Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1147295
`07/16/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`YONWOO CO., LTD
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/31/2021
`
`13, GAJWA-RO 84 BEON-GIL, SEO-GU
`(GAJWA-DONG)
`INCHEON, 22824
`KOREA, REPUBLIC OF
`
`SANG HO LEE
`NOVICK, KIM & LEE, PLLC
`3251 OLD LEE HIGHWAY
`SUITE 500
`FAIRFAX, VA 22030
`UNITED STATES
`Primary Email: docket@nkllaw.com
`Secondary Email(s): slee@nkllaw.com, gdonahue@nkllaw.com,
`djung@nkllaw.com
`703-745-5495
`
`Docket Number
`
`LL1670099
`
`Applicant Information
`
`Application No.
`
`90321208
`
`Publication date
`
`06/01/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`07/16/2021
`
`Opposition Peri-
`od Ends
`
`07/31/2021
`
`KIM, YONWOO
`#101
`31-49, YULMA-RO, DAEGOT-MYEON, GIMPO-SI
`GYEONGGI-DO, 10039
`REPUBLIC OF KOREA
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: retail store services featuring cosmetics,
`hand sanitizers, sanitary masks, pottery, tableware, general purpose storagebins for household use,
`household goods; retail store services featuring plastic bins, plastic cabinets, plastic containers and
`plastic baskets for household or domestic use; wholesale and retail store services featuring unpro-
`cessed plastic, namely, plastic raw materials for industrial use, plastic resins, unprocessedsynthetic
`resins; distributorship services in the field of unprocessed plastic,namely, plastic raw materials for in-
`dustrial use, plastic resins, unprocessed synthetic resins
`
`
`ESTTA1147295
`07/16/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`YONWOO CO., LTD
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/31/2021
`
`13, GAJWA-RO 84 BEON-GIL, SEO-GU
`(GAJWA-DONG)
`INCHEON, 22824
`KOREA, REPUBLIC OF
`
`SANG HO LEE
`NOVICK, KIM & LEE, PLLC
`3251 OLD LEE HIGHWAY
`SUITE 500
`FAIRFAX, VA 22030
`UNITED STATES
`Primary Email: docket@nkllaw.com
`Secondary Email(s): slee@nkllaw.com, gdonahue@nkllaw.com,
`djung@nkllaw.com
`703-745-5495
`
`Docket Number
`
`LL1670099
`
`Applicant Information
`
`Application No.
`
`90321208
`
`Publication date
`
`06/01/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`07/16/2021
`
`Opposition Peri-
`od Ends
`
`07/31/2021
`
`KIM, YONWOO
`#101
`31-49, YULMA-RO, DAEGOT-MYEON, GIMPO-SI
`GYEONGGI-DO, 10039
`REPUBLIC OF KOREA
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: retail store services featuring cosmetics,
`hand sanitizers, sanitary masks, pottery, tableware, general purpose storagebins for household use,
`household goods; retail store services featuring plastic bins, plastic cabinets, plastic containers and
`plastic baskets for household or domestic use; wholesale and retail store services featuring unpro-
`cessed plastic, namely, plastic raw materials for industrial use, plastic resins, unprocessedsynthetic
`resins; distributorship services in the field of unprocessed plastic,namely, plastic raw materials for in-
`dustrial use, plastic resins, unprocessed synthetic resins
`
`
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5126443
`
`Registration Date
`
`01/24/2017
`
`Application Date
`
`11/02/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`YONWOO FROM PASSION TO IMPRESSION
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`Sealing caps of glass or porcelain; bottle caps of glass or porcelain
`Class 021. First use: First Use: 0 First Use In Commerce: 0
`Soap dispensers; fitted vanity cases; plastic bottles sold empty; bottles for foods
`sold empty; perfume sprayers; bottles for beverages sold empty; bottles formedi-
`cines sold empty; bottles for cosmetics sold empty; glass ampoules for medica-
`tion, sold empty; domestic containers for nail polish featuring applicators, sold
`empty; glass jars, namely carboys; carboys; glass bottles for cosmetics, sold
`empty; decanters; domestic containers for cosmetics featuring applicators, sold
`empty; powder puffs; powder cases being containers for cosmetic powders for
`domestic use, sold empty; powder compacts
`
`Attachments
`
`79185870#TMSN.png( bytes )
`Notice of Opposition-YONWOO.pdf(258479 bytes )
`
`Signature
`
`/Sang Ho Lee/
`
`Name
`
`Date
`
`Sang Ho Lee
`
`07/16/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
` v.
`
`YONWOO CO., LTD.
`
`
` Opposer,
`
`
`
`KIM, YONWOO.,
`
` Applicant.
