Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA778887
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`ESTTA Tracking number:
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`Filing date:
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`10/25/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91226056
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Sun Hee Jung
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`SANG HO LEE
`NOVICK KIM & LEE, PLLC
`3251 OLD LEE HIGHWAYSTE 404
`FAIRFAX, VA 22030
`UNITED STATES
`docket@nkllaw.com
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`Other Motions/Papers
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`Harold L. Novick
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`docket@nkllaw.com, hnovick@nkllaw.com, slee@nkllaw.com,
`djung@nkllaw.com, adai@nkllaw.com
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`/Harold L Novick/
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`10/25/2016
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`LL2490040 Brief Opp Motion Dismiss Second Amended Notice of Opposition 10
`25 2016final.pdf(443181 bytes )
`EXHIBIT 1.pdf(845777 bytes )
`EXHIBIT 2.pdf(481152 bytes )
`EXHIBIT 3.pdf(468114 bytes )
`EXHIBIT 4.pdf(83128 bytes )
`EXHIBIT 5.pdf(3447008 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`NKLLAW Ref. No: LL2490040
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`Opposition No. 91226056
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`Mark: SUL BING
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`Application Serial No. 86/357,240
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`____________________________________
`JUNG, Sun-Hee
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` Plaintiff/Opposer,
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`Magic Snow, LLC
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` Defendant/Applicant.
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`) Application filed August 5, 2014
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` )
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`____________________________________)
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`For online submission via ESTTA
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`OPPOSER’S BRIEF IN OPPOSITION TO APPLICANT’S MOTION TO DISMISS
`THE SECOND AMENDED NOTICE OF OPPOSITION
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`Opposer, Sun-Hee Jung (hereinafter “Jung” or “Opposer”), timely opposes Applicant
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`Magic Snow, LLC’s (hereinafter “Magic Snow” or “Applicant”) Motion to Dismiss Opposer’s
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`Second Amended Notice of Opposition under Federal Rule of Civil Procedure 12(b)(6). For
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`reasons set forth below, Jung’s Second Amended Notice of Opposition sufficiently sets forth
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`grounds for opposition of Applicant’s Application Serial No. 86/357,240 (hereinafter
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`“Applicant’s Application”) for mark SUL BING, and therefore Applicant’s Motion to Dismiss
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`should be denied in its entirety.
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`I.
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`DESCRIPTION OF THE RECORD AND INTRODUCTION
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`Opposer filed a Notice of Opposition on January 27, 2016 alleging, inter alia, likelihood
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`of confusion and prior use of her SULBING mark. [Dkt. No. 1.] In lieu of an Answer, Applicant
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`filed a Motion to Dismiss Opposer’s Notice of Opposition. [Dkt. No. 4.] In response, Opposer
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`Page 1 of 15
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`timely filed a Motion To Amend Notice of Opposition, along with an Amended Notice of
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`Opposition adding new claims of unfair competition and invalid application based on nonuse in
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`commerce. [Dkt. Nos. 6, 7.] Applicant opposed Opposer’s Motion to Amend Notice of
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`Opposition and also filed a Motion to Dismiss only with respect to Count I (Likelihood of
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`Confusion) and Count II (Unfair Competition) of Opposer’s Amended Notice of Opposition.
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`[Dkt. Nos. 9, 10.] Regarding Count III (Invalid Application), Applicant did not seek to dismiss it
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`in its Motion to Dismiss and in fact admitted that allegations of nonuse in commerce “could
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`possibly be construed to sustain the Opposition.” [Dkt. No. 10 at 2.] After the parties filed their
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`respective opposition and reply with respect to Applicant’s Motion to Dismiss the Amended
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`Notice of Opposition [Dkt. Nos. 12, 13], the Board issued an Order on August 29, 2016 granting
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`in part, and denying in part Applicant’s Motion to Dismiss. [Dkt. No. 14.] Specifically, the
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`Board found that Opposer “adequately pleaded the likelihood of confusion portion of its Section
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`2(d) claim,” but granted Applicant’s motion with respect to the priority portion of Opposer’s
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`Section 2(d) claim and unfair competition claim. The Board, however, sustained Opposer’s
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`nonuse in commerce claim. [Id. at 8.] In the Order the Board also explicitly gave Opposer
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`permission to file a second amended notice of opposition to “correct[] the defects noted in her
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`Section 2(d) claim.” [Id. at 7-8.]
