Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1031546
`01/27/2020
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`ESTTA Tracking number:
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`Filing date:
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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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`92072761
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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 email
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`Signature
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`Date
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`Defendant
`Magic Snow, LLC
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`SCOTT J MAJOR
`MILLEN WHITE ZELANO & BRANIGAN PC
`2200 CLARENDON BLVD 14TH FLOOR
`ARLINGTON, VA 22201
`UNITED STATES
`major@mwzb.com, docketing@mwzb.com
`703-243-6333
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`Motion to Dismiss - Rule 12(b)
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`Scott J. Major
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`major@mwzb.com, culver@mwzb.com, docketing@mwzb.com
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`/Scott J. Major/
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`01/27/2020
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`Attachments
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`Motion to Dismiss 1-27-20.pdf(359495 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Sulbing Co., Ltd.,
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`Magic Snow, LLC
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`Petitioner,
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`Respondent.
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`Cancellation No. 92072761
`Mark: SUL BING
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`Reg. No. 5440822
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`RESPONDENT’S COMBINED MOTION FOR SUMMARY JUDGMENT ON CLAIM
`PRECLUSION AND MOTION TO DISMISS FOR FAILURE TO STATE
`CLAIMS UPON WHICH RELIEF MAY BE GRANTED
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`The Petitioner is seeking cancellation of Reg. No. 5440822 (“the Registration”) on the
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`grounds of abandonment, likelihood of confusion and fraud. Magic Snow, LLC (“Respondent)
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`hereby moves for summary judgment under Federal Rule of Civil Procedure 56 on the ground of
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`claim preclusion with respect to the likelihood of confusion and fraud claims. Respondent also
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`moves herein to dismiss the likelihood of cancellation and fraud claims for failure to state a claim
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`pursuant to Federal Rule of Civil Procedure 12(b)(6).
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`I.
`INTRODUCTION
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`The likelihood of confusion claim asserted by Petitioner against the Registration essentially
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`is the same claim previously asserted by a party in privity with Petitioner in earlier Opposition No.
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`91226056 (“the Opposition”). The Opposition was dismissed with prejudice by the Board; thus,
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`the likelihood of confusion claim is barred by the doctrine of claim preclusion, and must be
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`dismissed. Because the fraud claim in the case at bar is predicated on the same transactional facts
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`as present in the Opposition, it also must be dismissed on the ground that it is barred by claim
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`preclusion.
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`Additionally, as to each of likelihood of confusion and fraud, Petitioner has failed to state
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`a claim upon which relief may be granted. Regarding likelihood of confusion, priority is a
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`threshold issue that must be properly pleaded and proven by any trademark owner opposing the
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`registration of a mark on the ground of a likelihood of confusion. Petitioner has failed to allege
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`prior rights in its alleged mark in the United States; thus, the likelihood of confusion claim must
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`be dismissed. The Petitioner’s fraud claim also is fatally defective on its face in that it fails to
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`plead the claim with particularity, and fails as well to allege any facts upon which it may be found
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`that the Respondent had an intent to deceive the Patent and Trademark Office. This claim
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`accordingly must be dismissed as well under Rule 12(b)(6).
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`A. Summary Judgment for Claim Preclusion
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`II.
`STATEMENT OF LAW
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`The granting of summary judgment under Fed. R. Civ. P. 56 is appropriate where the
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`pleadings, depositions, answers to interrogatories, admissions on file, together with any supporting
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`affidavits, show that there is no genuine issue of material fact in dispute, and that the moving party
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`is entitled to judgment in its favor as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317
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`(1986). “The burden on the moving party may be discharged by … pointing out … that there is
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`an absence of evidence to support the nonmoving party.” Id. at 322. “[T]he dispute about a
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`material fact is ‘genuine,’ … if the evidence is such that a reasonable jury could return a verdict
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`for the nonmoving party.” Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986).
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`"[T]he mere existence of some alleged factual dispute between the parties will not defeat
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`an otherwise properly supported motion for summary judgment; the requirement is that there is no
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`genuine issue of material fact." Id. at 247-48 (emphasis in original). The nonmoving party must
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`do more than “simply show that there is some metaphysical doubt as to the material facts.”