`
`
`
`
`
`
`
`
`Opposition No.:
`
`
`Application Serial No.: 90/321,208
`
`
`Mark: YONWOO
`
`
`
`)
`)
`)
`)
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`)
`
`NOTICE OF OPPOSITION
`
`Opposer YONWOO CO., LTD. (“Opposer”), a corporation of Korea doing business at 13,
`
`Gajwa-ro 84 beon-gil, Seo-gu, Incheon, Korea 22824, believes that it will be damaged by the
`
`registration of the mark shown in Trademark Application Serial No. 90/321,208, filed by Applicant
`
`Kim Yonwoo (“Applicant”), an individual of Korea, covering a broad range of services in
`
`International Class 35, and hereby opposes the same pursuant to 15 U.S.C. § 1063 and 37 C.F.R.
`
`§ 2.101.
`
`As grounds for its opposition, Opposer alleges that:
`
`1.
`
`By the application herein opposed (Application Serial No. 90/321,208), Applicant
`
`seeks to register the mark YONWOO (“Applicant’s Mark”) on the Principal Register for the
`
`following services:
`
`Retail store services featuring cosmetics, hand sanitizers, sanitary masks, pottery,
`
`tableware, general purpose storage bins for household use, household goods; retail
`
`store services featuring plastic bins, plastic cabinets, plastic containers and plastic
`
`baskets for household or domestic use; wholesale and retail store services featuring
`
`
`
`1
`
`
`
`unprocessed plastic, namely, plastic raw materials for industrial use, plastic resins,
`
`unprocessed synthetic resins; distributorship services in the field of unprocessed
`
`plastic, namely, plastic raw materials for industrial use, plastic resins, unprocessed
`
`synthetic resins (International Class 35).
`
`2.
`
`Application Serial No. 90/321,208 was filed on November 16, 2020 and published
`
`for opposition purposes on June 1, 2021.
`
`3.
`
`Opposer filed a request for a 30-day extension of time to oppose Applicant’s Mark
`
`on June 30, 2021.
`
`4.
`
`The Trademark Trial and Appeal Board granted Opposer’s 30-day extension
`
`request, extending the deadline for Opposer to file its Notice of Opposition until July 31, 2021.
`
`Accordingly, this Notice of Opposition is timely filed.
`
`5.
`
`Opposer is a worldwide packaging company and is engaged in the business of
`
`developing, manufacturing, distributing, marketing and sale of a broad range of packaging
`
`products and related accessories thereto.
`
`6.
`
`Opposer owns trademark rights in the following mark
`
`(“Opposer’s Mark”) which it adopted, and has been using this mark since as early as 1990 as its
`
`corporate logo trademark to identify itself and its underlying goods.
`
`7.
`
`Opposer has been using the mark
`
`in commerce to identify
`
`a full line of packaging products and the related accessories thereto in International Classes 20 and
`
`21 since at least as early as 1999.
`
`
`
`- 2 -
`
`
`
`8.
`
`Opposer has been using the word element YONWOO in commerce to identify a
`
`number of packaging products and underlying services related thereto in International Classes 20
`
`and 21 since at least as early as 1996.
`
`9.
`
`Opposer is the owner of the following Principal Register registration for its
`
`corporate logo trademark:
`
`Mark
`
`App. Date
`App No.
`11/02/2015
`
`Reg. Date
`Reg. No.
`01/24/2017
`
`79/185,870
`
`5,126,443
`
`
`
`Goods
`
`“Sealing caps of glass or porcelain; bottle
`caps of glass or porcelain” (Class 20)
`
`“Soap dispensers; fitted vanity cases;
`plastic bottles sold empty; bottles for foods
`sold empty; perfume sprayers; bottles for
`beverages sold empty; bottles for medicines
`sold empty; bottles for cosmetics sold
`empty; glass ampoules for medication, sold
`empty; domestic containers for nail polish
`featuring applicators, sold empty; glass jars,
`namely carboys; carboys; glass bottles for
`cosmetics, sold empty; decanters; domestic
`containers
`for
`cosmetics
`featuring
`applicators, sold empty; powder puffs;
`powder cases being containers for cosmetic
`powders for domestic use, sold empty;
`powder compacts” (Class 21)
`
`
`
`10.
`
`Opposer’s Registration No. 5,126,443 is valid and subsisting and serves as a prima
`
`facie evidence of Opposer’s exclusive right to use Opposer’s Mark in commerce on the goods
`
`listed therein and related services thereto. (See Exhibit A.)
`
`11.
`
`Upon information and belief, Applicant has not used its applied-for mark in
`
`commerce.
`
`12.
`
`Opposer filed, used, and registered Opposer’s Mark well prior to the filing of
`
`Applicant’s Mark filed under Section 1(b).
`
`
`
`- 3 -
`
`
`
`13.