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`On September 19, 2016, Opposer timely and in accordance with the Board’s August 29,
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`2016, Order, filed a Second Amended Notice of Opposition (hereinafter “Second Amended
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`Opp.”) claiming likelihood of confusion (and priority) based on a completely new legal ground
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`different than Section 2(d), namely the United States-Korea Free Trade Agreement. It also
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`included the previous claim of invalidity based on nonuse in commerce. [Dkt. No. 16.]
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`Page 2 of 15
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`Specifically, in her Count of likelihood of confusion, Opposer asserts that her SULBING
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`marks had obtained their fame in Korea before the filing date of Applicant’s intent-to-use
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`Application. Opposer’ Second Amended Opp. contains numerous factual allegations with
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`exhibits attesting to the fame of Opposer’s SULBING marks in Korea. [Dkt. No. 16, at ¶¶ 1-19
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`and Exhibits 1-17.]1 As a result of 19 USCA §3805, the United States-Korea Free Trade
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`Agreement provides that well-known marks in Korea are treated as famous marks in the United
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`States. Because that fame and the KORUS FTA have been newly alleged in Opposer’s Second
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`Amended Opp., it is an issue not addressed in the Board’s decision of August 29, 2016. [Dkt. No.
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`14.]
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`Further, contrary to Applicant’s assertions in its Motion to Dismiss, Opposer has in fact
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`sufficiently pled in her Second Amended Opp. claims upon which relief can be granted. As a
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`matter of law, Applicant’s Motion to Dismiss lacks merit and should be denied.
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`The United States-Korea Free Trade Agreement
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`The United States-Korea Free Trade Agreement (hereinafter “KORUS FTA”) was signed
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`between the United States and South Korea in June 2007 and entered into force on March 15,
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`2012 in an effort to strengthen and develop economic relations between the United States and
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`South Korea for their mutual benefit and to facilitate the freer flow of products, services, and
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`ideas. (See Exhibit 1, U.S.-Korea Free Trade Agreement Article from the website of the Office
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`of the United States Trade Representative; see also Dkt. No. 16, Exhibit 17 at 1.) The KORUS
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`FTA contains over 20 Chapters of provisions agreed upon between the U.S. and Korea. Chapter
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`18 of the KORUS FTA sets forth provisions concerning intellectual property rights. And Article
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`18.2, ¶ 8 states in relevant part:
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`1 The factual allegations are incorporated herein by reference.
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`Page 3 of 15
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`Each Party2 shall provide for appropriate measures to refuse or cancel the registration and
`prohibit the use of a trademark . . . that is identical or similar to a well-known trademark,
`for related goods or services, if the use of that trademark . . . is likely to cause confusion,
`or to cause mistake, or to deceive or risk associating the trademark or geographical
`indication with the owner of the well-known trademark, or constitutes unfair exploitation
`of the reputation of the well-known trademark.
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` (Dkt. No. 16, Exhibit 17 at 10-11.)
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`As clearly stated in the language and explained in the legislative history of the KORUS
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`FTA, Article 18.2, ¶ 8 provides for owners of well-known marks (in Korea) to prohibit or cancel
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`trademark registrations (in the U.S.) of marks that are identical or similar to the well-known
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`mark (in Korea). (See Exhibit 2, Report of the Industry Trade Advisory Committee on
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`Intellectual Property Rights, at 8.) “This protection in the KORUS FTA extends not only to
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`registration of conflicting marks but also to the use of the conflicting mark . . . . This FTA
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`provides the greatest protection for well-known marks to date[] and should be applauded.” (Id.)
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`Moreover, as a result of the implementing legislation, priority is conferred by Article 18.2,
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`¶ 8 such that if a party owns a well-known trademark in Korea then that party has priority as of
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`its date of fame in Korea over another party who later tries to register or starts using a similar or
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`same mark in the U.S. after the mark first became famous and well-known in Korea.
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`According to the legislative history of the KORUS FTA, “the trademarks section includes
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`major provisions that should assist trademark owners in protecting trademarks.” (Exhibit 2 at 7.)
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`“This agreement makes some significant advances toward the broader goal of setting high
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`standards and good precedents for the future and for other FTAs. But again . . . the proof will lie
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`in the implementation of these new standards on the ground in the country, by police,
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`2 Party is defined as The Government of the United States and the Government of the Republic of
`Korea. [See Dkt. No. 16, Exhibit 17 at 1.]
