ESTTA Tracking number:
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`ESTTA1372590
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`Filing date:
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`07/22/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Ex Parte Appeal -
`Serial No.
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`97419034
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`Appellant
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`Hyundai Motor Company
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`Applied for mark
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`H HYUNDAI TRANSLEAD TRAILER FINANCE
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`Correspondence
`address
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`Submission
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`Attachments
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`CHARLES T. J. WEIGELL
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 W. 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: weigell-docket@fzlz.com
`212-813-5900
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`Request for remand/amendment
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`H Logo and Hyundai Translead Trailer Finance in Class 36 - Request fo r Re-
`mand.pdf(87741 bytes )
`H Logo and Hyundai Translead Trailer Finance in Class 36 - Request fo r Re-
`consideration Remarks.pdf(144605 bytes )
`H Logo and Hyundai Translead Trailer Finance in Class 36 - Exhibit A.
`pdf(886910 bytes )
`H Logo and Hyundai Translead Trailer Finance in Class 36 - Declaratio n in
`Support of Unity of Control.pdf(84255 bytes )
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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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`Charles Weigell
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`cweigell@fzlz.com
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`/ctw/
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`07/22/2024
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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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`Applicant:
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`Serial No:
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`HYUNDAI MOTOR COMPANY
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`97419034
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`Mark:
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`Filed: May 19th, 2022
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`Our Ref:
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`HUND 2308809
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`REQUEST FOR REMAND TO EXAMINING ATTORNEY FOR CONSIDERATION OF
`COEXISTENCE AGREEMENT AND UNITY OF CONTROL DECLARATION AND
`REQUEST FOR SUSPENSION OF APPEAL
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`Pursuant to TBMP Section 1209.04, Applicant HYUNDAI MOTOR COMPANY,
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`through its undersigned counsel, requests remand of the Application referenced above to the
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`jurisdiction of the assigned Examining Attorney and suspension of the current appeal, including
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`suspension of the time for Applicant to file its main brief, due currently on July 23rd, 2024.
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`Applicant requests remand and suspension of the appeal so that the Examining Attorney
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`can consider the appended Request for Reconsideration, along with a Coexistence Agreement
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`comprising a consent to registration signed by both Applicant and the owner of cited U.S.
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`Registration Nos. 4519889, 4519890, and 4498717.
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`As to cited U.S. Registration Nos. 2562908, 4040582, 4920297, 4920298, 5985297,
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`5207013, 5207014, and 6739792, Applicant submits a signed Declaration in Support of Unity of
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`Control attesting to the unity of control over the owners of these registrations by Applicant such
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`that no likelihood of confusion would result from registration of Applicant’s mark.
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`Good cause for the remand is present as the consent to registration embodied in the
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`appended Coexistence Agreement and the Declaration in Support of Unity of Control both
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`comprise new evidence not heretofore available which Applicant believes will ultimately resolve
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`the refusal to register under Trademark Act §2(d), now on appeal.
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`In further support of its request, Applicant directs the Board to TBMP Section 1207.02 to
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`allow for submission of evidence on appeal where such evidence was not previously available.
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`This is the case with the Declaration in Support of Unity of Control, obtained only very recently
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`after Applicant’s internal review and consideration by its offices in the Republic of Korea. As to
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`the Coexistence Agreement, the TBMP section states that “because a consent agreement offered
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`in response to a refusal to register under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d),
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`is inherently difficult and time consuming to obtain, and may be highly persuasive of
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`registrability, the Board will grant a request to suspend and remand for consideration of a
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`consent agreement if the request, accompanied by the consent agreement, is filed at any time
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`prior to the rendering of the Board’s final decision on the appeal.” See also: In re N.A.D., Inc.,
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`224 USPQ 969, 970 (Fed. Cir. 1985). In sum, Applicant submits its request is proper, is based
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`on recently obtained new evidence, and is presented early in the appeal in advance of any
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`briefing.