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`2
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`Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). “[T]he
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`nonmoving party must come forward with ‘specific facts showing that there is a genuine issue for
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`trial.’” Id. at 587 (emphasis in original, quoting Rule 56(e) pre-2007 amendment). “If the
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`evidence [favoring the nonmoving party] is merely colorable, or is not significantly probative,
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`summary judgment may be granted.” Anderson, 477 U.S. at 249-50 (citations omitted).
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`A party generally may not file a motion for summary judgment until it has made its initial
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`disclosures. Trademark Rule 2.127(e)(1). An exception to this rule is that a motion asserting
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`claim or issue preclusion may be filed by a party prior to service of initial disclosures on its
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`opponent. Id.; Zoba Int’l Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108
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`n.4 (TTAB 2011) (motion to dismiss on ground of claim preclusion considered as summary
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`judgment motion).
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`Under the doctrine of claim preclusion, “a judgment on the merits in a prior suit bars a
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`second suit involving the same parties or their privies based on the same cause of action.” Jet Inc.
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`v. Sewage Aeration Sys., 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co.
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`v. Shore, 439 U.S. 322, 326 n.5 (1979)); Internat’l Nutrition Co. v. Horphag Research, Ltd., 55
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`USPQ2d 1492, 1494 (Fed. Cir. 2000). The Federal Circuit has listed three elements necessary for
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`claim preclusion to operate against a party in the first action: (1) a final judgment on the merits by
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`a court or other tribunal of competent jurisdiction; (2) the parties in each proceeding must be the
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`same or in privity with the prior parties; and (3) the same claims must have been raised (or should
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`have been raised) in the prior action. See Internat’l Nutrition Co., 55 USPQ2d at 1494. If these
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`elements are present, the TTAB must give preclusive effect to the prior decision. See, e.g., Miller
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`Brewing Co. v. Coy International Corp., 230 USPQ 675 (TTAB 1986) (applicant precluded from
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`registering mark that was substantially similar to mark that had previously been successfully
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`opposed).
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`3
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`Regarding the first prong of the test, the Board has held that a dismissal with prejudice may
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`operate as a final judgment on the merits. Orouba Agrifoods Processing Co. v. United Food
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`Import, 97 USPQ2d 1310, 1314-15 (TTAB 2010) (granting summary judgment to registrant on
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`claim preclusion where petitioner’s prior opposition had been dismissed with prejudice for failure
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`to prosecute the case); La Fara Importing Co. v. F. Lli de Cecco di Filippo Fara S. Martino S.p.a.,
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`8 USPQ2d 1143, 1146 (TTAB 1988) (“Issue preclusion operates only as to issues actually
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`litigated, whereas claim preclusion may operate between the parties simply by virtue of the final
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`judgment.”). In Orouba, the petitioner in a cancellation proceeding had previously opposed
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`registration of the respondent’s mark on the ground of likelihood of confusion. Orouba, 97
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`USPQ2d at 1311-12. The petitioner failed to file a brief on the case, and the Board treated this
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`failure as a concession of the case, entered judgment for respondent, and dismissed the opposition
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`with prejudice. Id. at 1312.
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`In the subsequent cancellation proceeding, the petitioner again asserted a claim of
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`likelihood of confusion. Id. The Board found that this prior dismissal served as a bar to petitioner’s
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`cancellation petition, and granted summary judgment in favor of respondent. In doing so, the
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`Board stated that “even default judgments for failure to answer, or dismissals for failure to
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`prosecute, where there has been no decision on the merits, can act as a bar under the doctrine of
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`claim preclusion”. Id. at 1313 (citing Internat’l Nutrition Co., 55 USPQ2d at 1494.
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`The third prong requires that the same claims must have been raised (or should have been
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`raised) in the prior action. The doctrine of claim preclusion “has come to incorporate common
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`law concepts of merger and bar, and will thus also bar a second suit raising claims based on the
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`same set of transactional facts”. Jet Inc., 55 USPQ2d at 1856 (citing Migra v. Warren City School
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`Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984)). This bar extends not only to relitigation of claims
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`raised, but also to those that “could have been raised”, in the earlier action. Allen v. McCurry, 449
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`4
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`U.S. 90, 94 (1980). Thus, under claim preclusion, a party is barred from a “subsequent assertion
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`of the same transactional facts in the form of a different cause of action or theory of relief.” Vitaline
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`Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1173 (Fed. Cir. 1989).
