Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1257481
`01/03/2023
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`91276925
`
`Filing Party
`
`Other Party
`
`Defendant
`GR Opco, LLC
`
`Plaintiff
`Eleven IP Holdings, LLC
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`2022-12-20 DI 001 - Complaint.PDF(4587818 bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, GR
`Opco, LLC hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`GR Opco, LLC has secured the express consent of all other parties to this proceeding for the suspension re-
`quested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/Armin Ghiam/
`Armin Ghiam
`aghiam@huntonak.com, jboczko@huntonak.com, ekane@huntonak.com
`01/03/2023
`
`

`

`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 1 of 25
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`Civil Action No.: ___________
`
`
`
`
`
`
`
`v.
`
`
`GR OPCO, LLC,
`
`Plaintiff,
`
`
`
`ELEVEN IP HOLDINGS, LLC
`GRASSY CREEK LLC, and
`C S IRWIN LLC
`
`Defendants.
`
`
`
`
`
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`COMPLAINT
`
`Plaintiff, GR Opco, LLC (“GR Opco”), in this declaratory judgment, trademark
`
`infringement, unfair competition, and deceptive trade practices action against Defendants Eleven
`
`IP Holdings, LLC (“EIP”), Grassy Creek LLC, and C S Irwin LLC (collectively, “Defendants”)
`
`alleges as follows:
`
`INTRODUCTION
`
`GR Opco is a world famous entertainment and development company that operates and
`
`licenses a number of venues and events under its brand E11EVEN®, including its world famous
`
`“Ultra-Club” and nightlife venue located on NE 11st Street in downtown Miami. For years, its
`
`services have been highlighted in nearly every major publication in the United States, including
`
`The New York Times, Los Angeles Times, Florida Sun Times, Miami Herald, USA Today, Wall
`
`Street Journal, and numerous others, and its venues have hosted the most recognizable celebrities,
`
`dignitaries, business persons, athletes, actresses and actors and musical acts in the United States.
`
`Beyond its national reputation, GR Opco and its E11EVEN® branded services and business
`
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 2 of 25
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`affiliates are often attributed with contributing significantly to the growth and rejuvenation of the
`
`downtown Miami area.
`
`Despite GR Opco’s famous and long standing operation, Defendants own and operate a
`
`small business based in Florida and Colorado that provides a travel booking service for specific
`
`clientele looking to rent lodges and hire instructors for outdoor sporting and camping
`
`“experiences,” and have alleged that they own the trademark “ELEVEN” for a wide variety of
`
`services, including “hotel, lodging, real estate and related services.”1
`
`Although there is no chance of confusion between the parties’ differing services under
`
`these differing marks, even if EIP could show some theoretical overlap between the parties’
`
`respective services, the fact remains that GR Opco, through its predecessor-in-interest, has been
`
`using the mark ELEVEN in conjunction with hotel services long before Defendants offered their
`
`services. This is because, in addition to its famous E11EVEN brand, GR Opco owns a portfolio
`
`of ELEVEN assets, all of which were used in commerce prior to when Defendants began offering
`
`their services. Accordingly, Defendants could not establish priority to maintain an infringement
`
`action against GR Opco, and if anything, it is the Defendants who are infringing GR Opco’s rights
`
`in its ELEVEN marks. Based on the foregoing, GR Opco requests appropriate relief. GR Opco
`
`also seeks cancellation of Defendants’ ELEVEN registration because Defendants have never
`
`offered any hotel services under the ELEVEN Mark.
`
`STATEMENT OF CLAIMS
`
`1.
`
`This is an action for declaratory judgment under 28 U.S.C. §§ 2201 and 2202, as
`
`well as for injunctive relief and damages based on claims for unfair competition arising under the
`
`trademark laws of the United States, 15 U.S.C. §§ 1051 et seq, state law claims are for unfair
`
`
`1 For purposes of the Complaint, Defendants are treated together as one entity as their
`website identifies each of them in various locations as operators of the business.