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`In view of the above, Applicant requests favorable consideration and granting of its
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`request for remand and suspension.
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`Dated: New York, New York
`July 22nd, 2024
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`Respectfully submitted,
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`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
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`By:
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`/ctw/
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` Charles T.J. Weigell
`Attorneys for Applicant
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`(212) 813-8239
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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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`Applicant:
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`Serial No:
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`HYUNDAI MOTOR COMPANY
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`97419034
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`Mark:
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`Filed: May 19th, 2022
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`Our Ref:
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`HUND 2308809
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`REQUEST FOR RECONSIDERATION
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`The above-named Applicant submits herewith a copy of a signed Coexistence Agreement
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`(see copy at Exhibit A) comprising a consent to registration, and requests reconsideration of the
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`refusal under Lanham Act Section 2(d) based on an asserted likelihood of confusion with the
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`marks in U.S. Registration Nos 4519889, 4519890, and 4498717.
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`Applicant also submits a Declaration in Support of Unity of Control as to the refusal
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`under Lanham Act Section 2(d) based on an asserted likelihood of confusion with the marks in
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`U.S. Registration Nos. 2562908, 4040582, 4920297, 4920298, 5985297, 6739792, 5207013, and
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`5207014.
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`The Coexistence Agreement is signed by the current Applicant and by the owner of the
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`referenced cited registrations. The Agreement states in part that: “[t]he parties are confident that
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`the marks can co-exist in the United States without a likelihood of marketplace confusion.”
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`The parties further state their commitment to cooperate in the unlikely event that instances of
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`actual confusion arise.
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`Applicant submits that the Coexistence Agreement provides uncontroverted evidence that
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`there is no likelihood of confusion between the marks and goods or services at issue.
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`Coexistence agreements generally are entitled to great evidentiary weight in a likelihood
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`of confusion analysis. As the predecessor court to the Court of Appeals for the Federal Circuit
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`has stated with respect to consent agreements:
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`When those most familiar with use in the marketplace and most interested in
`precluding confusion enter agreements designed to avoid it, the scales of evidence
`are clearly tilted. It is at least difficult to maintain a subjective view that
`confusion will occur when those directly concerned say it won’t. A mere
`assumption that confusion is likely will rarely prevail against uncontroverted
`evidence from those on the firing line that it is not.
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`In re E.I. du Pont de Nemours & Co., 177 USPQ 563, at 568 (CCPA, 1973).
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`As such, the Agreement submitted herewith rebuts the asserted refusal to register. It is
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`dispositive here as demonstrating the view of the parties that their respective marks can co-exist
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`peacefully, entitling the Application to proceed to approval. Indeed, the parties’ views reflected
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`by the Coexistence Agreement should be afforded great deference as:
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`…the role of the PTO is not in denying registration if it feels there is, by its
`independent determination, any likelihood of confusion of any kind as between the
`mark sought to be registered and the prior registration, without regard to the
`desires, opinions, or agreements of the owner of the prior registration.
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`In re Four Seasons Hotel, Ltd. 26 USPQ2d, 1071, at 1072 (Fed. Cir. 1993) (Emphasis
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`original, stating also that insofar it believes its role is to second-guess the conclusions of those
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`most familiar with the marketplace, the USPTO is “like a cat watching the wrong rat hole”).
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`As to the Declaration in Support of Unity of Control, this demonstrates a unity of source
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`between the Applicant and the owner of the referenced cited registrations such that no likelihood
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`of confusion would ensue from registration of Applicant’s mark. as per TMEP Section
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`1201.07(a), where an applicant is related in ownership to a company or companies that own cited
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`registered marks that are asserted to give rise to a likelihood of confusion, the examining
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`attorney must consider whether, in view of all the circumstances, and despite the similarity of
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`the marks and the goods/services on which they are used, the Applicant and the cited owners
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`constitute a single commercial source. In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274,
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`276 (Fed. Cir. 1986); cf. In re Wacker Neuson SE,97 USPQ2d 1408 (TTAB 2010) (finding that
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`the parties were related and that the goods and services emanated from a single source).