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`B. Motion to Dismiss for Failure to State a Claim upon which Relief may be Granted
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`A complaint must contain “a short and plain statement of the claim showing that the pleader
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`is entitled to relief.” Fed. R. Civ. P. 8(a)(1). Thus, a motion to dismiss made pursuant to Rule
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`12(b)(6) must be granted where the complaint fails to “contain sufficient factual matter, accepted
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`as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662,
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`678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is considered
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`to be “plausible on its face” only when the plaintiff “pleads factual content that allows the court to
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`draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id.
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`The allegations must “include enough detail to give the defendant fair notice of the basis
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`for each claim.” See Bell Atl., 550 U.S. at 570. A plaintiff must allege well-pleaded factual matter
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`and more than “[t]hreadbare recitals of the elements of a cause of action, supported by mere
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`conclusory statements,” to state a claim that is plausible on its face. Ashcroft v. Iqbal, 556 U.S.
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`662, 678 (2009) (citing Bell Atl., 550 U.S. at 555); Fed. R. Civ. P. 8(a)(2). In a proceeding before
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`the Trademark Trial and Appeal Board, the Board may consider certain objective, verifiable facts
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`available from Office records under a motion to dismiss, such as the filing date, filing basis,
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`priority date, publication date and Applicant’s name in an opposed application. See Compagnie
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`Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1256 & n.8 (TTAB 2009).
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`“These are facts not subject to proof, and the Board may look to Office records for such facts to
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`determine if a party's allegations are well pleaded.” Id.
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`5
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`1. pleading likelihood of confusion
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`With respect to a claim for likelihood of confusion, Trademark Act Section 2(d) states that
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`a mark must be refused registration if it “so resembles a mark registered in the Patent and
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`Trademark Office, or a mark or trade name previously used in the United States by another and
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`not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to
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`cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d) (emphasis added).
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`Because the express wording of this provision requires prior use of a mark or trade name in the
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`United States, failure by an opposer or petitioner claiming likelihood of confusion to assert prior
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`use of its alleged mark compels dismissal of the claim.
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`Recognition in the United States is not the same as prior use in the United States. In this
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`regard, the “well-known mark” doctrine does not provide an independent basis for establishing
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`priority in inter partes proceedings before the Board. See Green Spot (Thailand) Ltd. v. Vitasoy
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`Int’l Holdings Ltd., 86 USPQ2d 1283, 1284-85 (TTAB 2008) (the fact that a mark is well-known
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`in other countries “cannot establish priority in the United States”).
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`2. pleading fraud
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`Fraud occurs in the trademark registration process occurs only “when an applicant for
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`registration knowingly makes a false, material representation of fact in connection with the
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`application with the intent to deceive the United States Patent and Trademark Office (“USPTO”),
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`thereby obtaining a registration to which it is otherwise not entitled.” Daniel J. Quirk, Inc. v.
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`Village Car Co., 120 USPQ2d 1146, 1148 (TTAB 2016) (citing In re Bose Corp., 580 F.3d 1240,
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`91 USPQ2d 1938, 1941 (Fed. Cir. 2009)). A party seeking cancellation of a trademark registration
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`on the ground of fraud in its procurement bears a heavy burden of proof. Bose, 91 USPQ2d at
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`1939, (citing W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749,
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`750 (CCPA 1967)). “[T]he very nature of the charge of fraud requires that it be proven ‘to the
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`6
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`hilt’ with clear and convincing evidence. There is no room for speculation, inference or surmise
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`and, obviously, any doubt must be resolved against the charging party.” Id. at 1939.
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`Because a false statement is one of the critical elements in proving fraud, a fraud claim that
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`does not include an allegation of a false statement is insufficient on its face. Swiss Watch Int’l v.
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`Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1746 (TTAB 2012).
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`Where a petitioner alleges fraud in execution of the declaration oath for the application
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`underlying the challenged registration on the basis that respondent knew of and failed to disclose
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`petitioner’s allegedly prior, superior rights, the petitioner must prove that (1) it was the user of the
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`same or a confusingly similar mark at the time the oath was signed; (2) it had legal rights superior
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`to the respondent’s rights at the time the respondent signed the application underlying the
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`registration; (3) the respondent knew that the petitioner’s rights in the mark were superior to the
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`respondent’s and either believed that a likelihood of confusion would result from the respondent’s
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`use of its mark or had no basis for believing otherwise; and that (4) the respondent, in failing to
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`disclose these facts to the USPTO, intended to procure a registration to which it was not entitled.