`
`- 2 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 3 of 25
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`competition and trademark infringement under Florida common law, and violation of the Florida
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`Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.201 et seq. GR Opco also seeks
`
`cancellation of EIP’s registration based on 15 U.S.C. § 1119.
`
`PARTIES
`
`2.
`
`GR Opco, LLC is a limited liability corporation organized under the laws of
`
`Florida, with a business address of 29 NE 11th Street, Miami, FL 33132.
`
`3.
`
`Eleven IP Holdings, LLC is a limited liability corporation organized under the laws
`
`of Delaware, with a business address of 221 North Hogan Street, Suite 403, Jacksonville, FL
`
`32202.
`
`4.
`
`Grassy Creek LLC is a limited liability corporation organized under the laws of
`
`Delaware, with a business address of 221 North Hogan Street, Suite 403, Jacksonville, FL 32202.
`
`5.
`
`C S Irwin LLC is a limited liability corporation organized under the laws of
`
`Delaware, with a business address of 221 North Hogan Street, Suite 403, Jacksonville, FL 32202.
`
`JURISDICTION AND VENUE
`
`6.
`
`This action asserts claims arising under the Lanham Act, 15 U.S.C. § 1051 et seq.
`
`Subject matter jurisdiction over this action is conferred upon this Court by 28 U.S.C. §§ 1331 and
`
`1338 in that, among other things, the matter to be litigated raises one or more federal questions
`
`and concerns federal trademark law. This Court also has subject matter jurisdiction under 28
`
`U.S.C. §§ 2201 and 2202. Additionally, the Court has supplemental jurisdiction over state law
`
`claims pursuant to 28 U.S.C. §§ 1338(b) and 1367(a).
`
`7.
`
`This Court has personal jurisdiction over Defendants and venue is proper in this
`
`District pursuant to 28 U.S.C. §1391(b) and (c) for at least the reason that Defendants maintain
`
`their corporate offices in the state of Florida and conduct business through these offices.
`
`Additionally, a substantial part of the events giving rise to the request for declaratory judgment
`
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 4 of 25
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`relief have occurred or could cause harm in this District. Finally, Defendants have committed the
`
`tortious acts complained of herein within this District, which acts have caused and will cause injury
`
`to GR Opco.
`
`I.
`
`PLAINTIFF’S FAMILY OF BRANDS
`
`FACTUAL ALLEGATIONS
`
`A.
`
`8.
`
`Plaintiff and Its E11EVEN® Brand
`
`An award winning entertainment and development company, GR Opco has decades
`
`of experience in developing high end residential buildings, hospitality facilities and entertainment
`
`venues, principally in the Miami area.
`
`9.
`
`Its world famous E11EVEN® venue, located on NE 11th Street in Miami, is a
`
`20,000-square foot landmark destination that is frequented by notable entertainers, athletes,
`
`musicians and other celebrities, including, for example, 50 Cent, Drake, Leonardo DiCaprio,
`
`Kendall Jenner, Nicki Minaj, Cardi B, Sting, Miley Cyrus, and Usher, and is a past winner of the
`
`prestigious “Best New Concept” award, “Top-50 Clubs in the world” listed by DJ Magazine and
`
`ranked #6 in the “World’s Top-10 New Year’s Eve Celebrations” by Yahoo Travel, stabilizing its
`
`presence as one of the most sought-after venues for both public and private events. It has appeared
`
`widely in publications of general circulation like The New York Times, Los Angeles Times,
`
`Florida Sun Times, Yahoo! News, Bloomberg, The Miami Herald, Miami New Times, Forbes,
`
`New York Post, and Time Out Miami, to name a few.
`
`10.