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`Page 4 of 15
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`prosecutors, judges and administrative agencies responsible for enforcement and
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`implementation of intellectual property rights.” (Id. at 19.) (Emphasis added).
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`The KORUS FTA is implemented by the U.S.-Korea Free Trade Agreement
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`Implementation Act, Pub. L. No. 112-41, which is codified in 19 USCA § 3805 Note. (See
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`Exhibit 3, PL 112-41 with 19 USCA § 3805 Note.) As stated in a letter written by Ms. Wendy
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`Cutler, Assistant U.S. Trade Representative, to Deputy Minister Choi of Korea, the U.S.
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`Government introduced the U.S.-Korea Free Trade Agreement Implementation Act as one of the
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`measures to implement its commitments under the KORUS FTA. (See Exhibit 4, Letters between
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`Choi and Cutler.)
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`Accordingly, the KORUS FTA is implemented in the U.S. and Article 18.2, ¶ 8 should be
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`applied in this case.
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`II. LEGAL STANDARD OF REVIEW
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`Rule 8 of the Federal Rules of Civil Procedure requires that pleadings setting forth claims
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`for relief include only “a short and plain statement of the claim showing that the pleader is
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`entitled to relief.” Fed. R. Civ. P. 8(a). In order to withstand a Motion to Dismiss based on Fed.
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`R. Civ. P. 12(b)(6), the complaint need only allege such facts as would, if proved, establish that
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`the Opposer is entitled to the relief sought. Specifically, Opposer need only establish that it has
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`standing to maintain the proceeding and that a valid ground exists for opposing the mark. See
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`Fair Indigo LLC v. Style Conscience, Opp. 91175571, 2007 WL 4162785, at *2, 85 USPQ2d
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`1536, 1538 (TTAB Nov. 21, 2007). To survive a Motion to Dismiss, a complaint must only
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`“state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 554,
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`570 (2007); see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (plausibility standard applies to
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`all federal civil claims); Nike, Inc. v. Palm Beach Crossfit Inc., Opp. No. 91218512, 2015 WL
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`Page 5 of 15
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`5721653, at *2, **4-5, 116 U.S.P.Q.2d 1025 (TTAB Sept. 11, 2015) (applying the plausibility
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`standard and finding that Opposer sufficiently pled claims of likelihood of confusion and
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`dilution).
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`A motion to dismiss under Fed. R. Civ. P. 12(b)(6) may be granted only if, after
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`accepting all well-pleaded allegations in the Second Amended Opp. as true and drawing all
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`reasonable inferences in favor of Jung, the Board finds that Jung has failed to set forth fair notice
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`of its claims and the grounds upon which they rest. Twombly, 550 U.S. at 555. In the present case,
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`the Second Amended Opp. will survive a motion to dismiss if it states plausible grounds for
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`Jung’s entitlement to the relief sought. Id. at 556-57. The Second Amended Opp. must merely
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`contain sufficient factual allegations “to raise a right to relief above the speculative level.” Id. at
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`555. Accordingly, the issue before the Board upon considering Applicant’s pending Motion to
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`Dismiss is not whether Opposer “will ultimately prevail but whether the claimant is entitled to
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`offer evidence in support of the claims.” McDowell v. N. Shore-Long Island Jewish Health Sys.,
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`Inc., 839 F. Supp. 2d 562, 565 (E.D.N.Y. 2012) (citing Todd v. Exxon Corp., 275 F.3d 191, 198
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`(2d Cir. 2001)). Whether Opposer can actually prove its allegations is a matter to be determined
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`not upon motion to dismiss, but rather at final hearing or upon summary judgment after the
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`parties have had an opportunity to submit evidence in support of their respective positions. See
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`Caron Corp. v. Helena Rubinstein, Inc., 1976 WL 20831, *3,193 USPQ 113 (TTAB July 15,
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`1976). For this reason, a motion to dismiss for failure to state a claim “is viewed with disfavor
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`and is rarely granted.” Phonometrics, Inc. v. Hospitality Franchise Sys., Inc., 203 F.3d 790, 794
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`(Fed. Cir. 2000). That should be the approach of the Board in the present case.