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`Applicant’s Declaration states that it owns all of the parent company which controls
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`Hyundai Capital America, owner of cited U.S. Reg. Nos. 2562908, 4920297, 4920298, 5985297,
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`5207013, and 5207014. This parent company also controls Hyundai Capital Services, Inc. owner
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`of cited U.S. Reg. Nos. 4040582 and 6739792. The declaration is sufficient, given no
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`contradictory evidence in the record, to establish that control over the use of all the marks cited
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`and the instant mark applied for here in the United States reside in a single source. In re Wella
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`A.G., 5 USPQ2d 1359, 1361 (TTAB 1987), rev’d on other grounds, 858 F.2d 725, 8 USPQ2d
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`1365 (Fed. Cir. 1988). The Declaration therefore obviates the refusal on likelihood of confusion
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`grounds.
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`In view of the submitted Coexistence Agreement and Declaration the comments above
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`and the arguments to date, Applicant respectfully requests that the instant refusal to register be
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`reconsidered and withdrawn, and that the Application be approved for publication.
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`Dated: New York, New York
`July 22nd, 2024
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`Respectfully submitted,
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`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
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`By: /ctw/
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` Charles T.J. Weigell
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`Attorneys for Applicant
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`(212) 813-8239
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`Exhibit A
`Exhibit A
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`CONSENT AGREEMENT
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`Consent Agreement by and between Hyundai Marine & Fire Insurance Co., Ltd., a
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`corporation of the Republic of Korea located and doing business at 178 Sejongno, Jongno-gu
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`Seoul, Republic of Korea, (“Hyundai Marine”) and Hyundai Motor Company, a corporation of
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`the Republic of Korea located and doing business at 12, Heolleung-ro, Seocho-gu Seoul 06797,
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`Republic of Korea (“Hyundai Motor”).
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`WHEREAS, Hyundai Motor is the owner of the U.S. Trademark Application Serial No
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`/X>jHYUnDRI
`'^Tf_TRANSLEAD
`97419034 for the mark trailer finance, which covers the following services, as originally filed:
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`“banking services for trailer financing” in Class 36; and
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`WHEREAS, Hyundai Marine is the owner of U.S. Registration Nos. 4519889, 4519890
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`and 4498717 for the following marks:
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`U.S. Registration No. 4519889 - HYUNDAI MARINE & FIRE INSURANCE which covers:
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`“Securities brokerage services; Loan financing services; Insurance services, namely, writing
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`property and casualty insurance; Life insurance underwriting services; Guarantee assurance
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`underwriting services; Re-insurance underwriting services in the field of automobiles, health, life
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`and fire; Insurance agency services; Insurance brokerage services; underwriting extended
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`warranty contracts in the field of automobiles; Insurance consulting services in the field of
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`automobiles, health, life and fire; Providing information in insurance matters; Appraisals for
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`insurance claims of personal property and real estate; Insurance administration services, namely,
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`assisting others with adjusting insurance claims; Insurance actuarial services; Industrial accident
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`insurance underwriting services for personal injuries and injury to real property; insurance
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`underwriting in the field of pension plans; Product liability insurance underwriting services; Fire
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`insurance underwriting services; Real estate leasing services” in Class 36; ,
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`U.S. Registration No. 4519890 - HYUNDAI INSURANCE which covers:
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`“Securities brokerage services; Loan financing services; Insurance services, namely, writing
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`property and casualty insurance; Life insurance underwriting services; Guarantee assurance
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`underwriting services; Re-insurance underwriting services in the field of automobiles, health, life
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`and fire; Insurance agency services; Insurance brokerage services; underwriting extended
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`warranty contracts in the field of automobiles; Insurance consulting services in the field of
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`automobiles, health, life and fire; Providing information in insurance matters; Appraisals for
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`

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`insurance claims of personal property and real estate; Insurance administration services, namely,