`
`Located directly across the street from the E11EVEN® Nightclub on NE 11th
`
`Street, GR Opco’s E11EVEN® HOTEL AND RESIDENCES is situated centrally adjacent to the
`
`Miami World Center, and offers residents the unparallel experience and reputation associated with
`
`GR Opco’s E11EVEN® brand. The E11EVEN® HOTEL & RESIDENCES will feature 400 fully
`
`- 4 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 5 of 25
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`furnished and finished luxury condominium residences owned by third party building unit owners,
`
`and is equipped with the newest technology and serves as the epitome of luxury living.
`
`11.
`
`For years, GR Opco also has had partnerships with hotels, entertainment venues,
`
`and a host of other partners and licensees who seek out its celebrated E11EVEN® brand for
`
`entertainment, hospitality, and management services.
`
`12.
`
`This includes hosting E11EVEN branded events at various third party hotels, which
`
`GR Opco has done for years (and continues to do so).
`
`B.
`
`E11EVEN® Hospitality Offerings
`
`13.
`
`From the beginning, GR Opco provided hotel services to its various celebrity
`
`entertainers in an effort to attract leading talent to perform at its venue(s).
`
`14.
`
`In addition to these services, GR Opco sells hotel accommodations to customers as
`
`part of E11EVEN® branded events.
`
`15.
`
`As just one of numerous examples, GR Opco has partnered with The Gabriel Hotel
`
`in Miami for a multi-day hotel event that included accommodations and performances by
`
`numerous celebrities including Lil Jon, Snoop Dog, 50 Cent, Cardi B, Ludacris, Marshmello, and
`
`more.
`
`16.
`
`Access to that event included the purchase of E11EVEN® branded hotel rooms and
`
`hotel events:
`
`- 5 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 6 of 25
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`17.
`
`GR Opco has hosted and operated many other hotel events, including at the Godfrey
`
`Hotel, again offering E11EVEN® branded hotel rooms as part of a multi-day party event.
`
`18.
`
`GR Opco also planned a Memorial Day weekend hotel event at the Resort World
`
`in Las Vegas at which hotel rooms were sold under E11EVEN® branding:
`
`
`
`- 6 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 7 of 25
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`
`
`19.
`
`In addition to providing hotel rooms and accommodations, GR Opco has also
`
`planned numerous other events in conjunction with hotels.
`
`20.
`
`For example, GR Opco took over the pool at the Kimpton Surfcomber Hotel to host
`
`an E11EVEN® branded Beach Bash and pool party event:
`
`
`
`- 7 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 8 of 25
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`21.
`
`For years, GR Opco has partnered with the Make-A-Wish Foundation to host an
`
`annual Make-A-Wish charity ball using E11EVEN® branding at the Intercontinental Hotel Miami.
`
`As part of the Ball, hotel rooms are for sale through the Ball website.
`
`
`
`C.
`
`E11EVEN® HOTEL AND RESIDENCES
`
`22.
`
`As part of its many hospitality offerings, directly across the street from the
`
`E11EVEN® Miami venue on NE 11th Street is GR Opco’s E11EVEN® HOTEL AND
`
`RESIDENCES. The Hotel and Residences are centrally adjacent to the Miami World Center, and
`
`will offer residents the unparallel experience and reputation associated with GR Opco’s
`
`E11EVEN® brand. The property will be equipped with the newest technology and will serve as
`
`the epitome of luxury living. Indeed, E11EVEN® HOTEL & RESIDENCES will feature 400 fully
`
`furnished and finished luxury residences.
`
`- 8 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 9 of 25
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`
`
`23.
`
`So strong was the desire to “live” the E11EVEN® brand experience, that the
`
`proposed units in the residence sold out within months of the project’s announcement. As a result,
`
`GR Opco opted to expand the project and build a second tower of condos under the name
`
`E11EVEN® Residences Beyond that will be connected to the first tower by a skybridge.
`
`24.
`
`To protect its brand, including its E11EVEN® venue, and its hospitality offerings,
`
`GR Opco has registered and applied for several trademarks for its E11EVEN brand.