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`Page 6 of 15
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`III. ARGUMENT
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`A. Jung’s Second Amended Notice of Opposition Sufficiently Alleges Likelihood of
`Confusion, Along with Priority, As A Ground For Opposition
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`In Applicant’s Motion to Dismiss, Applicant asserts that Opposer’s “[] ‘priority and
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`likelihood of confusion’ ground is premised on the fame of the mark in Korea, an allegation
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`already found to be without merit by the Board.” (Dkt. No. 17 at 3.) Applicant also asserts that
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`“[t]he matter of priority as alleged was finally and conclusively determined to be in Applicant’s
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`favor.” Id. Applicant’s assertions are erroneous in light of the KORUS FTA, which is an entirely
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`new legal ground different from Section 2(d). The Board’s prior decision regarding likelihood of
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`confusion and priority was only based on Section 2(d). Now with respect to the KORUS FTA,
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`fame of Opposer’s SULBING marks in Korea is precisely what must be pled and Opposer has
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`sufficiently done so.
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` Opposer’s Second Amended Opp. properly alleges numerous facts in support of its claim
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`of likelihood of confusion, along with priority. Specifically, the Second Amended Opp. pled
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`numerous facts in support of the fame of her SULBING marks in Korea, as required by the
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`KORUS FTA. For example, the Second Amended Opp. pled that since Opposer opened her first
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`dessert store in Korea using her SULBING marks in connection with dessert stores in August
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`2013, SULBING became an instant “boom” throughout the entire country. (See Dkt. No. 16 at ¶
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`6.)
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`Applicant’s Motion to Dismiss incorrectly asserts that “there is nothing in the [KORUS FTA]
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`conferring priority rights on Opposer and Opposer has not established a new priority date in the
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`United States barring this count.” (Dkt. No. 17 at 4.) To the contrary, priority is conferred by the
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`KORUS FTA. Contrary to Applicant’s assertions, the Second Amended Opp. alleges numerous
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`facts in support of priority of use and fame of Opposer’s SULBING Marks in Korea before the
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`Page 7 of 15
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`filing date of Applicant’s intent-to-use Application in the U.S. For example, Opposer’s Second
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`Amended Opp. alleges that Opposer “since prior to the filing date of Applicant’s Application on
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`August 5, 2014, adopted and continuously and prodigiously used the mark SULBING in fanciful
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`English lettering and in Korean and Chinese characters (“Opposer’s SULBING marks”) for,
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`inter alia, café and restaurant services (International Class (IC) 43 Services) in South Korea.”
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`(Dkt. No. 16 at ¶ 3.) The Second Amended Opp. also alleges numerous facts showing that the
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`fame of Opposer’s SULBING marks was established in Korea before the filing date of
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`Applicant’s Application. (See Dkt. No. 16 at ¶¶ 1-19.) To state a claim upon which relief can be
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`granted does not require a well-known or famous trademark owner to calculate the exact date its
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`mark became well-known or famous; only to predate any priority rights of Applicant.
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` Applicant’s Motion to Dismiss also incorrectly asserts that Opposer has misapplied the
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`KORUS FTA and that Opposer has improperly alleged that the KORUS FTA extends trademark
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`rights greater than that provided by the Paris Convention or local United States law or Federal
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`Circuit precedent. (See Dkt. No. 17 at 4.) First, Applicant’s assertions are flawed attorney
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`arguments with no merit. The inadequacy of Applicant’s flawed arguments against the KORUS
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`FTA becomes clear when Applicant’s Motion to Dismiss rambles on and asserts that “[t]here is
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`nothing in the language or the statute or in the application of the statute that affords famous
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`marks protection in the United States if the fame and use is related to solely outside of the United
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`States and there is no bad faith on the part of Applicant.” (Id. at 5.) Applicant’s arguments makes
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`little, if any, sense. It is unclear what “language” and what “statute” Applicant is referring to.
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`Moreover, Applicant’s citation to an Exhibit A in footnote 2 of its Motion to Dismiss is
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`irrelevant. Applicant cites to Exhibit A as a “U.S. government website” which supposedly
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`explains “the ‘famous’ mark doctrine and its application to the U.S.-Korea Free Trademark [sic]
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`Page 8 of 15
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`Agreement.” But a review of the actual website at export.gov, only a portion of which is attached
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`as Applicant’s Exhibit A, reveals that it only discusses trademark protection/registration in Korea,
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`not in the U.S. and it in fact does not even mention the KORUS FTA, much less discuss it to the
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`extent alleged by Applicant. Further, the website is out of date at least with respect to the
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`KORUS FTA, because it was last updated in May 2011, and the KORUS FTA did not become
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`effective until March 2012. (See Exhibit 5, screenshot of export.gov website last updated on
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`5/17/11.) Applicant’s arguments with such blatant errors only show that Applicant has little or no
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`knowledge about the KORUS FTA. As such, Applicant’s arguments against the applicability of
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`the KORUS FTA in this case are meritless and cannot be relied on.