`assisting others with adjusting insurance claims; Insurance actuarial services; Industrial accident
`insurance underwriting services for personal injuries and injury to real property; insurance
`underwriting in the field of pension plans; Product liability insurance underwriting services; Fire
`insurance underwriting services; Real estate leasing services” in Class 36;
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`U.S. Registration No. 4498717- H H>'undai Insurance
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`which covers:
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`“Securities brokerage services; Loan financing services; Insurance services, namely, writing
`property and casualty insurance; Life insurance underwriting services; Guarantee assurance
`underwriting services; Re-insurance underwriting services in the field of automobiles, health, life
`and fire; Insurance agency services; Insurance brokerage services; underwriting extended
`warranty contracts in the field of automobiles; Insurance consulting services in the field of
`automobiles, health, life and fire; Providing information in insurance matters; Appraisals for
`insurance claims of personal property and real estate; Insurance administration services, namely,
`assisting others with adjusting insurance claims; Insurance actuarial services; Industrial accident
`insurance underwriting services for personal injuries and injury to real property; insurance
`underwriting in the field of pension plans; Product liability insurance underwriting services; Fire
`insurance underwriting services; Real estate leasing services” in Class 36;
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`<X^HYUnORI
`translead
`WHEREAS, registration of Hyundai Motor’s application for trailer finance, U.S. Serial
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`No. 97419034, was refused on the basis of possible likelihood of confusion with U.S.
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`Registration Nos. 4519889, 4519890 and 4498717;
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`WHEREAS, both the predecessor to Hyundai Marine and Hyundai Motor were
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`established out of the original Hyundai Group conglomerate in the Republic of South Korea; and
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`WHEREAS, the parties wish to go on record as consenting to the use and registration of
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`HYUHDRI
`TRANSLEAD
`the trailer finance mark by Hyundai Motor for the services identified in U.S. Trademark
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`Application Serial No. 97419034;
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`NOW, THEREFORE, the parties agree and acknowledge the following:
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`1 . The parties acknowledge that the predecessor company to Hyundai Marine was
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`originally and historically affiliated with Hyundai Motor and each arose from the
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`Hyundai Group, a conglomerate in the Republic of Korea that established use of the
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`name and mark HYUNDAI.
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`2.
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`Although Hyundai Marine is the owner of prior U.S. Registration Nos. 4519889,
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`4519890 and 4498717 for the marks HYUNDAI MARINE & FIRE INSURANCE,
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`HYUNDAI INSURAANCE, and
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`Hyundai Insurance
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`for services in Class 36,
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`zOsHYUnORI
`TRANSLEAD
`and the Hyundai Motor application for trailer finance also covers services in Class
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`36 and includes the term HYUNDAI, by virtue of the former corporate origin of these
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`owners and their common membership among the family of HYUNDAI companies
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`that grew directly out of the former Hyundai Group conglomerate in the Republic of
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`Korea and their continued, common and co-existent use of HYUNDAI in the U.S.
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`market for years, when the public sees the use of HYUNDAI in connection with these
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`respective owners and their respective goods and services, they associate HYUNDAI
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`with companies who have the same historical origin with “Hyundai Group”.
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`3. The parties are confident that the marks can coexist in the United States without a
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`likelihood of marketplace confusion. Hyundai Marine therefore expressly consents
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`/X^HYUnORI
`TRANSLEAD
`to the use and registration by Hyundai Motors of the mark trailer finance as set forth
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`Application Serial No. 97419034 in respect of all the services listed therein.
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`4. Having considered the matter, and in the context of their historical relationship and
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`common origins as Hyundai companies, the parties also agree that there are sufficient
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`differences in the respective parties’ marks, the goods in connection with which they
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`are either used or intended to be used, and the channels of trade for such goods, to
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`avoid confusion as to either source of origin or sponsorship. Moreover, the parties’
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`

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`respective goods and services involve significant cost and, as a result, the relevant
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`buyers are informed and deliberate in their purchasing decisions.