`
`25.
`
`For example, GR Opco is the listed owner of U.S. Reg. No. 5,921,909 for the mark
`
`E11EVEN® in connection with “clothing, namely, shirts, swimwear; footwear, headwear” in
`
`International Class 25; “spirits and liqueurs” in International Class 33, and “services providing
`
`food and beverage, namely, restaurant and bar services; serving of food and drinks services
`
`provided at a nightclub; providing temporary accommodation at hotel” in International Class 43.
`
`D.
`
`GR Opco’s ELEVEN Family of Marks
`
`26.
`
`In addition to its years of peaceful coexistence with Defendants under its
`
`E11EVEN® mark, GR Opco also owns a family of brands surrounding the number ELEVEN that
`
`date back over a century, well before Defendants adopted their name.
`
`27.
`
`These brands include the 11TH AVENUE HOSTEL and the ELEVEN INN and
`
`various logos and designs associated with these marks.
`
`- 9 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 10 of 25
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`28.
`
`GR Opco and its predecessors-in-interest have continuously used these brands in
`
`connection with hotel services since well before Defendants ever adopted or used their alleged
`
`ELEVEN mark.
`
`29.
`
`Over the years, GR Opco’s ELEVEN trademarks, through its licensees, have built
`
`significant goodwill and the hotels associated therewith have reputations of being charming and
`
`friendly hotels to stay enjoyed by customers from around the country.
`
`30.
`
`Additionally, these licensees’ hotels are well known among adventure tourists,
`
`including those engaging in diving, hunting, hiking, bicycling, horseback riding, and many other
`
`outdoors activities.
`
`II.
`
`DEFENDANTS’ BOOKING SERVICE
`
`A.
`
`ELEVEN EXPERIENCE
`
`31.
`
`Defendants, who on
`
`their website
`
`refer
`
`to
`
`themselves as “ELEVEN
`
`EXPERIENCE,” are an “experiential travel company.” They provide booking services to
`
`“remoted hideouts,” offering customers the ability to book high-end vacations, and guides for
`
`travel programming, such as skiing.
`
`32.
`
`Defendants’ website offers customers the ability to book accommodations at third
`
`party lodges and private homes.
`
`33.
`
`These services purport to be offered on the website by a combination of the three
`
`named Defendants as shown on the Defendants’ website’s terms of use, privacy policy and other
`
`agreements relating to booking a hotel accommodation through Defendants’ website. See e.g.,
`
`https://elevenexperience.com/privacy-policy (identifying Grassy Creek LLC as the contracting
`
`party for the privacy policy, but C S Irwin LLC as the contracting party on the terms of use);
`
`https://elevenexperience.com/terms-conditions-for-accommodation (identifying C S Irwin LLC as
`
`- 10 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 11 of 25
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`the contracting party for the accommodation). In addition, EIP is identified as the registered owner
`
`of Defendants’ trademarks on the USPTO’s website.
`
`34.
`
`Notably, no lodge or home is named or branded using Defendants’ supposed
`
`ELEVEN mark. Instead, these lodges are given individual names such as “Deplar Farm,” “Chalet
`
`Hibou,” or “Sopris House,” etc.
`
`35. Moreover, on their website, Defendants make clear that: “Eleven is not the owner
`
`or operator of the Property or the provider of the Activities. Eleven is collecting payment,
`
`accepting, creating, facilitating and managing the Booking for the Guest subject to the terms and
`
`conditions of this Contract.” See Exhibit A.
`
`36.
`
`Indeed, the Eleven Experience can be likened to an online booking agency like
`
`Expedia™ or Orbitz™. For example, on Defendants’ website, https://elevenexperience.com/, a
`
`visitor can choose between “Lodges,” “Adventures,” and “Homes.”
`
`37.
`
`A visitor can rent out a privately owned residence, a room at a lodge advertised on
`
`the website, or book an adventure.