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`Daniel J. Quirk, 120 USPQ2d at 1149 (citing Qualcomm Inc. v. FLO Corp., 93 USPQ2d 1768,
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`1770 (TTAB 2010)).
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`Regarding use in commerce, the Lanham Act extends to all commerce which Congress
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`may regulate. Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986, 120 USPQ2d 1640,
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`1646 (Fed. Cir. 2016) (citing Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662,
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`18 USPQ2d 1292, 1295 (Fed. Cir. 1991)). “[O]ne need not direct goods across state lines for
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`Congress to regulate the activity under the Commerce Clause, there is likewise no such per se
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`condition for satisfying the Lanham Act’s ‘use in commerce’ requirement.” Christian Faith
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`Fellowship Church, 120 USPQ2d at 1647. Further, “[i]t is not required that such services be
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`7
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`rendered in more than one state to satisfy the use in commerce requirement.” Larry Harmon
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`Pictures Corp., 18 USPQ2d at 1295.
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`III.
`ARGUMENT
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`Petitioner has alleged three grounds for cancellation. Although the abandonment claim is
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`weak, it is not addressed in this motion. As set forth below, each of the likelihood of confusion
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`and fraud claims must be dismissed on the grounds of claim preclusion and failure to state a claim
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`upon which relief may be granted.
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`A.
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`Likelihood of Confusion
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`1.
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`claim preclusion
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`The Registration was
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`issued from underlying Application No. 86357240 (“the
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`Application”). The Application had been opposed by Sun Hee Jung in Opposition No. 91226056
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`(“the Opposition”; copies of original Notice of Opposition and Second Amended Notice of
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`Opposition (each without exhibits) at Exhibit 1). Sun Hee Jung v. Magic Snow, LLC, Opposition
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`No. 91226056 (March 1, 2018). The Opposition was dismissed with prejudice by the Board in an
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`order dated March 1, 2018 (copy of order at Exhibit 2) after the opposer failed to respond to an
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`order to show cause. Moreover, in a prior order in the Opposition issued September 20, 2017
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`(copy of order at Exhibit 3), the Board had dismissed the opposer’s likelihood of confusion and
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`non-use in commerce claims under Rule 12(b)(6).
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`The affidavit submitted as Exhibit D to the Petition for Cancellation indicates that
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`Petitioner “was founded in 2013 in Busan City by Sun Hee Jung” (¶ 3 of Affidavit of JunWon
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`Cho). All or most of the foreign registrations in Exhibit E upon which Petitioner attempts to rely
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`as a basis for establishing rights in the SULBING mark in the United States are shown as being
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`owned by Sun Hee Jung.
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`8
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`Given the Board’s holding in Orouba, it is clear that the decision in the Opposition
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`constitutes a “final judgment on the merits” for the purpose of the test for claim preclusion. It also
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`is clear from the undisputed facts as stated in Petitioner’s own affidavit and a related exhibit of
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`trademark registrations for the SULBNG mark that the parties in this proceeding are the same or
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`in privity with the prior parties in the Opposition. Finally, the same likelihood of confusion claim
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`raised in the Opposition has been asserted in this cancellation proceeding.
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`In summary, it is clear that there was a judgment on the merits in the Opposition; that
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`Petitioner in the case at bar is the same party, or at least in privity with, the opposer in the
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`Opposition; and the likelihood of confusion claim in this case arises from the same transactional
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`facts as those present in the Opposition. Respondent submits that Petitioner must be barred herein
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`from a “subsequent assertion of the same transactional facts in the form of a different cause of
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`action or theory of relief.” Vitaline Corp., 13 USPQ2d at 1173. Accordingly, claim preclusion
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`compels dismissal of the likelihood of confusion claim on summary judgment.
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`2.