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`5. Given the aforementioned circumstances and factors, the parties’ believe that the
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`potential for any marketplace or consumer confusion is de minimis. To the extent that
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`confusion might occur, the parties belileve that sufficient safeguards exist to correct
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`any situation that could possibly give rise to confusion in the marketing of their
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`respective goods.
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`6. The parties agree to sign any additional documents necessary to effectuate the intent
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`of this Agreement.
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`7.
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`In the unlikely event of confusion, the parties will take all necessary steps to prevent
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`its recurrence.
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`8. The Agreement shall be applicable worldwide. Any dispute under this Agreement
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`shall be adjudicated under the laws of the Republic of Korea.
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`Hyundai Marine & Fire Insurance Co.,
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`HYUNDAI MOTOR COMPANY
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`Ltd.
`102-81-32035^
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`By:
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`»
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`IT
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`afl
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`Name:
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`Sung-Jae LEE
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`163^
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`By:
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`/ Jae-Hoon CHANG /
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`Name:
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`Jae-Hoon CHANG
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`Title:
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`CEO
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`Title:
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`President
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`Date:
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`July 18, 2024
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`Date:
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`July 1, 2024
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`Applicant:
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`Serial No:
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`Filed:
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`Mark:
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`Our Ref:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Hyundai Motor Company
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`97419034
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`May 19, 2022
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`HUND 2308809
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`Joseph McCarthy
`Examining Attorney
`Law Office 127
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`DECLARATION IN SUPPORT OF UNITY OF CONTROL
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`I, _Jae-Hoon CHANG_, being the undersigned officer of Applicant Hyundai Motor
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`Company, having personal knowledge of the facts attested to below and being duly authorized to
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`sign this declaration, state as follows:
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`1)
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`The owner of the cited registered marks, subject of U.S. Reg. Nos. 2562908,
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`4920297, 4920298, 5985297, 5207013, and 5207014, Hyundai Capital America, is directly
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`majority controlled by Hyundai Motor America.
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`2)
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`The owner of the cited registered marks, subject of U.S. Reg. Nos. 4040582 and
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`6739792, Hyundai Capital Services, Inc., is directly majority controlled by Hyundai Motor
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`Company.
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`3)
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`4)
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`Hyundai Motor America is 100% owned by Hyundai Motor Company.
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`Therefore, Hyundai Capital America, one of the owners of the cited marks, and
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`Applicant Hyundai Motor Company, which fully owns Hyundai Motor America, which holds
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`more than half of the shares of Hyundai Capital America, are affiliates of the same corporate
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`group, HYUNDAI MOTOR GROUP.
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`{F5357196.1 }
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`5)
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`Hyundai Capital Services, Inc., another owner of the cited marks, and Hyundai
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`Motor Company, which holds more than half of the shares of Hyundai Capital Services, Inc., are
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`affiliates of the same corporate group, HYUNDAI MOTOR GROUP.
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`6)
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`As such, there is a clear and direct unity of control due to a single parent company
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`and the mentioned corporations constituting a single source of origin such that there would be no
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`likelihood of confusion.
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`All statements made herein of my own knowledge are true and all statements made on
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`information and belief are believed to be true, and further that these statements were made with
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`the knowledge that willful false statements and the like so made are punishable by fine or
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`imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such
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`willful false statements may jeopardize the validity of the application of any registration
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`resulting therefrom.
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`Dated:
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`_June 26, 2024___
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`{F5357196.1 }
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`- 2 -
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`Respectfully submitted,
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`Hyundai Motor Company
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`By: :____/ Jae-Hoon CHANG /________
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`Name: ___Jae-Hoon CHANG______
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`Title: ____President______________
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`12, Heolleung-Ro, Seocho-Gu
`Seoul 06797, Republic of Korea
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