`
`38.
`
`Upon information and belief, none of these lodges are branded ELEVEN.
`
`39. Many of these lodges and homes are available for rent through other third party
`
`websites, including through home rental sites like Vrbo.com, all without any mention of ELEVEN
`
`branding.
`
`40.
`
`Despite Defendants clearly offering a booking service under their alleged ELEVEN
`
`mark, and no ELEVEN branded hotel accommodations, in 2012 Defendant EIP registered the
`
`mark ELEVEN under U.S. Reg. No. 4,265,159. The registration covers, in International Class 43,
`
`“hotels, excluding restaurant services; hotel services, namely, providing
`
`luxury hotel
`
`accommodations, excluding restaurant services; resort lodging services, excluding restaurant
`
`- 11 -
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`

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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 12 of 25
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`services; providing temporary lodging services in the nature of a tourist home, excluding restaurant
`
`services.”
`
`41.
`
`Similarly, in 2014, Defendant EIP registered U.S. Reg. No. 4,621,491 for its design
`
`logo (the “EIP Logo”). This registration covers, in International Class 43, “hotels; hotel services,
`
`namely, providing luxury hotel accommodations; resort lodging services; providing temporary
`
`lodging services in the nature of a home.” Yet, similar to its prior registration, there is no evidence
`
`that Defendants ever provided branded hotel services under the registered mark.
`
`42.
`
`Upon information and belief, Defendants have never provided hotel services under
`
`the ELEVEN mark or the EIP Logo. Upon a review of online publications and Defendants’
`
`advertising and web presence, it does not appear Defendants have offered any hotel services with
`
`the mark ELEVEN within the last five years.
`
`43.
`
`As of this year, there appears not to be any signage with ELEVEN branding on
`
`Defendants’ properties in the United States. By way of example, Defendants’ Scarp Ridge Lodge
`
`(one of the few properties owned by Defendants (or their affiliates)), does not display any outdoor
`
`signage with the ELEVEN brand. Nor is ELEVEN displayed in any common areas of the property.
`
`44.
`
`The Scarp Ridge Lodge rents out either the entire property or individual rooms. It
`
`is possible to rent out individual rooms at that property without booking the “Eleven Experience”
`
`that includes booking services for tours and other activities offered by Defendants or their
`
`affiliates.
`
`III. THE EXISTENCE OF AN ACTUAL CONTROVERSY
`
`45.
`
`An actual controversy exists between the parties relating to GR Opco’s offering of
`
`hotel services under its E11EVEN® Mark.
`
`46.
`
`Specifically, despite coexisting for years, and GR Opco having never heard of
`
`Defendants or anyone associated with Defendants, out of the woodwork, on March 11, 2022,
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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 13 of 25
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`Defendants sent a letter to GR Opco in this judicial district demanding that it cease using and
`
`withdraw its trademark applications for E11EVEN in connection with hotels and real estate.
`
`47.
`
`However, confusion is unlikely given the parties’ respective marks present
`
`dramatically different commercial impressions.
`
`48.
`
`Indeed, GR Opco’s E11EVEN trademark is unique and distinctive, and, GR Opco’s
`
`mark is associated with its famous and world renowned venues, and the parties offer differing
`
`services (entertainment and residential and hotel services vs. booking services).
`
`49.
`
`Notably, despite almost eight years of peaceful coexistence, Defendants have made
`
`no allegation of a single instance of confusion between the parties and their respective marks and
`
`services.
`
`50.
`
`Indeed, this is not the first instance in which Defendants have improperly and
`
`unsuccessfully asserted their supposed rights in the mark ELEVEN.
`
`51.
`
`In an October 30, 2020 decision, the United States Patent and Trademark Office’s
`
`Trademark Trial and Appeal Board (the “Board”) denied EIP’s opposition to the mark K11 in
`
`connection with real estate services.
