:
“On 10-6-2011, this 1-1-2002 entry was deleted because, although acceptable,
it is covered by the existing entry for ‘Hotel services.’ It is acceptable to add
the specific target group to the base entry. 08-29-2013: Acceptable entry
status changed from ‘D’ deleted to ‘X’ example.”
Opposition Nos. 91187956 and 91188809; Cancellation No. 92049165
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need not reach Plaintiff’s alternative bases of fraud, non-use or lack of bona fide
intent to use. As for the oppositions, they are sustained under Section 2(d) as
against Applicant’s applications in Classes 41 and 43. With respect to the services
in Classes 36 and 44, as noted supra, Plaintiffs’ priority in the oppositions is based
on constructive use of Plaintiff JEC’s mark THE ONE (Serial No. 78436384).
Accordingly, the oppositions in Classes 36 and 44 are sustained contingent upon
registration of this mark. When the mark has registered (or if the application
becomes abandoned), JEC should promptly inform the Board, so that appropriate
action may be taken to terminate the oppositions.
The time of filing an appeal or for commencing a civil action will run from the
date of the present decision. See Trademark Rules 2.129(d) and 2.145.