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`Failure to assert priority of right
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`In a failed effort to support its likelihood of confusion claim, Petitioner provides
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`background regarding the use history of its alleged SULBING mark in Korea and in other countries
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`around the world; details social media uses of the mark; provides information on its promotion of
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`franchising opportunities under the mark; and references a portfolio of foreign trademark
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`registrations (Petition for Cancellation at ¶¶ 3-17).
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`The Application of Respondent had been filed on an intent-to-use basis under Section 1(b)
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`of the Trademark Act, 15 U.S.C. § 1051(b), on August 5, 2014. Thus, that date serves as
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`Respondent’s constructive date of first use in commerce of the SUL BING mark that is the subject
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`of the Registration.
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`9
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`The express wording of Section 2(d) requires prior use of a mark or trade name in the
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`United States in order for Petitioner to have a claim. Even viewing the allegations set forth in the
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`Petition for Cancellation in the light most favorable to Petitioner, it is beyond argument that such
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`allegations fail to show or even suggest activities in or directed to the United States under the
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`alleged SULBING mark that would have vested in Petitioner rights in the mark in this country that
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`predate August 5, 2014. In consideration of the failure by Petitioner to assert prior use of its
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`alleged mark in the United States, its likelihood of confusion claim must be dismissed under Rule
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`12(b)(6).
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`B.
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`Fraud
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`It appears that Petitioner has alleged fraud on two bases: (1) that Respondent’s
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`representative falsely declared in the Application as filed on August 5, 2014 that “no other party,
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`to the best of his knowledge and belief, has the right to use such mark in commerce either in the
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`identical form of the mark or in such near resemblance to the mark as to be likely, when used on
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`or in connection with the goods of such party, to cause confusion, mistake, or deception”; and (2)
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`that Respondent submitted with its Allegation of Use (“AAU”) as filed on May 8, 2015 only one
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`specimen of use, “offered no additional specimen to corroborate the true nature of the services
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`listed in the” Application and, as such, engaged in the “purposeful submission of the Specimen
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`that does not show use of the mark in commerce for the Registered Mark”. Petition at ¶¶ 48-60.
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`As set forth below, the claims are barred under claim preclusion, and also must be dismissed under
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`Rule 12(b)(6).
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`1.
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`Claim preclusion
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`The fraud allegations are based on the statutorily required averment in the declaration
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`supporting the Application and on the claim of use in commerce made in the AAU for the
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`Application. Both the filing of the Application and the filing and approval of the AAU by the
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`10
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`USPTO occurred prior to the filing of the Opposition, but no fraud claim was asserted in the
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`Opposition. It is beyond argument that the fraud claims arise from the same transactional facts
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`present in the Opposition. Indeed, the allegation of fraud based upon the averment in the
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`declaration for the Application is a mere variation on the failed likelihood of confusion claim
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`asserted in the Opposition (and again in this proceeding). Similarly, the fraud claim, rooted in
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`alleged defects in the specimen submitted with the AAU and a lack of use in commerce of the SUL
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`BING mark by Respondent, is a mere variation on Petitioner’s failed lack of use in commerce
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`claim set forth – and re-pleaded multiple times, to no avail -- in the Opposition.
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`Petitioner long ago waived its right to assert fraud with respect to an averment in the
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`declaration supporting the Application and in the filing of the AAU. In short, there clearly was a
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`judgment on the merits in the Opposition; Petitioner in the case at bar is the same party as, or at
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`least in privity with, the opposer in the Opposition; and the fraud claims in this case arise from the
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`same transactional facts as those present in the Opposition. Once again, Petitioner must be barred
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`herein from a “subsequent assertion of the same transactional facts in the form of a different cause
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`of action or theory of relief.” Vitaline Corp., 13 USPQ2d at 1173. Accordingly, claim preclusion
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`compels dismissal of the fraud claims on summary judgment.
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`2.
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`failure to assert a claim upon which relief may be granted
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`As an additional, independent basis for dismissal, Petitioner fails to state a claim for fraud
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`upon which relief may be granted.