`
`52.
`
`In its decision, the Board, found “no likelihood of confusion between these marks
`
`and services.”
`
`53.
`
`Defendants did not appeal the decision.
`
`54.
`
`Despite GR Opco denying that there could be any confusion between the parties
`
`and their respective services, on May 27, 2022, EIP filed Cancellation No. 92079818 with the
`
`Board.
`
`55.
`
`This cancellation petition challenges GR Opco’s rights in its E11EVEN trademark
`
`(U.S. Reg. No. 5,921,909).
`
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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 14 of 25
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`56.
`
`The registration covers “providing temporary accommodations” as well as
`
`restaurant and bar services.
`
`57.
`
`EIP filed this cancellation petition even though EIP has explicitly excluded
`
`restaurant and bar services from its registrations.
`
`58.
`
`On May 27, 2022, Defendant EIP filed Cancellation No. 92079818 with the United
`
`States Patent and Trademark Office Trademark Trial and Appeal Board.
`
`59.
`
`Subsequently, in an extreme example of overreach, EIP began a campaign to
`
`oppose all of GR Opco’s rights in various pending trademark applications for E11EVEN before
`
`the Trademark Office.
`
`60.
`
`To date, EIP has filed an additional four oppositions against GR Opco’s various
`
`E11EVEN marks, covering everything from hotel services, to time-shares, real estate marketing
`
`services, and swimming pool management.
`
`61.
`
`Even though Defendants have thus far only challenged GR Opco’s marks, they have
`
`never restricted their threats as such.
`
`62.
`
`In fact, in a June 30, 2022 email from Defendants’ counsel to GR Opco’s counsel,
`
`Defendants indicated that they opposed both GR Opco’s registration and use of E11EVEN, going
`
`so far as to state that Defendants “intend[] to initiate an infringement action in federal district
`
`court….” However, Defendants left unclear if and when that suit would be initiated.
`
`63.
`
`GR Opco has for years provided services in the entertainment, hotel and residential
`
`management industries. Also, GR Opco is currently constructing two high rise buildings in Miami
`
`marketed under the E11EVEN® brand. It has initiated this action for the purpose of obtaining
`
`declaratory relief and judicial resolution concerning its right to use the E11EVEN® Mark in
`
`connection with hotel services and temporary accommodations and condominiums.
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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 15 of 25
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`64.
`
`A substantial controversy exists between the parties, and it is of sufficient
`
`immediacy and reality to warrant the issuance of a declaratory judgment.
`
`COUNT I
`CLAIM FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND NO UNFAIR COMPETITION
`
`65.
`
`GR Opco realleges and incorporates by reference the allegations of paragraphs 1
`
`through 64 inclusive, as though fully set forth herein.
`
`66.
`
`This is an action for declaratory judgment pursuant to the Federal Declaratory
`
`Judgment Act, 28 U.S.C. §§ 2201, 2202.
`
`67.
`
`Defendants have accused GR Opco of infringing Defendants’ purported rights in
`
`the ELEVEN EXPERIENCE mark as a result of GR Opco’s use of its E11EVEN® mark.
`
`68.
`
`Defendants further allege that GR Opco has committed unfair competition.
`
`69.
`
`GR Opco denies that its use or registration of its E11EVEN® marks violates
`
`whatever federal or state rights Defendants might have in their purported ELEVEN EXPERIENCE
`
`marks and further denies that GR Opco has committed any acts of unfair competition in the forms
`
`of false designation of origin or false advertising.
`
`70.
`
`Based on the allegations above, there is an actual and substantial controversy
`
`between GR Opco and Defendants, who have adverse legal interests. The dispute between GR
`
`Opco and Defendants is substantial, definite, concrete and immediate, and not hypothetical.
`
`71.
`
`Despite Defendants’ allegations, the use by GR Opco of its E11EVEN® trademark
`
`will not violate any rights Defendants might have pursuant to 15 U.S.C. §§ 1114 or 1125 or any
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`analogous state law trademark rights.
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`72.
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`GR Opco’s E11EVEN® mark is not confusingly similar to Defendants’ ELEVEN
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`mark or its variations.
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`73.
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`GR Opco’s use of its E11EVEN® mark will not mislead consumers into believing
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`that its goods originate or are authorized by Defendants.
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`74.
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`Further, upon information and belief, Defendants cannot establish any rights to their
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`purported mark ELEVEN in conjunction with hotel services as Defendants have never in fact used
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`the alleged mark ELEVEN in conjunction with hotel services.
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`75.
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`In the alternative, upon information and belief, to the extent Defendants ever used
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`their purported mark ELEVEN in conjunction with hotel services, they have since abandoned such
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`rights as there is no evidence of such usage for at least the last three years, giving rise to a statutory
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`presumption of abandonment, and there is no evidence of Defendants’ intention to resume use.
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`76.
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`Defendants’ assertions, their protest to the USPTO, and their threat to file a lawsuit
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`irreparably injure and adversely affect GR Opco’s business and the large investment it has made
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`in: (1) developing and preparing to launch its products and services associated with the E11EVEN®
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`trademark; and (2) securing the registration of the E11EVEN® trademark.
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`77.
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`In order to resolve the legal and factual questions raised by Defendants and to afford
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`relief from the uncertainty and controversy that Defendants’ assertions have precipitated, GR Opco
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`is entitled to a declaratory judgment of its rights under 28 U.S.C. §§ 2201 and 2202, and 15 U.S.C.
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`§ 1119.
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`COUNT II
`UNFAIR COMPETITION UNDER FEDERAL LAW
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`78.
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`GR Opco incorporates paragraphs 1-77 of the Complaint as though fully set forth
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`herein.
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`79.
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`This cause of action is for unfair competition under federal law, arising under
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`Section 1125(a) of Title 15 of the United States Code (“Section 43(a) of the Lanham Act”).
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`80.
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`GR Opco, through its predecessors-in-interest, owns strong common law rights in
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`the mark ELEVEN due to its longstanding use in conjunction with providing hotel services.
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`81.
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`To the extent Defendants’ services are construed by the Court as offering hotel
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`services or otherwise providing temporary accommodations, or is related to such services,
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`providing such services under Defendants’ purported ELEVEN EXPERIENCE mark, ELEVEN
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`mark or variations thereof, constitute unfair competition with GR Opco.
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`82.
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`Defendants’ use of the ELEVEN EXPERIENCE mark is in violation of Section
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`43(a) of the Lanham Act because such use will likely cause confusion, cause mistake, and/or
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`deceive consumers into mistakenly believing that Defendants are licensees, authorized agents, or
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`affiliates or members of GR Opco, or that Defendants and/or their activities are authorized,
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`endorsed, sponsored, or approved by GR Opco, or that Defendants and/or their activities originate
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`with, are connected with, or are associated with GR Opco, or vice versa.
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`83.
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`Upon information and belief, Defendants are using the ELEVEN mark without GR
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`Opco’s authorization or consent in furtherance of their willful, deliberate and bad faith efforts to
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`trade off the association between the ELEVEN mark on the one hand, and the hospitality services
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`its licensees offer thereunder, on the other hand, to generate turn-key brand recognition for, and
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`interest in Defendants.
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`84.
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`Upon information and belief, Defendants have made, and will continue to make
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`substantial profits and gain from their unauthorized uses of the ELEVEN mark, to which they are
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`not entitled in law or equity.
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`85.
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`Upon information and belief, Defendants’ acts and conduct complained of herein
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`constitute false association, false designation of origin, and unfair competition in violation of 15
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`U.S.C. § 1125(a).
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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 18 of 25
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`86.
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`GR Opco has suffered, and will continue to suffer, irreparable harm from
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`Defendants’ unauthorized use of the ELEVEN mark unless restrained by law.
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`87.
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`GR Opco has no adequate remedy at law.
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`COUNT III
`TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`UNDER FLORIDA COMMON LAW
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`88.
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`GR Opco incorporates paragraphs 1-87 of the Complaint as though fully set forth
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`herein.
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`89.
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`Count III is for trademark infringement and unfair competition in violation of the
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`common law of the State of Florida.
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`90.
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`GR Opco has a protectable interest in its ELEVEN marks that were in use in
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`commerce prior to Defendants’ infringing use of the trademarks.
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`91.
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`Defendants’ use of the ELEVEN mark in commerce to advertise, market, promote
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`and/or offer for sale and/or sell their products and services, is likely to cause confusion, cause
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`mistake, and/or deceive consumers into mistakenly believing that Defendants are GR Opco or GR
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`Opco’s licensees, or are licensees, authorized distributors, or affiliates or members of GR Opco,
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`or that Defendants and/or their activities are authorized, endorsed, sponsored, or approved by GR
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`Opco, or that Defendants and/or their activities originate with, are connected with, or are associated
`
`with GR Opco, or vice versa.
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`92.
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`Upon information and belief, Defendants are using the ELEVEN mark without GR
`
`Opco’s authorization or consent in furtherance of their willful, deliberate and bad faith efforts to
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`trade off the association between the ELEVEN mark on the one hand, and the hospitality services
`
`it offers thereunder, on the other hand, to generate brand recognition for, and interest in
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`Defendants.
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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 19 of 25
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`93.
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`Upon information and belief, Defendants have made, and will continue to make,
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`substantial profits and gain from their unauthorized uses of the ELEVEN mark, to which they are
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`not entitled in law or equity.
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`94.
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`Upon information and belief, Defendants’ acts and conduct complained of herein
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`constitute trademark infringement and unfair competition in violation of the common law of the
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`State of Florida.
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`95.
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`GR Opco has suffered, and will continue to suffer, irreparable harm from
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`Defendants’ unauthorized use of the ELEVEN mark unless restrained by law.
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`96.
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`GR Opco has no adequate remedy at law.
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`COUNT IV
`DECEPTIVE AND UNFAIR TRADE PRACTICES
`UNDER FLA. STAT. § 501.201 ET SEQ.
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`97.
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`GR Opco incorporates paragraphs 1-96 of the Complaint as though fully set forth
`
`herein.
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`98.
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`Count IV is for Deceptive and Unfair Trade Practices Under Fla. Stat. § 501.201 et
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`seq.
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`99.
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`Section 501.204(1) provides, in pertinent part, that “unfair or deceptive acts or
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`practices in the conduct of any trade or commerce are hereby declared unlawful.” The provisions
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`of the Act shall be construed liberally “to protect the consuming public and legitimate business
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`enterprises from those who engage in…deceptive[] or unfair acts or practices in the conduct of any
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`trade or commerce.” Fla. Stat § 501.202(2) (2021).
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`100. Defendants, at all times material to the allegations herein, engaged in “trade or
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`commerce” as defined by the Act. Fla. Stat. § 501.203 (2021).
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`Case 1:22-cv-24119-XXXX Document 1 Entered on FLSD Docket 12/20/2022 Page 20 of 25
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`101. Defendants’ unauthorized use of the ELEVEN mark in commerce caused
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`confusion, mistake, or deception as to the affiliation, connection, or association of Defendants or
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`their products and services and GR Opco, its licensees, or it or its licensees’ products and services.
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`102. Defendants’ unauthorized use of the ELEVEN mark constitutes unfair methods of
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`competition, unconscionable acts or practices, and unfair or deceptive acts or practices in the
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`conduct of any trade or commerce in violation of Fla. Stat. § 501.204 (2021).
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`103. GR Opco has suffered actual damages in the form of lost sales and