`
`The application date and the first use dates in commerce of Opposer’s Mark precede
`
`the filing date of Applicant’s intent-to-use application herein opposed, and, as such, Opposer has
`
`priority over Applicant.
`
`14.
`
`As a result of the long, extensive and continuous use of the Opposer’s Mark for
`
`over twenty (20) years by Opposer,
`
`has become known to the public as a mark
`
`exclusively associated with Opposer and Opposer’s goods and services, and Opposer therefore has
`
`acquired significant and valuable goodwill in its Mark.
`
`15.
`
`Applicant’s Mark YONWOO is identical to the dominant portion in Opposer’s
`
`Mark
`
`i.e., YONWOO.
`
`16.
`
`Applicant’s Mark so resembles Opposer’s previously registered mark as to be
`
`likely, when applied to the services set forth in Applicant’s application, to cause confusion,
`
`mistake, or deception within the meaning of Section 2(d) of the Trademark Act.
`
`17.
`
`Applicant’s services as identified in its application are the same as, overlapping
`
`with, or closely related to Opposer’s goods as used with its Mark.
`
`18.
`
`Upon information and belief, Applicant’s services will be provided to the same
`
`class of consumers and through the same trade channels as the products and services that Opposer
`
`offers under its Mark and will directly compete with Opposer’s goods (and related services)
`
`identified by Opposer’s Mark.
`
`19.
`
`The proposed use and registration of Applicant’s Mark for services in International
`
`Class 35 is likely to cause confusion with Opposer’s Mark for the same, overlapping or closely
`
`related goods and services, and is likely to cause consumers to believe, erroneously, that
`
`Applicant’s services originate with, are sponsored or approved by, Opposer or that Applicant’s
`
`services or Applicant itself are/is somehow associated with Opposer.
`
`
`
`- 4 -
`
`
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`20.
`
`Opposer believes that it will be damaged by Applicant’s proposed use and
`
`registration of its applied-for mark because such proposed use and registration will result in
`
`confusion in the marketplace and because such registration will assist and support Applicant in the
`
`confusing and misleading use of its mark that is confusingly similar to Opposer’s Mark in violation
`
`of Opposer’s rights under Section 2(d) of the Lanham Act.
`
`
`
`21.
`
`If Applicant’s Mark were to register, Opposer would be damaged as a result of this
`
`likely confusion.
`
`WHEREFORE, Opposer prays that the opposition be sustained and that registration to
`
`Applicant be refused.
`
`
`
`Date: July 16, 2021
`
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`Respectfully submitted,
`
`YONWOO CO., LTD.
`
`NOVICK, KIM & LEE, PLLC
`/Sang Ho Lee/
`Sang Ho Lee
`Gulnaz T. Donahue
`3251 Old Lee Hwy, Suite 500
`Fairfax, VA 22030
`Tel: 703-785-6116
`Attorneys for Opposer
`
`- 5 -
`
`
`
`Exhibit A
`Exhibit A
`
`
`
`6
`
`
`
`Reg. No. 5,126,443
`
`Registered Jan. 24, 2017
`
`YONWOO CO., LTD (KOREA, REPUBLIC OF CORPORATION)
`(Gajwa-dong),
`13, Gajwa-ro 84 beon-gil, Seo-gu Incheon 22824
`REPUBLIC OF KOREA
`
`Int. Cl.: 20, 21
`
`Trademark
`
`Principal Register
`
`CLASS 20: Sealing caps of glass or porcelain; bottle caps of glass or porcelain
`
`CLASS 21: Soap dispensers; fitted vanity cases; plastic bottles sold empty; bottles for foods
`sold empty; perfume sprayers; bottles for beverages sold empty; bottles for medicines sold
`empty; bottles for cosmetics sold empty; glass ampoules for medication, sold empty;
`domestic containers for nail polish featuring applicators, sold empty; glass jars, namely
`carboys; carboys; glass bottles for cosmetics, sold empty; decanters; domestic containers for
`cosmetics featuring applicators, sold empty; powder puffs; powder cases being containers for
`cosmetic powders for domestic use, sold empty; powder compacts
`
`The color(s) blue, dark-blue and gray is/are claimed as a feature of the mark.
`
`The image of pentagon formed from a rectangle cut on the upper right is blue, the word
`"YONWOO" is in dark-blue, the phrase "From Passion to Impression" is in gray.
`
`OWNER OF INTERNATIONAL REGISTRATION 1295173 DATED 11-02-2015,
`EXPIRES 11-02-2025
`
`The word "YONWOO" is a combination of the words derived from Chinese characters:
`"YON" means "to brim over", "WOO" means "a house".
`
`SER. NO. 79-185,870, FILED 11-02-2015
`MELISSA C VALLILLO, EXAMINING ATTORNEY
`
`
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