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`With respect to the execution of the declaration oath for the Application, Petitioner must
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`be able to prove that (1) it was the user of the same or a confusingly similar mark at the time the
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`oath was signed; (2) it had legal rights superior to the Respondent’s rights at the time the
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`respondent signed the application underlying the registration; (3) Respondent knew that the
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`Petitioner’s rights in the mark were superior to Respondent’s and either believed that a likelihood
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`11
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`of confusion would result from the Respondent’s use of its mark or had no basis for believing
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`otherwise; and that (4) Respondent, in failing to disclose these facts to the USPTO, intended to
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`procure a registration to which it was not entitled. Daniel J. Quirk, 120 USPQ2d at 1149. As set
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`forth above, Petitioner has failed to assert, and cannot in good faith assert, prior use of its alleged
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`SULBING mark in the United States. Thus, even assuming arguendo that the first factor of the
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`test set forth in Daniel Quirk favors Petitioner, its fraud claim must fail because Petitioner cannot
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`possibly establish that it has superior legal rights for the purpose of this proceeding. This compels
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`dismissal of the claim under 12(b)(6).
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`In its second fraud claim, Petitioner appears to be alleging that Respondent’s use of the
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`SUL BING mark was limited to intrastate use at the time it filed the AAU, and that Respondent’s
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`allegation of use in commerce in the AAU was a knowingly false and material misrepresentation
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`to the USPTO. As part of its allegation, Petitioner suggests that Respondent was under an
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`obligation to submit more than one specimen of use “to corroborate the true nature of the services
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`listed in the Registration as claimed to have been advertised and rendered in more than one state”.
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`Petition at ¶ 57. This an absurd claim. Generally, only one specimen is required per International
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`Class of goods/services in an application or AAU. Trademark Manual of Examining Procedure
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`§904.01. Whether an additional specimen might be required in a particular circumstance is a
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`matter between the USPTO Examiner and the applicant, and cannot form the foundation of a basis
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`for attack in a later opposition or cancellation. Marshall Field & Co. v. Mrs. Fields Cookies, 11
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`USPQ2d 1355, 1358 (TTAB 1989) (the insufficiency of the specimens, per se, does not constitute
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`grounds for cancellation); Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d 2034,
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`2035 (TTAB 1989) (the adequacy of specimens is solely a matter of ex parte examination).
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`Moreover, Petitioner has failed to allege, nor could it in good faith allege, that
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`Respondent’s rendering of its services, in the aggregate, did not have an effect on commerce that
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`12
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`is regulable by Congress at the time of the filing of the AAU. See Christian Faith Fellowship
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`Church, 120 USPQ2d at 1646-47. As Petitioner has failed to allege facts that would permit a
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`determination that Respondent’s mark was not in use in commerce, it certainly has failed to state
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`a claim for fraud predicated upon an allegedly false claim of use in commerce. Accordingly
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`Petitioner again fails to state a claim for fraud upon which relief may be granted.
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`IV.
`CONCLUSION
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`For the reasons set forth above, Respondent submits that the Board must grant summary
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`judgment in its favor under Rule 56 as to Petitioner’s likelihood of confusion and fraud claims on
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`the ground that each is barred by claim preclusion. In addition, Respondent submits that the
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`dismissal of the likelihood of confusion and fraud claims is warranted for failure to state a claim
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`upon which relief may be granted under Rule 12(b)(6).
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`Dated: January 27, 2019
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`Respectfully Submitted,
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`By Millen White Zelano and Branigan, P.C. on behalf of
`MAGIC SNOW, LLC
`
`
`/Scott J. Major/
`_________________________________
`Michael S. Culver
`
`Scott J. Major
`Adam D. Mandell
`Millen White Zelano and Branigan, P.C.
`2200 Clarendon Blvd., Suite 1400
`Arlington, VA 22201
`Telephone: (703) 243-6333
`Fax: (703) 243-6410
`major@mwzb.com; docketing@mwzb.com
`
`Attorneys for Magic Snow, LLC
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`13
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`

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`
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`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true and correct copy of the foregoing document was filed electronically with
`the Trademark Trial and Appeal Board on January 27, 2020, and was emailed to counsel for the Petitioner at
`ckc@slepatents.com on that same date.