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`Second, the language of the KORUS FTA, as discussed in the Introduction section, above,
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`explicitly provides for owners of well-known marks (in Korea) to prohibit or cancel trademark
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`registrations (in the U.S.) of marks that are identical or similar to the well-known mark (in
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`Korea). As such, the KORUS FTA precisely applies in this case.
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`Further, Applicant’s Motion to Dismiss mischaracterizes the Exhibits to Opposer’s Second
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`Amended Opp., stating that “many of the ‘fame’ allegations consist of articles written after
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`Applicant’s priority date.” (Dkt. No. 17 at 3.) Even though some of the Exhibit articles and
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`materials to Opposer’s Second Amended Opp. were dated after the filing date of Applicant’s
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`Application, the substance of the documents discuss events, survey results or matters establishing
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`fame of Opposer’s SULBING marks before the filing date of Applicant’s Application (See, e.g.,
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`Dkt. No. 16, Exhibit 13, Newspaper Hankyung News article published on August 12, 2014,
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`announcing that Opposer’s mark SULBING (in Korean characters) was named the Brand of the
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`Month in July, 2014 by consumers.)
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`Page 9 of 15
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`Accordingly, Applicant’s assertions in its Motion to Dismiss as to Opposer’s failure to
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`sufficiently plead its likelihood of confusion (and priority) claim are meritless and should be
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`discounted.
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`Instead, based on an entirely new legal ground—the KORUS FTA—Opposer has pled
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`facts showing fame of Opposer’s SULBING marks in Korea, priority, and likelihood of
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`confusion sufficient to survive a motion to dismiss.
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` To the extent Applicant suggests dismissal is appropriate because there is no likelihood of
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`confusion as a matter of law, such assertions are proper only under a properly-supported motion
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`for summary judgment under Fed. R. Civ. P. 56, not a motion to dismiss under Fed. R. Civ. P.
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`12(b)(6). See Nike, Inc., 2015 WL 5721653, at **1-2.
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`Moreover, “[a] party should not be denied his right to be heard on a notice of opposition
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`unless it is certain beyond any doubt that he cannot prevail under any circumstances.”
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`Stabilisierrungsfonds Fur Wein v. Zimmermann-Graeff KG, 1978 WL 21772, at *1, 199 USPQ
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`488 (TTAB Aug. 23, 1978). As described above, Opposer’s Second Amended Opp. clearly
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`alleges facts, based on an entirely new legal ground, which far exceed this standard. Accordingly,
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`Opposer should not be denied an opportunity to offer evidence in support of its likelihood of
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`confusion (and priority) claim.
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`In short, Opposer’s Second Amended Opp. alleges facts which, if proved at trial or on
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`summary judgment, would establish her priority and that a likelihood of confusion exists such
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`that Opposer would be entitled to the relief she seeks. No more is required under the notice
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`pleading rules to withstand a motion to dismiss under Fed. R. Civ. P. 12(b)(6). Accordingly,
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`Applicant’s motion to dismiss the likelihood of confusion ground, along with priority, of the
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`Second Amended Opp. should be denied.
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`Page 10 of 15
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`B. Jung’s Second Amended Notice of Opposition Sufficiently Alleges Invalidity of
`Applicant’s Application As A Ground For Opposition
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`
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`Opposer sufficiently pled the claim of invalidity of Applicant’s Application based on nonuse
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`in commerce. Applicant’s Motion to Dismiss asserts that “numerous out of state residents have
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`purchased food at the location sufficiently affecting interstate commerce.” (Dkt. 17 at 4.)
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`Applicant’s assertion is mere attorney argument, which alone is insufficient to prove use in
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`commerce. See In re Bookbinder’s Restaurant, Inc., 240 F.2d 365, 368, 112 U.S.P.Q. 326
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`(C.C.P.A. 1957) (finding attorney statements alleging rendering of services in commerce
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`insufficient to establish that the services for which registration is sought are rendered in
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`commerce). In fact, the majority of the supposed Yelp reviews and customer purchase receipts
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`attached as Exhibit B to Applicant’s Motion to Dismiss purportedly showing that out-of-state
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`customers purchase from Applicant’s single dessert store are dated after the filing date of
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`Applicant’s Amendment to Allege Use of May 8, 2015. Use in commerce, to support a
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`trademark application, must occur before the filing date or at the time of filing of Applicant’s
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`Amendment to Allege Use. See 37 C.F.R.§ 2.76(b). Therefore, Applicant’s Exhibit B fails to
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`support Applicant’s attorney arguments against invalidity of Applicant’s Application.
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`Further, Applicant’s Motion to Dismiss fails to explain or show how Applicant’s dessert shop
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`services have any affect, let alone direct affect, on interstate commerce required for a local
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`service to qualify as being rendered in commerce. See In re Gastown, Inc., 326 F.2d 780, 784,
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`140 USPQ 216 (C.C.P.A. 1964) (finding that auto and maintenance services provided by service
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`stations operator in Ohio to customers travelling on interstate and federal highways have a direct
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`effect on interstate commerce and therefore the service station operator was rendering service in
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`commerce). As explained by the Court in Gastown, “[p]art of the services rendered by the
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`appellant at its service stations includes delivering gasoline and other automobile products to
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`Page 11 of 15
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`trucks or other vehicles stalled on highways. Obviously the automobiles and trucks could not
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`travel at all without the gasoline. Such services directly affect interstate commerce.” In re
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`Gastown, 326 F.2d at 782.
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`Such is not the case with Applicant’s services. Applicant’s dessert shop services are not of
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`the type necessary for the accomplishment of interstate commerce. As the dissent pointed out in
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`the Larry Harmon case cited by Applicant in its Motion to Dismiss, “[t]he Lanham Act does not
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`and need not apply to predominantly local services.” Larry Harmon Pictures Corp. v. Williams
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`Rest. Corp., 929 F.2d 662, 670, 18 USPQ.2d 1292 (Fed. Cir. 1991) (Newman, J., dissenting).
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`Moreover, Applicant’s citation of the Larry Harmon case is inapposite. (See Dkt. 17 at 5.)
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`Larry Harmon is a case at the summary judgment stage, not motion to dismiss. So to the extent
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`Applicant suggests that dismissal is appropriate because there is use in commerce as a matter of
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`law, such assertions are proper only under a properly-supported motion for summary judgment,
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`not a motion to dismiss. Also, Applicant incorrectly states that Larry Harmon supports the
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`proposition that “Applicant only needs to prove that services were rendered to customers
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`traveling across state boundaries.” (See Dkt. 17 at 5.) To the contrary, rendering services to
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`interstate customers is only one of many facts that contributed to the Federal Circuit’s finding of
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`use in commerce in Larry Harmon. Other facts that the Court considered included location of the
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`restaurant and restaurant’s mention in out-of-state publications. Larry Harmon Pictures, 929
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`F.2d at 663, 665.
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`Also, the Court in Larry Harmon reaffirmed the In re Gastown standard that services of
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`single-location entities must have a direct effect on interstate commerce to sufficiently show that
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`a mark is used in commerce. Larry Harmon Pictures, 929 F.2d at 664-65. Here, Applicant’s
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`Page 12 of 15
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`dessert shop services do not have any effect, much less, a direct effect on interstate commerce,
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`and Applicant’s Motion to Dismiss has failed to show any such effect.
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`Applicant’s single store is nothing more than a local operation. And Applicant’s Motion to
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`Dismiss fails to show that Applicant’s services are anything other than local in nature.
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`Accordingly, Opposer’s Second Amended Opp. has sufficiently pled facts which, if proved at
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`trial or on summary judgment, would establish that Applicant has not rendered any of the
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`services listed in Applicant’s Application in commerce and is not entitled to a registration. No
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`more is required under the notice pleading rules to withstand a motion to dismiss under Fed. R.
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`Civ. Pro. 12(b)(6). Accordingly, Applicant’s Motion to Dismiss the claim of invalid application
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`should be denied.
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`C. Applicant’s Motion for Sanctions
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`Applicant’s Motion to Dismiss also reference a Motion for Sanctions that Applicant’s
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`counsel served on Opposer on September 27, 2016, and has since filed with the Board on
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`October 24, 2016. [Dkt. No. 17 at 6; Dkt. No. 18.] Opposer will address Applicant’s Motion for
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`Sanctions in separate briefing.
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`D. In The Alternative, Jung Requests Leave to Amend Its Second Amended Notice of
`Opposition
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`In the Alternative, should the Board find that Opposer’s Second Amended Opp. fails to
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`properly state a claim for likelihood of confusion (along with priority) and/or invalidity, Opposer
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`hereby requests leave to amend its Second Amended Notice of Opposition pursuant to TBMP
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`§ 503.03 to address any identified deficiencies.
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`Page 13 of 15
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`IV. CONCLUSION
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`For the foregoing reasons, Opposer respectfully requests that the Board deny Applicant’s
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`Motion to Dismiss Opposer’s Second Amended Notice of Opposition under Fed. R. Civ. Pro.
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`12(b)(6) and allow the proceeding to begin.
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`Dated: October 25, 2016
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`Respectfully submitted,
`
`/Harold L Novick/
`Sang Ho Lee
`Harold L. Novick
`Angela Y. Dai
`Young Joon Jung
`Novick, Kim & Lee, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`Telephone: (703) 745-5495
`Facsimile: (703) 563-9748
`Email: docket@nkllaw.com
`
`Attorneys for Plaintiff/Opposer,
`Sun-Hee Jung
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`Page 14 of 15
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`

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`CERTIFICATE OF SERVICE
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` I
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` hereby certify that a true and complete copy of the foregoing OPPOSER’S OPPOSITION TO
`APPLICANT’S MOTION TO DISMISS THE SECOND AMENDED NOTICE OF
`OPPOSITION, along with Exhibits 1-5 thereof, is being served on counsel for
`Defendant/Applicant Magic Snow, LLC, on October 25, 2016 via USPS First Class Mail,
`postage prepaid, to the following address:
`
`
`Sunwoo Lee, Esq.
`Daniel Mullarkey, Esq.
`POLSINELLI PC
`1401 Eye Street, NW, Suite 800
`Washington, DC 20005
`
`Signed:/Harold L Novick/
`Harold L. Novick
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`Page 15 of 15
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`EXHIBIT 1
`EXHIBIT 1
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`

`

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`New Opportunities for U.S. Exporters Under the U.S.-Korea Trade
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`The entry into force of the U.S.-Korea trade agreement on Ms rch 15,3] 1 2 means countless new opportunities for U.S. exporters to
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`sell more M ade-in-America goods. seryices. and agricultural product to Korean custo mers - and to so pport more good jobs here at
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`home. If you're an American exporter. here are TESDLH'CE to answer your questio ns about how the U.S.-Korea trade agree me nt can
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`work to r you:
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`i C heck out the :TA Tali-T Tool to find out the newta ri ff leyel sfol' you r prod ucfs, and other information about your rnar ltet ECCES
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`The United Stata and the Republic of Korea signed the United States-Ko rea Free Trade Agreement lKDRUS FfAi on June St}. 230?.
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`[in December S. it] ill}. the United States and Korea concluded new agreements. reflected in letters signed on February 1!]. Still. that
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`proylde new market accEs and IEyel the playi ng field for U.S. auto manufacturers and worlcers. Congress a pproyed the agreement on
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`October 12. Eflfl. and Korea's National Assembly approyed it on Hoyember 22. Hill. The United States and Korea completed their
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`rEyiew of the measures both sides had taiten to implement the l-TA and exchanged diplomatic notes on February 21 agreeing to bring
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`the agree ment into force o n M a rch 15. El] 12.
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`The Agreement is the United StatE most commercially significant free trade agreement in almost two deca d5.
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`The U.S. International Trade Commission estimates that the reduction of Korean tariffs and tariff- rate quotas on goods alone will add
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`Ell] billion to $12 billion to annual U.S. Gross DomEtic Product and around $10 billion to annual merchandise exports to Korea.
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`Fieyiew Process
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`Under the PTA almost El} percent of U.S. exports to Korea of consumer and industrial products will become duty free on March 15E
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`2012, and neariy 5’5 perce nt of biiate ral trade in consu mer and industrial products will become duty free within five years of that
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`For agricultural prod ucts. the FfA will immediately eliminate or phase outta riffs and quotas on a broad range of products. with almost
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