Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1096808
`
`Filing date:
`
`11/20/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91264162
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Kim, An Soon
`
`SANG HO LEE
`NOVICK, KIM & LEE, PLLC
`3251 OLD LEE HIGHWAY
`SUITE 404
`FAIRFAX, VA 22030
`UNITED STATES
`Primary Email: docket@nkllaw.com
`Secondary Email(s): slee@nkllaw.com, djung@nkllaw.com
`703-745-5495
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`David Youngjoon Jung
`
`djung@nkllaw.com, docket@nkllaw.com, slee@nkllaw.com
`
`/David Youngjoon Jung/
`
`11/20/2020
`
`Attachments
`
`LLK3640089-ApplicantsAnswerandAffirmativeDefenses.pdf(115828 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_____________________________________
`
`Opposition No. 91264162
`)
` Sanofi
`
`)
`
`Application Serial No. 88698496
`)
` Opposer,
`International Classes 3, and 5
`)
`
`
`)
` v.
`Mark: FANOFI
`)
`
`
`)
` KIM, AN SOON
`
`)
`Filed: November 19, 2019
`
`
` Applicant.______________ ) Published: July 14, 2020
`
`
`
`
`
`
`
`
`APPLICANT’S ANSWER TO NOTICE OF OPPOSITION
`AND AFFIRMATIVE DEFENSES
`
`Applicant, KIM, AN SOON (“Applicant”), by and through its counsel, hereby answers the
`
`Notice of Opposition (the “Notice”) filed on August 12, 2020 by Sanofi (“Opposer”) as set forth
`
`below. Unless specifically admitted, Applicant denies each of the allegations of Opposer’s Notice
`
`of Opposition.
`
`
`
`As to the preamble of the Notice, Applicant denies that Opposer will be damaged by the
`
`registration of Applicant’s FANOFI mark. With respect to the numbered Paragraphs in the Notice,
`
`Applicant Answers as follows:
`
`1. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 1 of the Notice, and therefore denies them.
`
`2. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 2 of the Notice, and therefore denies them.
`
`3. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 3 of the Notice, and therefore denies them.
`
`
`
`Page 1 of 6
`
`
`
`4. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 4 of the Notice, and therefore denies them.
`
`5. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 5 of the Notice, and therefore denies them.
`
`6. Applicant admits the allegations contained in Paragraph 6 of the Notice.
`
`7. Applicant admits the allegations contained in Paragraph 7 of the Notice.
`
`8. Applicant admits that the filing date of Applicant’s application is November 19, 2019.
`
`Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations contained in Paragraph 8 of the Notice, and therefore denies them.
`
`9. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 9 of the Notice, and therefore denies them.
`
`10. Applicant admits the allegations contained in Paragraph 10 of the Notice.
`
`11. Applicant’s answers to Paragraphs 1-10 of the Notice are incorporated herein by reference.
`
`12. Paragraph 12 states a legal conclusion to which no response is required. To the extent a
`
`response is required, Applicant denies the allegations contained in Paragraph 12 of the
`
`Notice.
`
`13. Paragraph 13 states a legal conclusion to which no response is required. To the extent a
`
`response is required, Applicant denies the allegations contained in Paragraph 13 of the
`
`Notice.
`
`14. Paragraph 14 states a legal conclusion to which no response is required. To the extent a
`
`response is required, Applicant denies the allegations contained in Paragraph 14 of the
`
`Notice.
`
`
`
`Page 2 of 6
`
`
`
`15. Paragraph 15 states a legal conclusion to which no response is required. To the extent a
`
`response is required, Applicant denies the allegations contained in Paragraph 15 of the
`
`Notice.
`
`16. Applicant denies the allegations contained in Paragraph 16 of the Notice.
`
`17. Applicant’s answers to Paragraphs 1-16 of the Notice are incorporated herein by reference.
`
`18. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 18 of the Notice, and therefore denies them.
`
`19. Paragraph 19 states a legal conclusion to which no response is required. To the extent a
`
`response is required, Applicant denies the allegations contained in Paragraph 19 of the
`
`Notice.
`
`20. Applicant admits the allegations contained in Paragraph 20 of the Notice.
`
`21. Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations contained in Paragraph 21 of the Notice, and therefore denies them. Applicant
`
`denies that Applicant’s application covers Class 35 services.
`
`22. Paragraph 22 states a legal conclusion to which no response is required. To the extent a
`
`response is required, Applicant denies the allegations contained in Paragraph 22 of the
`
`Notice.
`
`23. Paragraph 23 states a legal conclusion to which no response is required. To the extent a
`
`response is required, Applicant denies the allegations contained in Paragraph 23 of the
`
`Notice.
`
`24. Applicant denies the allegations contained in Paragraph 24 of the Notice.
`
`
`
`
`
`
`
`Page 3 of 6
`
`
`
`AFFIRMATIVE DEFENSES
`
`Applicant, as affirmative defense to the Notice of Opposition, pleads further as follows:
`
`25. Opposer has failed to state a claim upon which relief can be granted.
`
`26. Opposer will not be damaged or suffer any injury as a result of any conduct of Applicant.
`
`27. Registration of Applicant’s Mark will not cause consumer confusion with Opposer’s
`
`Mark.
`
`28. Applicant affirmatively alleges that there is no likelihood of confusion, mistake or
`
`deception because, inter alia, Applicant’s Mark and the pleaded mark of Opposer are not
`
`confusingly similar.
`
`29. Applicant reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil
`
`Procedure, the Lanham Act, and any other defenses or counterclaims at law or in equity,
`
`that may now exist or in the future be available based on discovery and further factual
`
`investigation in this Opposition.
`
`WHEREFORE, Applicant respectfully requests that Opposition No. 91264162 be
`
`dismissed with prejudice, and that Applicant’s Mark be granted registration.
`
`
`
`
`Dated: November 20, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Sang Ho Lee/
`Sang Ho Lee
`David Youngjoon Jung
`
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway
`Suite 404
`Fairfax, Virginia 22030
`Telephone: (703) 745-5495
`Facsimile: (703) 563-9748
`slee@nkllaw.com
`djung@nkllaw.com
`
`Page 4 of 6
`
`
`
`
`
`
`
`
`
`Attorneys for Applicant,
`KIM, AN SOON
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 5 of 6
`
`
`
`CERTIFICATE OF SERVICE
`
`I, Sang Ho Lee, hereby certify that a true and complete copy of the foregoing Applicant’s
`
`Answer and Affirmative Defenses has been served on the Attorney for Opposer on November
`
`20, 2020, via email to:
`
`
`Richard Lehv
`Fross Zelnick Lehmran & Zissu, P.C.
`151 West 42nd Street 17th Floor
`New York, NY 10036
`rlehv@fzlz.com
`klim@fzlz.com
`cliu@fzlz.com
`tmonaco@fzlz.com
`
`
`
`_______/Sang Ho Lee/______
`Sang Ho Lee
`
`
`Page 6 of 6
`
`
`
`
`
`