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`/Scott J. Major/
`_________________________________
`Scott J. Major
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`14
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`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA723247
`01/27/2016
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Sun Hee Jung
`
`01/27/2016
`
`Sajik Xi Apt., Sajik-dong102-704, 36, Sajik-ro, Dongnae-gu
`Busan, 47866
`KOREA, REPUBLIC OF
`
`Sang Ho Lee
`Novick, Kim & Lee, PLLC
`1604 Spring Hill RoadSuite 320
`Vienna, VA 22182
`UNITED STATES
`docket@nkllaw.com
`
`Applicant Information
`
`Application No
`
`86357240
`
`Publication date
`
`09/29/2015
`
`Opposition Filing
`Date
`
`Applicant
`
`01/27/2016
`
`Magic Snow, LLC
`4130 River Forth Dr.
`Fairfax, VA 22030
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`01/27/2016
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2015/01/30 First Use In Commerce: 2015/01/30
`All goods and services in the class are opposed, namely: Dessert shop and self-serve frozen yogurt
`shop services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`79157509
`
`Application Date
`
`08/20/2014
`
`Registration Date
`
`NONE
`
`Word Mark
`
`SULBING
`
`Foreign Priority
`Date
`
`08/08/2014
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "SUL" appearing above "BING" written in black
`to the upper left of a black outline of a soup bowl shaded in white with black
`Chinese characters and a red square with a white Chinese character superim-
`posed therein, all appearing to the left of 5 6-pointed black stars.
`
`Class 043. First use: First Use: 0 First Use In Commerce: 0
`Cafe services featuring red bean ice flakes (Patbingsu); restaurant services fea-
`turing red bean ice flakes (Patbingsu);restaurant services featuring sweet red-
`bean porridge; self-service restaurants; western style restaurants; snack-
`bars;restaurant services; canteen services; catering services; food and drink ca-
`tering; cafes; cafeterias; coffee house services; fast-food restaurants; Korean
`restaurant services; cafe services featuringrice cakes; restaurants; hotels; tourist
`homes
`
`U.S. Application
`No.
`
`86739365
`
`Application Date
`
`08/27/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of two Korean characters that transliterate to "SUL BING" in
`black and a red square with a white Chinese character superimposed therein
`appearing above the second Korean character in a smaller font.
`
`Class 043. First use: First Use: 0 First Use In Commerce: 0
`Cafe services featuring red bean ice flakes (Patbingsu); Restaurant services
`featuring red bean ice flakes (Patbingsu);Restaurant services featuring sweet
`redbean porridge; Self-service restaurants; Western style restaurants; Snack-
`bars;Restaurant services; Canteen services; Catering services; Food and drink
`catering; Cafes; Cafeterias; Coffee house services; Fast-food restaurants;
`Korean restaurant services; Cafe services featuringrice cakes; Restaurants; Ho-
`tels; Tourist homes
`
`U.S. Application
`No.
`
`86739405
`
`Application Date
`
`08/27/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`The mark consists of Chinese charactersthat transliterate to "XUE BING" in
`black and a red square with a white Chinesecharacter superimposed therein ap-
`pearing above the second Chinese character in a smaller font that transliterate
`to "XUE.".
`
`Class 043. First use: First Use: 0 First Use In Commerce: 0
`: Cafe services featuring red bean ice flakes (Patbingsu); Restaurant services
`featuring red bean ice flakes (Patbingsu); Restaurant services featuring sweet
`red bean porridge; Self-service restaurants; Western style restaurants; Snack-
`bars; Restaurant services; Canteen services; Catering services; Food and drink
`catering; Cafes; Cafeterias; Coffee house services; Fast-food restaurants;
`Korean restaurant services; Cafe services featuring rice cakes; Restaurants; Ho-
`tels; Tourist homes
`
`79157509#TMSN.png( bytes )
`86739365#TMSN.png( bytes )
`86739405#TMSN.png( bytes )
`LL2490040-Notice of OppositionHN4.pdf(139573 bytes )
`Exhibit1-TESS-SULBING.pdf(190229 bytes )
`Exhibit1-TESS-SULBING(KoreanCharacters).pdf(183620 bytes )
`Exhibit1-TESS-SULBING(ChineseCharacters).pdf(183942 bytes )
`Exhibit2.pdf(201276 bytes )
`Exhibit3-Domain Registration Certificate.pdf(190010 bytes )
`Exhibit4.pdf(130040 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`
`/Sang Ho Lee/
`
`Name
`
`Date
`
`Sang Ho Lee
`
`01/27/2016
`
`

`

`

`

` Opposer’s Matter No: LL2490040
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE