Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1121443 Filing date: 03/18/2021

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 IDParts LLC Entity limited liability company Citizenship Massachusetts Address 3 POND PARK ROAD HINGHAM, MA 02043 UNITED STATES

Attorney informa- JOHN L. STRAND tion WOLF, GREENFIELD & SACKS, P.C. 600 ATLANTIC AVENUE BOSTON, MA 02210 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], azstrade- [email protected] 617-646-8000

Docket Number I05545000200 Applicant Information

Application No. 90176960 Publication date 02/16/2021 Opposition Filing 03/18/2021 Opposition Peri- 03/18/2021 Date od Ends Applicant Onyx Enterprises Int'l Corp. 1 CORPORATE DRIVE 1 CORPORATE DRIVE, SUITE C CRANBURY, NJ 08512 UNITED STATES 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: On-line retail store services featuringa wide variety of consumer goods of others Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Mark Cited by Opposer as Basis for Opposition

U.S. Application/ Registra- NONE Application Date NONE tion No. Registration Date NONE Word Mark IDPARTS Goods/Services online retail store services featuring automotive parts and accessor- ies, with a specialization in diesel automotive parts and accessories

Related Proceed- Onyx Enters. Int'l, Corp. v. IDParts LLC, No. 20-cv- 11253 (D. Mass., filed June ings 30, 2020)

Attachments I0554.50002US00 Notice of Opposition.pdf(222988 bytes ) Exhibit A- Second Amended Complaint_Part1.pdf(5587976 bytes ) Exhibit A- Second Amended Complaint_Part2.pdf(6131444 bytes ) Exhibit A- Second Amended Complaint_Part3.pdf(5904493 bytes ) Exhibit B- Answer and Counterclaim.pdf(2414608 bytes )

Signature /John L. Strand/ Name John L. Strand Date 03/18/2021 DOCKET NO.: I0554.50002US00

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

IDParts LLC,

Opposer, Mark: v. Serial No. 90/176960 Onyx Enterprises Int'l Corp., Opposition No. ______

Applicant.

NOTICE OF OPPOSITION

IDParts LLC (“Opposer”) believes it would be damaged by registration of the mark

depicted in Application Serial No. 90/176,960 filed by Onyx Enterprises Int'l Corp. (“Onyx”), which application was published for opposition in the Official Gazette on February 16, 2021, and

hereby opposes the same under the provisions of Section 13 of the Trademark Act of 1946, 15

U.S.C. § 1063.

The grounds for this Opposition are as follows:

1. Opposer is a limited liability company organized and existing under the laws of

Massachusetts and has a place of business at 3 Pond Park Road, Hingham, MA 02043.

2. Onyx was a corporation organized and existing under the laws of New Jersey and

had a place of business at 1 Corporate Drive, Suite C, Cranbury, New Jersey 08512.

3. Upon information and belief, Onyx Enterprises Int’l, Corp. ceased to exist as of on or about November 20, 2020. Nonetheless and without a concession or waiver on the issue of

1 ownership or related issues, unless otherwise noted, throughout this Notice of Opposition,

“Applicant” refers to both Onyx and/or any of its purported successors-in-interest, if any.

4. Applicant seeks to register the mark (Serial No. 90/176960) for “on- line retail store services featuring a wide variety of consumer goods of others” in International

Class 35 (the “’960 Application”).

5. The ’960 Application was filed on September 13, 2020 under an intent-to-use filing basis pursuant to Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).

6. Opposer is the owner of all right, title and interest in and to the mark IDPARTS for online retail store services featuring automotive parts and accessories, with a specialization in diesel automotive parts and accessories.

7. Since at least as early as January 2010, Opposer has made continuous, extensive, and substantially exclusive use in interstate commerce of the mark IDPARTS in connection with at least online retail store services featuring automotive parts and accessories and has established common law rights in the mark IDPARTS, by continuously using the mark in connection with at least online retail store services featuring automotive parts and accessories.

8. Opposer has made substantial investments in advertising and promoting goods and services sold under the IDPARTS mark.

9. The IDPARTS mark has become well known as a distinctive indicator of the origin of Opposer’s goods and services and as a valuable symbol of Opposer’s goodwill.

10. On June 30, 2020, Applicant filed a complaint against Opposer, bringing an action for damages and injunctive relief for at least unfair competition, dilution, and pursuant to the Lanham Act (15 U.S.C. § 1051, et seq.), and other related state

2 claims. See Onyx Enters. Int’l, Corp. v. IDParts LLC, No. 20-cv-11253 (D. Mass., filed June 30,

2020) (“District of Massachusetts Case”).

11. On August 14, 2020, Applicant filed an amended complaint in the District of

Massachusetts Case omitting the dilution and cybersquatting causes of action.

12. On January 22, 2021, Applicant filed a second amended complaint in the District

of Massachusetts Case naming the Plaintiff as PARTS iD, LLC and asserting an additional cause

of action under 15 U.S.C. § 1114.

13. A true and accurate copy of Applicant’s Second Amended Complaint in the

District of Massachusetts Case is filed as Exhibit A to this Opposition.

14. On February 5, 2021, Opposer filed an answer and counterclaim in the District of

Massachusetts Case asserting that a likelihood of confusion exists between the services offered by Applicant’s alleged successor-in-interest and Opposer under their respective PARTS ID and

IDPARTS marks.

15. A true and accurate copy of Opposer’s answer and counterclaim in the District of

Massachusetts Case are filed as Exhibit B to this Opposition.

16. Upon information and belief, Applicant had actual knowledge of Opposer and

Opposer’s IDPARTS mark when it filed its application.

17. Upon information and belief, Applicant adopted its alleged mark with a deliberate

intent to cause confusion among purchasers.

18. Upon information and belief, Applicant adopted its alleged mark with the

deliberate intent to create the false impression that Applicant or its products and services are

licensed, endorsed or approved by Opposer.

3 19. Upon information and belief, Applicant adopted its alleged mark with a deliberate

intent to take advantage of the goodwill established by Opposer through many years of

advertising and selling goods and services under the IDPARTS mark.

20. Upon seeing Applicant’s mark, members of the public are likely to be confused,

mistaken, or misled into believing that Applicant has obtained a license from Opposer or that

Applicant is otherwise affiliated or connected with, or sponsored by Opposer, or that Opposer

has endorsed Applicant’s goods and services.

COUNT I (Likelihood of Confusion Under 15 U.S.C. § 1052(d))

21. Opposer incorporates paragraphs 1 through 20 by reference.

22. Notwithstanding the prior rights of Opposer in the IDPARTS mark described above, Applicant filed the ’960 Application on September 13, 2020 to register the

mark.

23. The services recited in the ’960 Application overlap and are legally equivalent to the services offered by Opposer under its IDPARTS mark.

24. Applicant’s mark is confusingly similar to Opposer’s IDPARTS mark, for both marks consist of the terms “PARTS” and “ID,” with the order of the words simply reversed.

25. In light of the relatedness of the services and similarities in appearance, sound, connotation, and commercial impression between the marks, consumers are likely to believe that

Applicant’s services offered under its mark emanate from—or are licensed or otherwise approved by—Opposer, when that is not the case. Consequently, there exists a likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Any

4 dissatisfaction with Applicant’s services will reflect upon and irreparably damage the reputation

and goodwill of Opposer as embodied in its IDPARTS mark.

26. Applicant adopted an imitation of the IDPARTS mark in bad faith and with an

intent to cause confusion in order to induce purchasers to believe that Applicant’s goods and

services originate with or are licensed or endorsed by Opposer.

27. If Applicant is granted registration of the ’960 Application, Applicant would

obtain a prima facie exclusive right to use for the services identified in the ’960

Application, which would impair Opposer’s continued and lawful use of its mark.

********

WHEREFORE, Opposer believes it will be damaged by registration of Applicant’s mark,

and pray that this Opposition be sustained, that Application Serial No. 90/176960 be rejected,

and the mark applied for therein be refused registration.

Respectfully submitted,

Date: March 18, 2021 By /John L. Strand/ John L. Strand Douglas R. Wolf Amanda B. Slade WOLF, GREENFIELD & SACKS, P.C. 600 Atlantic Ave. Boston, MA 02210 617-646-8000 [email protected] [email protected] [email protected]

Attorneys for Opposer IDParts LLC

5

EXHIBIT A

Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 1 of 38

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

PARTS ID, LLC, a Delaware limited liability company, Case No. 1:20-cv-11253 Plaintiff, SECOND AMENDED COMPLAINT v. FOR DAMAGES AND INJUNCTIVE RELIEF—LEAVE ID PARTS LLC, a Massachusetts corporation, TO FILE GRANTED ON 1/19/2021 Defendant. JURY TRIAL DEMANDED

Plaintiff PARTS iD, LLC (“Plaintiff” or “PARTS iD”), formerly known as Onyx

Enterprises International, Corp. (“Onyx”), by and through undersigned counsel, hereby brings suit against Defendant ID Parts LLC (“Defendant” or “ID Parts”) and alleges as follows:

NATURE OF ACTION

1. This case involves the Defendant’s infringement of PARTS iD’s and most prominent house mark, the iD® Mark, as PARTS iD has used in connection with the sale of automotive parts and accessories since 2009.

2. ID Parts has been selling automotive parts and accessories on the website www.idparts.com. ID Parts has been copying PARTS iD’s trademark in order to benefit from the national name recognition and good will associated with PARTS iD’s signature iD® brand, to mislead consumers into believing that www.idparts.com is associated with Plaintiff’s iD® brand, and ultimately to divert market share away from PARTS iD. Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 2 of 38

3. Defendant’s infringement of PARTS iD’s distinctive signature iD® Mark and its unauthorized use of its likeness encroach upon any reasonable notion of fair competition. PARTS iD thus brings this action for damages and injunctive relief for , unfair competition, and false designation of origin pursuant to the Lanham Act (15 U.S.C. § 1051, et seq.), and trademark infringement, unfair competition, and deceptive trade practices pursuant to the common law of Massachusetts and G.L.c. 93(a) § 2.

PARTIES

4. Onyx was a New Jersey corporation having a principal place of business at 1

Corporate Drive, Suite C, Cranbury New Jersey 08512.

5. PARTS iD, LLC is a Delaware limited liability company having a principal place of business at 1 Corporate Drive, Suite C, Cranbury New Jersey 08512. PARTS iD merged with and acquired Onyx in November 2020. In so doing, PARTS iD acquired the iD® Mark and all associated rights, privileges, and goodwill developed by Onyx as summarized in this Second

Amended Complaint.

6. Upon information and belief, ID Parts is a Massachusetts corporation having a principal place of business at 1257 Franklin Street, Duxbury, MA 023320. Upon information and belief, ID Parts owns, operates, and controls the website www.idparts.com.

JURISDICTION & VENUE

7. This Court has subject matter jurisdiction over the asserted claims under 15 U.S.C.

§ 1121, 28 U.S.C. §§ 1331, 1338(a), and 1338(b).

8. This Court has supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a) over

PARTS iD’s state and common law claims because those claims are so related to the federal claims that they form part of the same case or controversy.

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9. This Court has personal jurisdiction over ID Parts, a Massachusetts limited liability company, as it has committed tortious acts in this District, maintains a website accessible in this

District, and has and will continue to transact substantial business in this District. ID Parts also regularly solicits business from, does business with, and derives value from goods and services provided to consumers in this District.

10. Venue is proper within this District pursuant to 28 U.S.C. § 1391(b) and (c) and under 28 U.S.C. § 1400(b) because ID Parts resides within this Judicial District. Venue is also proper pursuant to 28 U.S.C. § 1391(b)(2) because a substantial part of the property that is the subject of the claims contained herein is located within this District.

FACTUAL ALLEGATIONS

CREATION, GROWTH, AND SCOPE OF PLAINTIFF’S iD® MARK

11. As early as 2008, Onyx deployed its iD® Mark to brand its eCommerce platform designed to sell complex product portfolios. For more than a decade, Onyx has been singularly focused upon the creation of a unique, comprehensive, and reliable online customer experience for those seeking to purchase automotive products, both original equipment (“OE”) and aftermarket

(“AM”) parts. By reliably connecting consumers to millions of products from thousands of ,

Onyx drove consumer confidence in the purchase of automotive products online and established the iD® brand as the leader in online automotive product sales.

12. Onyx was, and PARTS iD remains, a pure online retailer. When formed, the market for the online purchase of automotive parts was minimal. In 2008, Onyx launched its first iD® branded platform, www.CARiD.com, and funded a consistent and persistent effort to compete with traditional channels for the sale of automotive products by creating demand for products online.

3 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 4 of 38

(Screenshot from The Way Back Machine, December 2009) 13. Onyx deployed the following iD® Marks on its eCommerce platform in the first year of operation:

4 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 5 of 38

14. To protect the above iD® Mark, Onyx sought and was granted trademark protection for CARID as detailed in Trademark Registration No. 3711746.

15. To compete with traditional automotive retailers and create consumer confidence for the online purchase of automotive products, Onyx spent hundreds of millions of dollars constructing a proprietary platform coupled with a comprehensive product catalog featuring millions of OE/AM products from thousands of brands. Onyx integrated customer service and consumer education components to create a comprehensive online experience that customers enjoy and companies respect. PARTS iD has continued this operation following the merger.

16. Through this effort, Onyx has grown the iD® brand into one of the largest online retailers of automotive products in the United States. At the time it was formed in 2008, online traffic for the sale of automotive products was virtually non-existent, as depicted below. Today,

Onyx receives over 10 million visitors to its site each month, nearly three times its closest online competitor, as depicted below. PARTS iD continues to enjoy and expand these results following the merger.

5 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 6 of 38

17. Figure 1 is a graphical representation from a marketing analytics firm of monthly clicks directed at some of the top pure online retailers from 2006 through the present:

FIGURE 1

18. Figure 2 is a graphical representation of the number of monthly clicks directed at some of the top pure online retailers from 2015 through the present:

FIGURE 2

19. After Onyx launched its iD® platform in 2008, traditional automotive product retailers such as AutoZone, Advanced Auto Parts, O’Reilly Auto/Pep Boys, and NAPA started to heavily invest in eCommerce. Specialty brick and mortar retailers, such as 4 Wheel Parts and

6 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 7 of 38

others, also followed suit. Figure 3 is a graphical representation of the performance, expressed in terms of monthly clicks, of the top six traditional retailers’ domains from 2006 through the present.

FIGURE 3 20. Through its concerted campaign to drive its iD® Mark to the center of consumer purchasing for automotive parts and accessories, Onyx has outperformed all traditional retailers online other than AutoZone:

FIGURE 4 21. Figure 4 is a graphical representation of the number of monthly clicks on the indicated domains from 2015 through the present.

7 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 8 of 38

22. To achieve these results, Onyx committed substantial resources to ensure that it would perform relative to its competition, both traditional retailers and the field of pure eCommerce retailers. Onyx has spent nearly $200 million in marketing its brand. PARTS iD continues this capital expenditure following the merger.

23. To maintain its position relative to eCommerce and traditional retailers, Onyx has similarly outspent the competition to drive traffic to its iD® Branded platforms, a trend that continues following its merger with PARTS iD.

24. As a result of its efforts, PARTS iD’s online presence exceeds the profiles of its top online competitors:

FIGURE 5

25. Like the end consumer, most automotive product manufacturers, both OE and AM, associate the iD® brand with PARTS iD and its unique, comprehensive, and reliable eCommerce platform. PARTS iD works with manufacturers and distributors of OE and AM products (“the

Brands”) to build educational tools and product pages to connect the right customer, with the right

8 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 9 of 38

Brand, for the right car. The Brands associate the iD® Mark with quality service and professional product placement.

26. The substantial brand power behind the iD® Mark that has been developed for over a decade is reflected in a consistent commercial impression: When consumers and/or Brands see the iD® Mark with its unique properties and design elements, they know to expect quality, service, and professionalism, deriving from a very specific and distinguishable source.

27. Leveraging its famous mark and the goodwill customers associate with the iD® brand, Onyx expanded its suite of eCommerce platforms into other complex market product portfolios, a suite that PARTS iD continues to advance following the merger.

28. For example, Onyx developed and released its MOTORCYCLEiD® mark in July

2018. Similar to CARiD®, MOTORCYCLEiD® conveys to customers that they can come to

Onyx—and MOTORCYCLEiD®—to identify the unique parts and pieces that are suited for that customer’s particular motorcycle.

29. For example, Onyx developed and released its TRUCKiD® mark in July 2018.

Similar to CARiD®, TRUCKiD® conveys to customers that they can come to Onyx—and

9 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 10 of 38

TRUCKiD®—to identify the unique parts and pieces that are suited for that customer’s particular semi-truck or other oversized or commercial vehicle.

30. Onyx’s iD® Mark and the reputation it has developed in association with its iD® trademark and iD® brand have grown based on the quality associated with them. Consequently,

Onyx has registered the following marks: BOATiD®, CAMPERiD®, MOTORCYCLEiD®,

POWERSPORTSiD®, RECREATIONiD®, STREETiD®, TOOLSiD®, and TRUCKiD®. Onyx has launched associated eCommerce platforms utilizing the same .

www.BOATiD.com

www.CARiD.com

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www.CAMPERiD.com

www.MOTORCYCLEiD.c om

www.POWERSPORTSiD. com

11 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 12 of 38

www.RECREATIONiD.co m

www.TOOLSiD.com

31. PARTS iD has secured new domains such as www.RIMSiD.com, www.IDAutoMall.com and www.TireID.com through acquisition and enforcement of its iD®

Mark.

32. Onyx’s CARiD® branded services have received consistently high ratings, a trend that continues following the merger with PARTS iD.

33. PARTS iD has an “Elite” rating of 9.5/10 out of about 102,877 reviews on www.ResellerRatings.com. Based on the reviews submitted within the last six months, PARTS iD’s CARiD® branded services has an average customer service rating of 9.09/10 and a “chance of future purchase” rating of 8.99/10.

34. PARTS iD has an “A+” rating with the Better Business Bureau.

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35. PARTS iD has a 4.7 out of 5 on Google Reviews based upon just under 10,000 reviews.

36. PARTS iD’s CARiD® Facebook page currently has a 4.4/5 rating out of about

20,088 reviews.

37. The CARiD® Instagram account currently has approximately 39,000 followers while the CARiD® Facebook account currently has over 2.5 million followers. The CARiD®

YouTube Channel has over 69,100 subscribers and over 35.6 million views.

38. As a result of its efforts, including its extensive financial investment, Onyx made a substantial amount of sales through its iD® brand in the United States and abroad, a trend that continues with the merger with PARTS iD. Sales of products sold through CARiD® and other iD® branded services have far exceeded those of PARTS iD’s direct competitors in the United States and abroad.

ONYX’S PROTECTIONS 39. In addition to the strong consumer recognition, the iD® brand enjoys substantial state and federal trademark protections given its ubiquitous and consistent use since 2008. PARTS iD is the registered owner of the federal trademark registration for the stylized “iD” (Reg.

No. 5658672) for “Wholesale distributorships featuring automotive parts and accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories.” See Exhibit 1.

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40. PARTS iD owns the trademark application for its newly-stylized iD® logo (Reg.

No. 5804750) for “Distributorship services featuring parts and accessories for land vehicles and water vehicles; Distributorship services featuring goods for travel and outdoor recreational activities; Distributorship services featuring tools.”

41. This application received no opposition and was registered on the Principal Register on July 16, 2019. PARTS iD and Onyx have been using this newly stylized iD® logo in some version in connection with its multiple retail platforms since at least 2013.

42. PARTS iD is the registered owner of the federal trademark, wordmark, and registration for CARiD® (Reg. No. 3711746) for “Wholesale distributorships featuring automotive accessories; retail store services featuring automotive accessories; online retail store services featuring automotive accessories.” PARTS iD and Onyx have been using this trademark in connection with its eCommerce platform since at least 2008. For avoidance of doubt, PARTS iD identifies Trademark Registration Nos. 3711746, 5658672, 5804750, 6096254, and 6100524 as the “iD® Mark.”

43. PARTS iD owns U.S. Trademark Registrations and pending U.S Trademark

Applications for the following marks, copies of which are attached as Exhibit 2:

MARK Reg./Ser. No. Goods & Services CARID Reg. No. 3711746 IC 035: Wholesale distributorships featuring automotive accessories; retail store services featuring automotive accessories; online retail store services featuring automotive accessories. (Date of First Use: at least as early as March 10, 2009)

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Reg. No. 6100524 IC 035: On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring automotive parts and accessories; Reseller services, namely, distributorship services in the field of automotive parts and accessories; Wholesale and retail store services featuring automotive parts and accessories; Wholesale and retail store services featuring a wide variety of consumer goods of others. (Date of First Use: at least as early as July 26, 2014)

Reg. No. 5804750 IC 035: Distributorship services featuring parts and accessories for land vehicles and water vehicles; Distributorship services featuring goods for travel and outdoor recreational activities; Distributorship services featuring tools. (Date of First Use: at least as early as June 1, 2018) Reg. No. 6096254 IC 035: On-line retail store services featuring a wide variety of consumer goods; On-line retail store services featuring automotive parts and accessories; Reseller services, namely, distributorship services in the field of electronics and apparel; Wholesale and retail store services featuring automotive parts and accessories; Wholesale and retail store services featuring electronics, tools, apparel, goods used for travel and outdoor recreational activities, and parts and accessories for land and water vehicles; Wholesale and retail store services featuring a wide variety of consumer goods. (Date of First Use: at least as early as June 1, 2018) Reg. No. 5658672 IC 035: Wholesale distributorships featuring automotive parts and accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive

parts and accessories. (Date of First Use: at least as early as September 1, 2013)

Ser. No. 87412406 IC 002: Sealer coatings for use in the sealing of vehicle parts and during vehicle repairs; coatings for industrial purposes, namely, paints, aerosol paints, rust treatment coatings, undercoats in the nature of industrial sealants for waterproofing and surface hardening, insulation coatings, and rubberized coatings in the nature of industrial

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sealants for waterproofing and surface hardening; anti-corrosive oils

IC 003: Chemical cleaners directed to the the vehicle industries; windshield washing fluid; vehicle and car wax preparations

IC 004: Motor vehicle lubricants; Rust penetrant lubricants for vehicle exhaust systems, for hood release cables, for nuts and bolts, for shock absorbers, and other clips and cables of vehicles; penetrating oil; vehicle lubricants; vehicle lubricating greases; lubricating oils; automotive lubricants

IC 007: Vehicle equipment, namely, engine mufflers, spark plugs, gaskets, and chucks for power-operated drills; metal engine gaskets for vehicles

IC 009: Batteries for motor vehicles; battery maintenance equipment, namely, cables, lugs, connectors, terminals, hardware, protectors, cable assemblies, bolts, and booster cables; battery chargers for motor vehicles

IC 012: ATVs (all terrain vehicles); automobiles and structural parts therefor; brake discs for motorcycles; motor scooters and structural parts therefor; motorcycle drive chains ; motorcycle foot pegs; motorcycle sprockets; motorcycles and structural parts therefor; motorized bicycles; motorized dirt bikes for motocross and dune buggies; motorized vehicles, namely, go-carts; parts of motorcycles, namely, brake cables; parts of motorcycles, namely, brake calipers; parts of motorcycles, namely, brake levers; parts of motorcycles, namely, brake master cylinder assemblies; parts of motorcycles, namely, brake rotors; parts of motorcycles, namely, clutch cables; parts of motorcycles, namely, clutch master cylinder assemblies; parts of motorcycles, namely, handle bar grips; parts of motorcycles, namely, handle bar throttles; parts of motorcycles, namely, handle bar grips; parts of motorcycles, namely, handle bars; parts of motorcycles, namely, master

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cylinders; parts of motorcycles, namely, shift levers; parts of motorcycles, namely, brake master cylinder assemblies; parts of motorcycles, namely, clutch master cylinder assemblies; vehicle parts, namely, rearview mirrors; push scooters and structural parts therefor

IC 025: Clothing, namely, t-shirts, sweatshirts, headwear and footwear

BOATiD Reg. No. 5888908 IC 035: Online retail store services featuring consumer products, electronics, parts and accessories for boats and water vehicles, boat safety, and boat maintenance; computerized online ordering featuring general merchandise and general consumer goods for boats and water vehicles, boat safety, and boat maintenance

CAMPERiD Reg No. 5888909 IC 035: Online retail store services in the field of outdoor consumer products, equipment, parts and accessories used with, or in association with, recreation vehicles, campers, cooking, towing, and other outdoor recreational activities; Online retail store services in the field of general merchandise and general consumer goods used for outdoor recreational activities

MOTORCYCLEiD Reg. No. 5787890 IC 035: Online retail store services featuring consumer products, electronics, apparel, protective wear, parts and accessories for motorcycles, dirt bikes, motocross bikes, scooters, and three-wheel bikes; computerized online ordering featuring general merchandise and general consumer goods including those used with motorcycles, dirt bikes, motocross bikes, scooters, and three-wheel bikes (Date of First Use: at least as early as July 1, 2018)

POWERSPORTSiD Reg. No. 5787889 IC 035: Online retail store services featuring consumer products, electronics, parts and accessories for powersports, namely, boating, snowmobiling, motorcycling, utility terrain vehicles, watercrafts, off-road vehicles, and all- terrain vehicles; computerized online ordering featuring general merchandise and general consumer goods including those used in support of powersports

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(Date of First Use: at least as early as July 1, 2018)

RACINGiD Ser. No. 88303678 IC 035: On-line retail store services featuring a wide variety of consumer goods of others; Online retail store services featuring consumer products, electronics, parts and accessories for land and water vehicles used for racing or high performance travel; Computerized online ordering featuring general consumer merchandise

RECREATIONiD Reg. No. 5888910 IC 035: Online retail store services in the field of consumer products, shoes, electronics, equipment, parts and accessories used with, or in association with, walking, camping, backpacking, hiking, tailgating, cooking, hunting, fishing, biking, towing, and other outdoor recreational activities; Online retail store services in the field of general merchandise and general consumer goods used for outdoor recreational activities

STREETiD Reg. No. 5850420 IC 035: On-line retail store services featuring a wide variety of consumer goods of others.

TOOLSiD Reg. No. 5888911 IC 035: Online retail store services featuring consumer products, electronics, parts and accessories associated with tools, namely, power tools, hand tools, lawn and garden tools, air tools, automotive tools, and construction tools; Online retail store services in the field of general merchandise and general consumer goods used for or with tools

TRUCKiD Reg. No. 5787891 IC 035: Online retail store services in the field of electronics, consumer products, parts and accessories directed to, or used in association with, trucks, semi-trucks, semi-tractor trailers, fifth wheels, trailers and towing; computerized online ordering featuring general merchandise and general consumer goods for those in the field of trucks, semi-trucks, semi-tractor trailers, fifth wheels, trailers and towing (Date of First Use: at least as early as July 1, 2018)

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46. Onyx enforced its intellectual property rights to ensure the integrity and strength of its iD® brands. See, e.g., Onyx Enters. Int’l, Corp. v. Guangzhou Zezhong Elecs. Co., Ltd., No.

1:18-cv-03226 (D. Colo. filed Dec. 14, 2018) and Onyx Enters. Int’l, Corp. v. Sloan Int’l Holdings

Corp., No. 0:20-cv-60871-RKA (S.D. Fla. filed Apr. 29, 2020).

DEFENDANT’S ACTS OF INFRINGEMENT

47. On November 2, 2008, Mr. Peter Noble registered an LLC in Massachusetts under the name “TDIParts LLC.”

48. On or about December 15, 2009—after Onyx launched its first iD® branded e- commerce site at www.CARiD.com—Mr. Noble filed a Certificate of Amendment with the

Massachusetts Secretary of the Commonwealth, amending the name of the LLC from “TDI Parts

LLC” to “IDPARTS LLC.”

49. Upon information and belief, after its incorporation and subsequent name change,

ID Parts began to operate and control the www.idparts.com website, its social media accounts, and to provide retail services for automotive parts and accessories under the infringing www.idparts.com domain name.

50. Upon information and belief, ID Parts is the registered owner of the www.idparts.com website.

20 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 21 of 38

51. Upon information and belief, ID Parts had full knowledge of Plaintiff’s ownership of the iD® Mark, including Plaintiff’s use of the following stylized marks on or about the dates indicated:

52. Upon information and belief, ID Parts had full knowledge of Plaintiff’s ownership of the iD® Mark, including Plaintiff’s exclusive rights to use and license such intellectual property and the goodwill associated therewith.

53. On October 3, 2014, ID Parts applied to register its infringing ID mark:

(the “Infringing ID Mark”) on the principal register with the United States Patent and Trademark

Office under Serial No. 86414309.

21 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 22 of 38

54. On July 21, 2019, the USPTO issued a non-final office action informing ID Parts that registration of its Infringing ID Mark was refused due to a likelihood of confusion in the market between Defendant’s Infringing ID Mark and Plaintiff’s iD® Mark. See Exhibit 3. ID Parts did not file a response to the office action, and the mark was deemed abandoned by the USPTO on April 14, 2020.

55. Despite receiving a non-final office action of refusal specifically stating that there is a likelihood of confusion between the Infringing ID Mark and Plaintiff’s iD® Mark, and receiving a Notice of Abandonment from the USPTO, ID Parts continues to use its Infringing ID

Mark to distribute and sell identical and/or similar automotive parts and accessories as PARTS iD.

56. ID Parts has marketed, and continues to market, its retail services for automotive parts and accessories into the same channels of trade as PARTS iD and to the same types of consumers.

57. The www.idparts.com website, social media accounts, and marks directly incorporate Plaintiff’s iD® Mark and are identical in spelling and sound to Plaintiff’s iD® Mark, and often duplicate the color scheme as used by PARTS iD, which is depicted in the below side- by-side comparisons:

Plaintiff’s iD® Mark Defendant’s Infringing ID Mark

(as depicted on www.CARiD.com; Reg. No. (as used on www.idparts.com on 6100524) 06/15/2020)

CARID (Reg. No. 3711746 CARID)

22 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 23 of 38

(Reg. No. 5804750)

(Reg. No. 6096254)

(as depicted on www.CARiD.com)

(as depicted on www.BOATiD.com)

(as depicted on www.CAMPERiD.com)

(as depicted on www.MOTORCYCLEiD.com)

(as depicted on www.POWERSPORTSiD.com)

(as depicted on www.RECREATIONiD.com)

(as depicted on www.TOOLSiD.com)

(as depicted on www.TRUCKiD.com)

23 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 24 of 38

(Reg. No. 5658672) (as currently used for the www.idparts.com (as currently used for the www.carid.com website thumbnail) website thumbnail)

(as used on the CARiD® Facebook Account

on May 31, 2020) (as used on ID Parts Facebook Account

on May 31, 2020)

(as depicted in the current ID Parts Facebook

account cover photo)

(as depicted in the current CARiD Instagram

account)

(as depicted in the current ID Parts Instagram account)

24 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 25 of 38

(as depicted on the current CARiD (as depicted on the current ID Parts Twitter account profile) Twitter account profile)

58. True and correct copies of the website screenshots for PARTS iD’s current CARiD,

BOATiD, CAMPERiD, MOTORCYCLEiD, POWERSPORTSiD, RECREATIONiD, TOOLSiD, and TRUCKiD websites depicting the above-referenced complimentary iD® Marks are attached as Exhibit 4.

59. A true and correct copy of the website screenshot for the www.idparts.com website, as captured on May 31, 2020, is attached as Exhibit 5. A true and correct copy of the website screenshot showing the thumbnail from the current www.idparts.com website is attached as

Exhibit 6. True and correct copies of the website screenshots for the ID Parts Facebook, Instagram, and Twitter accounts are attached as Exhibit 7.

60. Upon information and belief, ID Parts initially created the www.idparts.com website and name with the intention of creating consumer confusion and the www.idparts.com retail service as being associated with Plaintiff’s iD® Mark.

25 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 26 of 38

61. At all relevant times, PARTS iD began using its iD® Mark, namely Reg. No.

3711746, prior to Defendant’s use of its Infringing ID Mark utilizing the term “ID”.

62. ID Parts has acted purposefully and in bad faith to usurp the substantial goodwill that PARTS iD has developed under its iD® Mark to confuse and deceive consumers into believing that the www.idparts.com website and services are in some way affiliated or connected to

Plaintiff’s iD® brand when it is not.

63. ID Parts has made and will continue to make substantial profits and gains off of the goodwill and value PARTS iD has acquired through their iD® Mark, to which ID Parts is not in law or equity entitled.

64. PARTS iD is not affiliated or connected with ID Parts or its services, nor has

PARTS iD endorsed or sponsored ID Parts or its services.

65. PARTS iD has not in any way authorized Defendant’s use of Plaintiff’s iD® Mark or its likeness.

66. PARTS iD has no control over the nature and quality of the services or goods that

ID Parts provides through the www.idparts.com website or under the Infringing ID Mark.

67. Upon information and belief, ID Parts does not provide services through the infringing www.idparts.com website or Infringing ID Mark that meet the high standard and quality that consumers have come to associate with Plaintiff’s iD® Mark.

68. Defendant’s use of the infringing www.idparts.com website and the Infringing ID

Mark have harmed, and will continue to cause harm, to the goodwill symbolized by Plaintiff’s iD®

Mark and the reputation for quality and excellence that it embodies.

69. On March 30, 2020, shortly after discovering Defendant’s use of the infringing www.idparts.com website and the Infringing ID Mark, Plaintiff notified ID Parts of its rights in its

26 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 27 of 38

iD® Mark and requested that ID Parts cease using the infringing www.idparts.com website and iD® Mark. See Exhibit 8. ID Parts acknowledged receipt of the notice via e-mail reply on April

14, 2020. See Exhibit 9. Plaintiff communicated with ID Parts again on May 7, 2020 to again request it cease and desist its unlawful use of Plaintiff’s iD® Mark (Exhibit 10), but ID Parts did not reply to or acknowledge this second notice.

70. Rather than cease using the infringing www.idparts.com website and the Infringing

ID Mark as requested, ID Parts failed to respond any further to Plaintiffnyx’s attempts to negotiate and has not changed anything on the its infringing www.idparts.com website.

71. ID Parts continues to advertise, market, and sell competing automotive parts and accessories in the same industry and through the same channels of trade as PARTS iD using its infringing www.idparts.com website and Infringing ID Mark.

72. Absent injunctive relief, PARTS iD will continue to suffer irreparable harm in the loss of control of its reputation and goodwill in its iD® Mark.

73. This and all other damage to PARTS iD’s reputation and goodwill in its iD® Mark and brand resulting from the conduct alleged in this action cannot be easily quantified nor could it be undone through an award of money damages alone.

27 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 28 of 38

COUNT I Federal Trademark Infringement of U.S. Trademark Reg. Nos. 3711746, 5658672, 5804750, 6096254, and 6100524 in Violation of 15. U.S.C. § 1114(1)

74. PARTS iD incorporates the allegations in Paragraphs 1 through 73 as if fully set forth herein.

75. PARTS iD is the owner of all right, title, and interest in, to and under its iD® Mark, specifically Trademark Reg. Nos. 3711746, 5658672, 5804750, 6096254, and 6100524, and all goodwill appurtenant thereto.

76. PARTS iD’s federal registrations on the Principal Register are prima facie evidence of validity and PARTS iD’s exclusive right to use the marks pursuant to 15 U.S.C. §

1115.

77. Plaintiff’s iD® Mark has been continuously and widely used by PARTS iD nationwide, abroad, and on its eCommerce platforms. PARTS iD intends to preserve and maintain its rights to, and continued use of, the iD® Mark.

78. Without PARTS iD’s consent, ID Parts has used, and continues to use, reproductions, copies, or colorable imitations of PARTS iD’s identified marks mark in connection with the sale, offering for sale, distribution, or advertising of goods or services on orin interstate commerce in connection with the promotion, advertisement, and operation of identical distributorship and retail store services, and specifically automotive products.

79. Defendant’s unauthorized use of Plaintiff’s iD® Mark, and/or confusingly similar variations thereof, is causing and is likely to continue to cause confusion, or to cause mistake, or to deceive, consumers and the relevant public into falsely believing that ID Parts is affiliated, connected, or associated with Plaintiff’s iD® Mark.

28 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 29 of 38

80. The acts of ID Parts as alleged herein and above constitute trademark infringement in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114.

81. ID Parts has engaged in this conduct knowingly, willfully, and in bad faith, in total disregard of PARTS iD’s proprietary rights. Even though ID Parts received notice of its infringement, ID Parts intentionally and willfully continues their unauthorized use of Plaintiff’s iD® Mark. PARTS iD is therefore entitled to statutory and treble damages.

82. Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

83. As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill.

84. PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

85. PARTS iD is therefore entitled to recover actual and treble damages, attorney fees, and costs pursuant to 15 U.S.C. §§ 1114 and 1117 and injunctive relief pursuant to 15 U.S.C. §

1116.

COUNT II Unfair Competition and False Designation of Origin in Violation of 15. U.S.C. § 1125(a)

86. PARTS iD incorporates the allegations in Paragraphs 1 through 85 as if fully set forth herein.

87. PARTS iD is the owner of all right, title, and interest in, to and under its iD® Mark, and all goodwill appurtenant thereto.

29 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 30 of 38

88. Plaintiff’s iD® Mark has been continuously and widely used by PARTS iD nationwide, abroad, and on its eCommerce platforms. PARTS iD intends to preserve and maintain its rights to the iD® Mark and to continue the use of the iD® Mark in connection with its distributorship and retail store services relating to the distribution and sale of automotive products.

89. By virtue of the renown of the iD® Mark, the iD® Mark has developed secondary meaning and significance in the mind of the relevant public. Goods and services associated with the iD® Mark are immediately associated by the purchasing public with Plaintiff’s iD® Mark and its automotive product-based eCommerce platforms.

90. Without PARTS iD’s consent, ID Parts has used, and continues to use PARTS iD’s iD® Mark or confusingly similar variations thereof, in interstate commerce in connection with the promotion, advertisement, and operation of identical distributorship and retail store services, and specifically automotive products.

91. Defendant’s unauthorized use of PARTS iD’s iD® Mark, and/or confusingly similar variations thereof, is causing and is likely to continue to cause confusion, or to cause mistake, or to deceive, consumers and the relevant public into falsely believing that ID Parts is affiliated, connected, or associated with Plaintiff’s iD® Mark.

92. The acts of ID Parts as alleged herein and above constitute unfair competition and/or false designation of origin in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

93. ID Parts has engaged in this conduct knowingly, willfully, and in bad faith, in total disregard of PARTS iD’s proprietary rights. Even though ID Parts received notice of its infringement, ID Parts intentionally and willfully continues their unauthorized use of Plaintiff’s iD® Mark. PARTS iD is therefore entitled to statutory and treble damages.

30 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 31 of 38

94. Defendant’s conduct has deprived PARTS iD of its rightful ability to control the quality of goods and services uniquely associated with Plaintiff’s iD® Mark and to ensure that their associated, valuable goodwill, and reputation are protected. Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

95. As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill.

96. PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

97. PARTS iD is therefore entitled to recover actual and treble damages, attorney fees, and costs pursuant to 15 U.S.C. § 1114 and 1117 and injunctive relief pursuant to 15 U.S.C. §

1116.

COUNT III Trademark Infringement in Violation of Massachusetts Common Law

98. PARTS iD incorporates the allegations in Paragraphs 1 through 97 as if fully set forth herein.

99. PARTS iD is the owner of valid common law rights in the iD® Mark which it has used continuously and in connection with PARTS iD’s goods and services prior to Defendant’s unauthorized use of the Infringing ID Mark.

100. Defendant’s conduct as set forth above constitutes trademark infringement in violation of Massachusetts common law.

101. ID Parts is promoting and otherwise advertising its automotive retail store services under marks that are identical or confusingly similar variations of Plaintiff’s iD® Mark.

31 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 32 of 38

102. Defendant’s use of its Infringing ID Mark is likely to cause, has caused, and will continue to cause confusion, mistake, or deception as to the sponsorship, affiliation, or source of

Defendant’s goods and services in that consumers and others are likely to believe Defendant’s goods and services are legitimately connected with or approved by PARTS iD and/or its iD® brands in violation of Massachusetts common law.

103. ID Parts has engaged in this conduct knowingly, willfully, and in bad faith.

104. Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

105. As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill, in an amount as yet not fully ascertained.

106. PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

COUNT IV Unfair Competition in Violation of Massachusetts Common Law

107. PARTS iD incorporates the allegations in Paragraphs 1 through 106 as if fully set forth herein.

108. Plaintiff’s iD® Mark have become well and favorably known throughout the United

States, including the Commonwealth of Massachusetts.

109. Defendant’s conduct as set forth above constitute unfair competition, false representation, and/or false designation of origin, which are have and/or are likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association with

32 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 33 of 38

PARTS iD and/or its iD® Mark, brands, or origin, sponsorship, or approval of the infringing ID

Parts services by PARTS iD and/or its iD® and brands in violation of PARTS iD’s rights at common law and under the law of the Commonwealth of Massachusetts.

110. ID Parts engaged in this conduct knowingly, willfully, and in bad faith.

111. Defendant’s intentional and willful actions have caused and are continuing to cause

PARTS iD irreparable injury and monetary damages.

112. As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill, in an amount as yet not fully ascertained.

113. PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

COUNT V Deceptive Trade Practices in Violation of G.L.c. 93(a) § 2

114. PARTS iD incorporates the allegations in Paragraphs 1 through 113 as if fully set forth herein.

115. Defendant’s conduct as set forth above constitutes deceptive trade practices in violation of G.L.c. 93(a) § 2.

116. Defendant’s use of PARTS iD’s iD® Mark and confusingly similar variations thereof, falsely suggests PARTS iD and/or its iD® brands as the source of Defendant’s goods and services.

117. In the course of Defendant’s business, ID Parts has and continues to make false representations as to the source, sponsorship, approval, or certification of goods and services

33 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 34 of 38

provided by ID Parts in order to deceive consumers into believing that Defendant’s’ goods and services are sponsored, approved, or certified by PARTS iD and/or its iD® Mark of brands in violation of Massachusetts common law.

118. In the course of Defendant’s business, ID Parts has and continues to make false representations to deceive consumers into believing that Defendant’s and/or their goods and services are affiliated, connected, or associated with PARTS iD and/or its iD® brands.

119. ID Parts has engaged in this conduct knowingly, willfully, and in bad faith and accordingly the Defendant’s conduct in this regard was immoral or otherwise unscrupulous.

120. Defendant’s actions have caused and will continue to cause confusion among unsuspecting consumers familiar with the iD® Mark and brands, which are used to identify PARTS iD’s goods and services, and thereby significantly impact the public as actual or potential consumers.

121. Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

122. As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill, in an amount as yet not fully ascertained.

123. PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

124. PARTS iD is therefore entitled to recover actual and treble damages, attorney fees, and costs pursuant to G.L.c. 93(a) § 9(3A).

34 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 35 of 38

PRAYER FOR RELIEF

WHEREFORE, PARTS iD prays for judgment and relief against ID Parts as follows:

A. For preliminary and permanent injunctive relief enjoining ID Parts and any principals, agents, servants, employees, successors and assigns of ID Parts and all those in privity, concert or participation with ID Parts from:

(i) imitating, copying, duplicating or otherwise making any use of Plaintiff’s iD® Mark

or any mark confusingly similar to Plaintiff’s iD® Mark;

(ii) using any false designation of origin or false description which can or is likely to

lead the trade or public, or individual members thereof, to believe mistakenly that

any service advertised, promoted, offered or sold by ID Parts is sponsored,

endorsed, connected with, approved or authorized by PARTS iD;

(iii) causing likelihood of confusion or injury to PARTS iD’s business reputation and

to the distinctiveness of the Plaintiff’s iD® Mark by unauthorized use of the iD®

Mark or any mark confusingly similar to the iD® Mark;

(iv) engaging in any other activity constituting unfair competition or infringement of

Plaintiff’s iD® Mark or PARTS iD’s rights in, or to use, or to exploit the same;

(v) assisting, aiding or abetting another person or business entity in engaging or

performing any of the activities enumerated in subparagraphs (i) through (v) above.

B. Find that ID Parts has infringed upon Plaintiff’s iD® Mark in violation of federal and common law and damaged PARTS iD’s goodwill by its conduct.

C. Find that ID Parts has unfairly competed with PARTS iD by the acts complained of herein in violation of federal law and common law.

D. Find that the acts of ID Parts constitute a violation of the G.L.c. 93(a) § 2.

35 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 36 of 38

E. For an order requiring the transfer of the infringing website, www.idparts.com, to

PARTS iD.

F. For an order requiring ID Parts to remove any and all references to the iD® Mark, including any company or account names, , photographs or videos, and/or any other posts or references, from the Internet and social media outlets, such as Facebook, Instagram, and Twitter.

G. Find ID Parts liable and award to PARTS iD monetary damages in an amount to be fixed by the Court in its discretion as just, including all of the Defendant’s profits or gains of any kind, resulting from Defendant’s willful infringement, and/or acts of unfair competition, said amount to be trebled and exemplary damages where applicable in view of the intentional nature of the acts complained of herein, pursuant to 15 U.S.C. § 1117, G.L.c. 93(a) § 9(3A), and the common law of the Commonwealth of Massachusetts;

H. Award to PARTS iD statutory damages to the full extent permitted by law;

I. Award to PARTS iD its attorneys’ fees, due to the exceptional nature of this case, and all of PARTS iD’s costs and expenses of litigation pursuant to 15 U.S.C. § 1117(a) and G.L.c.

93(a) § 9(3A).

J. Award to PARTS iD pre-judgment and post-judgment interest;

K. Grant to PARTS iD such other and further relief as the Court may deem just, proper and equitable under the circumstances.

JURY DEMAND

PARTS iD demands a trial by jury on all issues so triable.

36 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 37 of 38

Dated: January 22, 2021 Respectfully submitted,

/s/ Aaron Bradford Aaron P. Bradford, pro hac vice Mishele Kieffer, pro hac vice Nina P. Brewer BRADFORD, LTD 2701 Lawrence Street Denver, CO 80205 (303) 325-5467 [email protected] [email protected] [email protected]

Daniel J. Cloherty (BBO #565772) Christian G. Kiely (BBO #684308) TODD & WELD LLP One Federal Street, 27th Floor Boston, MA 02110 (617) 720-2626 [email protected] [email protected]

Attorneys for PARTS iD, LLC

37 Case 1:20-cv-11253-RWZ Document 29 Filed 01/22/21 Page 38 of 38

CERTIFICATE OF SERVICE

I hereby certify that on January 22, 2021 a true and correct copy of the foregoing PLAINTIFF

PARTS iD’S SECOND AMENDED COMPLAINT FOR DAMAGES AND INJUNCTIVE

RELIEF was served via email on the following:

John Strand [email protected] WOLF, GREENFIELD & SACKS, P.C. 600 Atlantic Avenue Boston, MA 02210

Counsel for IDParts LLC

/s/ Vonda Westlake

38 Case 1:20-cv-11253-RWZ Document 29-1 Filed 01/22/21 Page 1 of 1

Reg. No. 5,658,672 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive Registered Jan. 22, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Wholesale distributorships featuring automotive parts and accessories; retail store Int. Cl.: 35 services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories FIRST USE 9-1-2013; IN COMMERCE 9-1-2013 Principal Register The color(s) white and green is/are claimed as a feature of the mark.

The mark consists of of the lettering "iD", the "i" being non-capitalized, the "D" being capitalized, in white on a green background.

OWNER OF U.S. REG. NO. 3711746

SER. NO. 86-253,327, FILED 04-16-2014 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 1 of 27 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 2 of 27

Reg. No. 6,100,524 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive, Ste. C Registered Jul. 14, 2020 Cranbury, NEW JERSEY 08512 CLASS 35: On-line retail store services featuring a wide variety of consumer goods of others; Int. Cl.: 35 On-line retail store services featuring automotive parts and accessories; Reseller services, namely, distributorship services in the field of automotive parts and accessories; Wholesale Service Mark and retail store services featuring automotive parts and accessories; Wholesale and retail store Principal Register services featuring a wide variety of consumer goods of others FIRST USE 7-26-2014; IN COMMERCE 7-26-2014

The mark consists of the terms "CAR" and "ID" together as one word in stylized font, with the "I" being in lowercase and the other letters being in uppercase.

OWNER OF U.S. REG. NO. 3711746

SEC.2(F)

SER. NO. 88-732,234, FILED 12-18-2019 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 3 of 27

Reg. No. 5,804,750 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive Registered Jul. 16, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Distributorship services featuring parts and accessories for land vehicles and Int. Cl.: 35 water vehicles; Distributorship services featuring goods for travel and outdoor recreational Service Mark activities; Distributorship services featuring tools FIRST USE 6-1-2018, The mark was first used anywhere in a different form other than that Principal Register sought to be registered at least as early as 09/01/2013; IN COMMERCE 6-1-2018, The mark was first used in commerce in a different form other than that sought to be registered at least as early as 09/01/2013

The mark consists of the lettering "iD", the "i" being non-capitalized, the "D" being capitalized.

OWNER OF U.S. REG. NO. 3711746, 8625332, 8741240

SER. NO. 88-211,256, FILED 11-29-2018 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 4 of 27

Reg. No. 6,096,254 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive, Ste. C Registered Jul. 07, 2020 Cranbury, NEW JERSEY 08512 CLASS 35: On-line retail store services featuring a wide variety of consumer goods; On-line Int. Cl.: 35 retail store services featuring automotive parts and accessories; Reseller services, namely, distributorship services in the field of electronics and apparel; Wholesale and retail store Service Mark services featuring automotive parts and accessories; Wholesale and retail store services featuring electronics, tools, apparel, goods used for travel and outdoor recreational activities, Principal Register and parts and accessories for land and water vehicles; Wholesale and retail store services featuring a wide variety of consumer goods

FIRST USE 6-1-2018; IN COMMERCE 6-1-2018

The mark consists of the term "ID", with the "I" being in lowercase and the "D" being capitalized.

OWNER OF U.S. REG. NO. 5658672, 5804750

SER. NO. 88-734,396, FILED 12-19-2019 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 5 of 27

Reg. No. 5,658,672 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive Registered Jan. 22, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Wholesale distributorships featuring automotive parts and accessories; retail store Int. Cl.: 35 services featuring automotive parts and accessories; online retail store services featuring Service Mark automotive parts and accessories FIRST USE 9-1-2013; IN COMMERCE 9-1-2013 Principal Register The color(s) white and green is/are claimed as a feature of the mark.

The mark consists of of the lettering "iD", the "i" being non-capitalized, the "D" being capitalized, in white on a green background.

OWNER OF U.S. REG. NO. 3711746

SER. NO. 86-253,327, FILED 04-16-2014 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 6 of 27

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2018) Trademark/Service Mark Application, Principal Register

Serial Number: 87412406 Filing Date: 04/14/2017

The table below presents the data as entered.

Input Field Entered SERIAL NUMBER 87412406 MARK INFORMATION \\TICRS\EXPORT17\IMAGEOUT *MARK 17\874\124\87412406\xml1\ RFA0002.JPG

SPECIAL FORM YES

USPTO-GENERATED IMAGE NO

LITERAL ELEMENT iD

COLOR MARK YES

COLOR(S) CLAIMED The color(s) white and green is/are claimed as a feature of the (If applicable) mark. The mark consists of The mark consists of of the lettering iD, *DESCRIPTION OF THE MARK (and Color Location, if applicable) the 'i' being non-capitalized, the 'D' being capitalized, in white on a green background.

PIXEL COUNT ACCEPTABLE YES

PIXEL COUNT 374 x 268 REGISTER Principal APPLICANT INFORMATION

*OWNER OF MARK Onyx Enterprises Int'l, Corp.

*STREET 1 Corporate Drive

*CITY Cranbury

*STATE New Jersey (Required for U.S. applicants)

*COUNTRY United States

*ZIP/POSTAL CODE 08512 (Required for U.S. and certain international addresses)

PHONE 609-655-8500

FAX 609-269-2202

EMAIL ADDRESS XXXX

WEBSITE ADDRESS http://www.onyxenterprises.com/ LEGAL ENTITY INFORMATION

TYPE corporation

STATE/COUNTRY OF INCORPORATION New Jersey Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 7 of 27

GOODS AND/OR SERVICES AND BASIS INFORMATION

INTERNATIONAL CLASS 001

*IDENTIFICATION Coolants for vehicle engines

FILING BASIS SECTION 1(b)

INTERNATIONAL CLASS 002 Sealer coatings for use in the sealing of vehicle parts and during vehicle repairs; coatings for industrial purposes, namely, paints, aerosol paints, rust treatment coatings, *IDENTIFICATION undercoats in the nature of industrial sealants for waterproofing and surface hardening, insulation coatings, and rubberized coatings in the nature of industrial sealants for waterproofing and surface hardening; vehicle lubricants, namely, oil

FILING BASIS SECTION 1(b)

INTERNATIONAL CLASS 003 Chemical cleaners directed to the the vehicle industries; *IDENTIFICATION windshield washing fluid; vehicle and car wax preparations

FILING BASIS SECTION 1(b)

INTERNATIONAL CLASS 004 Motor vehicle lubricants; Rust penetrant lubricants for vehicle exhaust systems, for hood release cables, for nuts and bolts, for *IDENTIFICATION shock absorbers, and other clips and cables of vehicles; penetrating oil; vehicle lubricants; vehicle lubricating greases; lubricating oils

FILING BASIS SECTION 1(b)

INTERNATIONAL CLASS 009 Batteries for vehicles; battery maintenance equipment, namely, cables, lugs, connectors, terminals, hardware, protectors, tools, *IDENTIFICATION cable assemblies, bolts, and booster cables; battery chargers for vehicles

FILING BASIS SECTION 1(b)

INTERNATIONAL CLASS 012 ATVs (all terrain vehicles); automobiles and structural parts therefor; brake discs for motorcycles; motor scooters and structural parts therefor; motorcycle drive chains ; motorcycle foot pegs; motorcycle sprockets; motorcycles and structural parts therefor; motorized bicycles; motorized dirt bikes for motocross and dune buggies; motorized vehicles, namely, go- carts; parts of motorcycles, namely, brake cables; parts of motorcycles, namely, brake calipers; parts of motorcycles, namely, brake levers; parts of motorcycles, namely, brake master cylinder assemblies; parts of motorcycles, namely, brake rotors; parts of motorcycles, namely, clutch cables; parts *IDENTIFICATION of motorcycles, namely, clutch master cylinder assemblies; parts of motorcycles, namely, handle bar grips; parts of motorcycles, namely, handle bar throttles; parts of motorcycles, namely, handle bar grips; parts of motorcycles, namely, handle bars; parts of motorcycles, namely, master cylinders; parts of motorcycles, namely, shift levers; parts of motorcycles, namely, brake master cylinder assemblies; parts of motorcycles, namely, clutch master cylinder assemblies; Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 8 of 27

vehicle parts, namely, rearview mirrors; wheel hubs; wheel rims; motor scooters and structural parts therefor; push scooters and structural parts therefor

FILING BASIS SECTION 1(b)

INTERNATIONAL CLASS 025

*IDENTIFICATION Clothing, namely, t-shirts, sweatshirts, headgear and footwear

FILING BASIS SECTION 1(b)

INTERNATIONAL CLASS 007 Vehicle equipment, namely, engine mufflers, engine couplers, *IDENTIFICATION spark plugs, gaskets, and chucks; metal engine gaskets for vehicles

FILING BASIS SECTION 1(b) ATTORNEY INFORMATION

NAME Andrea M. LaFrance

FIRM NAME BRADFORD, LTD

INTERNAL ADDRESS Suite104

STREET 2701 Lawrence Street

CITY Denver

STATE Colorado

COUNTRY United States

ZIP/POSTAL CODE 80205

PHONE 303-551-5418

FAX 844-406-5294

EMAIL ADDRESS [email protected]

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes CORRESPONDENCE INFORMATION

NAME Andrea M. LaFrance

FIRM NAME BRADFORD, LTD

INTERNAL ADDRESS Suite104

STREET 2701 Lawrence Street

CITY Denver

STATE Colorado

COUNTRY United States

ZIP/POSTAL CODE 80205

PHONE 303-551-5418

FAX 844-406-5294

*EMAIL ADDRESS [email protected]

*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes FEE INFORMATION Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 9 of 27

APPLICATION FILING OPTION TEAS RF

NUMBER OF CLASSES 8

APPLICATION FOR REGISTRATION PER CLASS 275

*TOTAL FEE DUE 2200

*TOTAL FEE PAID 2200 SIGNATURE INFORMATION

SIGNATURE /Andrea M. LaFrance/

SIGNATORY'S NAME Andrea M. LaFrance

SIGNATORY'S POSITION Attorney of Record, Colorado bar member

SIGNATORY'S PHONE NUMBER 303-551-5418

DATE SIGNED 04/14/2017 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 10 of 27

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2018)

Trademark/Service Mark Application, Principal Register

Serial Number: 87412406 Filing Date: 04/14/2017 To the Commissioner for :

MARK: iD (stylized and/or with design, see mark)

The literal element of the mark consists of iD. The color(s) white and green is/are claimed as a feature of the mark. The mark consists of The mark consists of of the lettering iD, the 'i' being non-capitalized, the 'D' being capitalized, in white on a green background. The applicant, Onyx Enterprises Int'l, Corp., a corporation of New Jersey, having an address of 1 Corporate Drive Cranbury, New Jersey 08512 United States 609-655-8500(phone) 609-269-2202(fax) XXXX (not authorized) requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

International Class 001: Coolants for vehicle engines Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 002: Sealer coatings for use in the sealing of vehicle parts and during vehicle repairs; coatings for industrial purposes, namely, paints, aerosol paints, rust treatment coatings, undercoats in the nature of industrial sealants for waterproofing and surface hardening, insulation coatings, and rubberized coatings in the nature of industrial sealants for waterproofing and surface hardening; vehicle lubricants, namely, oil Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 003: Chemical cleaners directed to the the vehicle industries; windshield washing fluid; vehicle and car wax preparations Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 004: Motor vehicle lubricants; Rust penetrant lubricants for vehicle exhaust systems, for hood release cables, for nuts and bolts, for shock absorbers, and other clips and cables of vehicles; penetrating oil; vehicle lubricants; vehicle lubricating greases; lubricating oils Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 009: Batteries for vehicles; battery maintenance equipment, namely, cables, lugs, connectors, terminals, hardware, protectors, tools, cable assemblies, bolts, and booster cables; battery chargers for vehicles Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 012: ATVs (all terrain vehicles); automobiles and structural parts therefor; brake discs for motorcycles; motor scooters and structural parts therefor; motorcycle drive chains ; motorcycle foot pegs; motorcycle sprockets; motorcycles and structural parts therefor; motorized bicycles; motorized dirt bikes for motocross and dune buggies; motorized vehicles, namely, go-carts; parts of motorcycles, namely, brake cables; parts of motorcycles, namely, brake calipers; parts of motorcycles, namely, brake levers; parts of motorcycles, namely, brake master cylinder assemblies; parts of motorcycles, namely, brake rotors; parts of motorcycles, namely, clutch cables; parts of motorcycles, namely, clutch master cylinder assemblies; parts of motorcycles, namely, handle bar grips; parts of motorcycles, namely, handle bar throttles; parts of motorcycles, namely, handle bar grips; parts of motorcycles, namely, handle bars; parts of motorcycles, namely, master cylinders; parts Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 11 of 27 of motorcycles, namely, shift levers; parts of motorcycles, namely, brake master cylinder assemblies; parts of motorcycles, namely, clutch master cylinder assemblies; vehicle parts, namely, rearview mirrors; wheel hubs; wheel rims; motor scooters and structural parts therefor; push scooters and structural parts therefor Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 025: Clothing, namely, t-shirts, sweatshirts, headgear and footwear Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 007: Vehicle equipment, namely, engine mufflers, engine couplers, spark plugs, gaskets, and chucks; metal engine gaskets for vehicles Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

For informational purposes only, applicant's website address is: http://www.onyxenterprises.com/

The applicant's current Attorney Information: Andrea M. LaFrance of BRADFORD, LTD Suite104 2701 Lawrence Street Denver, Colorado 80205 United States 303-551-5418(phone) 844-406-5294(fax) [email protected] (authorized)

The applicant's current Correspondence Information: Andrea M. LaFrance BRADFORD, LTD Suite104 2701 Lawrence Street Denver, Colorado 80205 303-551-5418(phone) 844-406-5294(fax) [email protected] (authorized) E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant, the applicant's attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Reduced Fee status and a requirement to submit an additional processing fee of $125 per international class of goods/services.

A fee payment in the amount of $2200 has been submitted with the application, representing payment for 8 class(es).

Declaration

If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):

The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered; The mark is in use in commerce on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and The facts set forth in the application are true.

If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e): Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 12 of 27

The signatory believes that the applicant is entitled to use the mark in commerce; The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application; and The facts set forth in the application are true. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true. Declaration Signature

Signature: /Andrea M. LaFrance/ Date: 04/14/2017 Signatory's Name: Andrea M. LaFrance Signatory's Position: Attorney of Record, Colorado bar member Payment Sale Number: 87412406 Payment Accounting Date: 04/17/2017

Serial Number: 87412406 Internet Transmission Date: Fri Apr 14 17:41:18 EDT 2017 TEAS Stamp: USPTO/BAS-XX.XXX.XX.XX-20170414174118429 269-87412406-580c78dbf6b036ebb7d1389f2a4 43fe7157e78657ddf46a58d224782ed5adb5-CC- 3564-20170414160646765069

Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 13 of 27 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 14 of 27

Reg. No. 5,888,908 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) One Corporate Dr. Registered Oct. 22, 2019 1 Corporate Dr., Ste. C Cranbury, NEW JERSEY 08512

Int. Cl.: 35 CLASS 35: Online retail store services featuring consumer products, electronics, parts and accessories for boats and water vehicles, boat safety, and boat maintenance; computerized Service Mark online ordering featuring general merchandise and general consumer goods for boats and Principal Register water vehicles, boat safety, and boat maintenance FIRST USE 7-1-2018; IN COMMERCE 7-1-2018

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 88-238,416, FILED 12-21-2018 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 15 of 27

Reg. No. 5,888,909 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Dr., Ste. C Registered Oct. 22, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Online retail store services in the field of outdoor consumer products, equipment, Int. Cl.: 35 parts and accessories used with, or in association with, recreation vehicles, campers, cooking, towing, and other outdoor recreational activities; Online retail store services in the field of Service Mark general merchandise and general consumer goods used for outdoor recreational activities

Principal Register FIRST USE 7-1-2018; IN COMMERCE 7-1-2018

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 88-238,468, FILED 12-21-2018 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 16 of 27

Reg. No. 5,787,890 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Dr., Ste. C Registered Jun. 25, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Online retail store services featuring consumer products, electronics, apparel, Int. Cl.: 35 protective wear, parts and accessories for motorcycles, dirt bikes, motocross bikes, scooters, and three-wheel bikes; computerized online ordering featuring general merchandise and Service Mark general consumer goods including those used with motorcycles, dirt bikes, motocross bikes, Principal Register scooters, and three-wheel bikes FIRST USE 7-1-2018; IN COMMERCE 7-1-2018

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 88-238,532, FILED 12-21-2018 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 17 of 27

Reg. No. 5,787,889 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) One Corporate Dr. Registered Jun. 25, 2019 1 Corporate Dr., Ste C Cranbury, NEW JERSEY 08512

Int. Cl.: 35 CLASS 35: Online retail store services featuring consumer products, electronics, parts and accessories for powersports, namely, boating, snowmobiling, motorcycling, utility terrain Service Mark vehicles, watercrafts, off-road vehicles, and all-terrain vehicles; computerized online ordering featuring general merchandise and general consumer goods including those used in support of Principal Register powersports

FIRST USE 7-1-2018; IN COMMERCE 7-1-2018

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 88-238,501, FILED 12-21-2018 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 18 of 27

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2021) Trademark/Service Mark Application, Principal Register TEAS Plus Application

Serial Number: 88303678 Filing Date: 02/15/2019

NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory under the facts of the particular application.

The table below presents the data as entered.

Input Field Entered TEAS Plus YES MARK INFORMATION

*MARK RACINGiD

*STANDARD CHARACTERS YES

USPTO-GENERATED IMAGE YES

LITERAL ELEMENT RACINGiD The mark consists of standard characters, without claim to any *MARK STATEMENT particular font style, size, or color. REGISTER Principal APPLICANT INFORMATION

*OWNER OF MARK Onyx Enterprises Int'l, Corp.

*STREET 1 Corporate Drive, Ste. C

*CITY Cranbury

*STATE New Jersey (Required for U.S. applicants)

*COUNTRY United States

*ZIP/POSTAL CODE 08512 (Required for U.S. and certain international addresses) LEGAL ENTITY INFORMATION

*TYPE CORPORATION

* STATE/COUNTRY OF INCORPORATION New Jersey GOODS AND/OR SERVICES AND BASIS INFORMATION

*INTERNATIONAL CLASS 035 Computerized on-line ordering featuring general consumer merchandise; On-line retail store services featuring consumer products, electronics, parts and accessories for land and *IDENTIFICATION water vehicles used for racing or high performance travel; On-line retail store services featuring a wide variety of consumer goods of others Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 19 of 27

*FILING BASIS SECTION 1(b) ADDITIONAL STATEMENTS INFORMATION

*TRANSLATION (if applicable)

*TRANSLITERATION (if applicable)

*CLAIMED PRIOR REGISTRATION (if applicable)

*CONSENT (NAME/LIKENESS) (if applicable)

*CONCURRENT USE CLAIM (if applicable) ATTORNEY INFORMATION

NAME Cindy N. Pham

FIRM NAME Bradford, LTD

STREET 2701 Lawrence Street

CITY Denver

STATE Colorado

COUNTRY United States

ZIP/POSTAL CODE 80205

PHONE 303-825-9100

EMAIL ADDRESS [email protected]

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

OTHER APPOINTED ATTORNEY Aaron P. Bradford CORRESPONDENCE INFORMATION

*NAME Cindy N. Pham

FIRM NAME Bradford, LTD

*STREET 2701 Lawrence Street

*CITY Denver

*STATE Colorado (Required for U.S. addresses)

*COUNTRY United States

*ZIP/POSTAL CODE 80205

PHONE 303-825-9100

*EMAIL ADDRESS [email protected]; [email protected]

*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes FEE INFORMATION

APPLICATION FILING OPTION TEAS Plus

NUMBER OF CLASSES 1

FEE PER CLASS 225

*TOTAL FEE PAID 225 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 20 of 27

SIGNATURE INFORMATION

* SIGNATURE /Cindy N. Pham/

* SIGNATORY'S NAME Cindy N. Pham

* SIGNATORY'S POSITION Attorney of Record, CO bar member

SIGNATORY'S PHONE NUMBER 303-825-9100

* DATE SIGNED 02/15/2019 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 21 of 27

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006) OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 88303678 Filing Date: 02/15/2019 To the Commissioner for Trademarks:

MARK: RACINGiD (Standard Characters, see mark) The mark in your application is RACINGiD.

The applicant, Onyx Enterprises Int'l, Corp., a corporation of New Jersey, having an address of 1 Corporate Drive, Ste. C Cranbury, New Jersey 08512 United States requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table. International Class 035: Computerized on-line ordering featuring general consumer merchandise; On-line retail store services featuring consumer products, electronics, parts and accessories for land and water vehicles used for racing or high performance travel; On-line retail store services featuring a wide variety of consumer goods of others Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services. (15 U.S.C. Section 1051(b)).

The applicant's current Attorney Information: Cindy N. Pham and Aaron P. Bradford of Bradford, LTD 2701 Lawrence Street Denver, Colorado 80205 United States 303-825-9100(phone) [email protected] (authorized)

The applicant's current Correspondence Information: Cindy N. Pham Bradford, LTD 2701 Lawrence Street Denver, Colorado 80205 303-825-9100(phone) [email protected];[email protected] (authorized) E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or the applicant's attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Plus status and a requirement to submit an additional processing fee of $125 per international class of goods/services.

A fee payment in the amount of $225 has been submitted with the application, representing payment for 1 class(es).

Declaration

Basis: Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 22 of 27

If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):

The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered; The mark is in use in commerce on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.

AND/OR If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e):

The signatory believes that the applicant is entitled to use the mark in commerce; The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. Declaration Signature

Signature: /Cindy N. Pham/ Date: 02/15/2019 Signatory's Name: Cindy N. Pham Signatory's Position: Attorney of Record, CO bar member Signatory's Phone Number: 303-825-9100 Payment Sale Number: 88303678 Payment Accounting Date: 02/19/2019

Serial Number: 88303678 Internet Transmission Date: Fri Feb 15 16:03:53 EST 2019 TEAS Stamp: USPTO/FTK-XX.XXX.XX.XX-20190215160353805 255-88303678-620b3cc8d81635920c6bdc7a26d adc5a1a0d6ceb570d39c8aaba497f9eef32c4f-C C-2796-20190215155534816218

Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 23 of 27 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 24 of 27

Reg. No. 5,888,910 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Dr., Ste. C Registered Oct. 22, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Online retail store services in the field of consumer products, shoes, electronics, Int. Cl.: 35 equipment, parts and accessories used with, or in association with, walking, camping, backpacking, hiking, tailgating, cooking, hunting, fishing, biking, towing, and other outdoor Service Mark recreational activities; Online retail store services in the field of general merchandise and Principal Register general consumer goods used for outdoor recreational activities FIRST USE 7-1-2018; IN COMMERCE 7-1-2018

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 88-238,588, FILED 12-21-2018 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 25 of 27

Reg. No. 5,850,420 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive, Ste. C Registered Sep. 03, 2019 Cranbury, NEW JERSEY 08512 Int. Cl.: 35 CLASS 35: On-line retail store services featuring a wide variety of consumer goods of others FIRST USE 9-10-2018; IN COMMERCE 9-10-2018 Service Mark THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY Principal Register PARTICULAR FONT STYLE, SIZE OR COLOR SER. NO. 88-303,637, FILED 02-15-2019 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 26 of 27

Reg. No. 5,888,911 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Dr., Ste. C Registered Oct. 22, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Online retail store services featuring consumer products, electronics, parts and Int. Cl.: 35 accessories associated with tools, namely, power tools, hand tools, lawn and garden tools, air tools, automotive tools, and construction tools; Online retail store services in the field of Service Mark general merchandise and general consumer goods used for or with tools

Principal Register FIRST USE 7-1-2018; IN COMMERCE 7-1-2018

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 88-238,623, FILED 12-21-2018 Case 1:20-cv-11253-RWZ Document 29-2 Filed 01/22/21 Page 27 of 27

Reg. No. 5,787,891 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Dr., Ste. C Registered Jun. 25, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Online retail store services in the field of electronics, consumer products, parts Int. Cl.: 35 and accessories directed to, or used in association with, trucks, semi-trucks, semi-tractor trailers, fifth wheels, trailers and towing; computerized online ordering featuring general Service Mark merchandise and general consumer goods for those in the field of trucks, semi-trucks, semi- Principal Register tractor trailers, fifth wheels, trailers and towing FIRST USE 7-1-2018; IN COMMERCE 7-1-2018

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT STYLE, SIZE OR COLOR

SER. NO. 88-238,670, FILED 12-21-2018 Case 1:20-cv-11253-RWZ Document 29-3 Filed 01/22/21 Page 1 of 7

To: IDParts LLC ([email protected]) Subject: U.S. Trademark Application Serial No. 86414309 - ID - 10056838 Sent: July 21, 2019 09:52:36 PM Sent As: [email protected] Attachments: Attachment - 1 Attachment - 2 Attachment - 3

United States Patent and Trademark Office (USPTO) Office Action (Official Letter) About Applicant’s Trademark Application

U.S. Application Serial No. 86414309

Mark: ID

Correspondence Address: Matthew Henning MORRISON MAHONEY LLP 250 SUMMER ST FL 1 BOSTON, MA 02210-1181

Applicant: IDParts LLC

Reference/Docket No. 10056838

Correspondence Email Address:

[email protected]

NONFINAL OFFICE ACTION

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Issue date: July 21, 2019

On January 23, 2015, action on this application was suspended pending the disposition of U.S. Application Serial No. 86253327. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.

Section 2(d) Refusal – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5658672. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “ du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc. , 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1744 (TTAB 2018). Case 1:20-cv-11253-RWZ Document 29-3 Filed 01/22/21 Page 2 of 7

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

Applicant has applied for the mark “ID” in stylized font for “On-line retail and wholesale store services featuring auto parts” in International Class 035.

Registrant’s mark is “ID” in stylized font for “Wholesale distributorships featuring automotive parts and accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories” in International Class 035.

Similarity of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

The word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of stylization or a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). Both marks are ID, and thus would be referred to by consumers in the same way.

Therefore the marks are confusingly similar.

Relatedness of the Services

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).

In this case, the services in the application and registration are virtually identical. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.

For the reasons noted above, the marks are similar and the services are related, therefore the application is refused under Section 2(d) for a likelihood of confusion with the registered mark.

Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “ Responding to Office Actions” and the informational video “Response to Office Action ” for more information and tips on responding.

How to respond. Click to file a response to this nonfinal Office action

/Kevin A. Mittler/ Kevin A. Mittler Training Unit Administrator USPTO 571-272-6003 [email protected]

Case 1:20-cv-11253-RWZ Document 29-3 Filed 01/22/21 Page 3 of 7

RESPONSE GUIDANCE Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.

Case 1:20-cv-11253-RWZ Document 29-3 Filed 01/22/21 Page 4 of 7 Case 1:20-cv-11253-RWZ Document 29-3 Filed 01/22/21 Page 5 of 7 Case 1:20-cv-11253-RWZ Document 29-3 Filed 01/22/21 Page 6 of 7 Case 1:20-cv-11253-RWZ Document 29-3 Filed 01/22/21 Page 7 of 7

To: IDParts LLC ([email protected]) Subject: U.S. Trademark Application Serial No. 86414309 - ID - 10056838 Sent: July 21, 2019 09:52:36 PM Sent As: [email protected] Attachments:

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued on July 21, 2019 for U.S. Trademark Application Serial No. 86414309

Your trademark application has been reviewed by a trademark examining attorney. As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned. Please follow the steps below.

(1) Read the official letter.

(2) Direct questions about the contents of the Office action to the assigned attorney below.

/Kevin A. Mittler/ Kevin A. Mittler Training Unit Administrator USPTO 571-272-6003 [email protected]

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3) Respond within 6 months (or earlier, if required in the Office action) from July 21, 2019, using the Trademark Electronic Application System (TEAS). The response must be received by the USPTO before midnight Eastern Time of the last day of the response period. See the Office action for more information about how to respond.

GENERAL GUIDANCE · Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

· Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

· Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees. All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”

Case 1:20-cv-11253-RWZ Document 29-4 Filed 01/22/21 Page 1 of 7 Case 1:20-cv-11253-RWZ Document 29-4 Filed 01/22/21 Page 2 of 7 Case 1:20-cv-11253-RWZ Document 29-4 Filed 01/22/21 Page 3 of 7 Case 1:20-cv-11253-RWZ Document 29-4 Filed 01/22/21 Page 4 of 7 Case 1:20-cv-11253-RWZ Document 29-4 Filed 01/22/21 Page 5 of 7 Case 1:20-cv-11253-RWZ Document 29-4 Filed 01/22/21 Page 6 of 7 Case 1:20-cv-11253-RWZ Document 29-4 Filed 01/22/21 Page 7 of 7 Case 1:20-cv-11253-RWZ Document 29-5 Filed 01/22/21 Page 1 of 1 Case 1:20-cv-11253-RWZ Document 29-6 Filed 01/22/21 Page 1 of 1 Case 1:20-cv-11253-RWZ Document 29-7 Filed 01/22/21 Page 1 of 3 Case 1:20-cv-11253-RWZ Document 29-7 Filed 01/22/21 Page 2 of 3 Case 1:20-cv-11253-RWZ Document 29-7 Filed 01/22/21 Page 3 of 3 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 1 of 20

Aaron P. Bradford (303) 325-5467 [email protected]

March 30, 2020

Sent via email to [email protected]

Peter Noble, President ID PARTS LLC 1257 Franklin Street Duxbury, MA 02332

RE: NOTICE TO ID PARTS, LLC REGARDING ONYX ENTERPRISES INT’L CORP TRADEMARKS

Dear Mr. Noble:

This firm serves as General Counsel to Onyx Enterprises Int’l Corp (“Onyx”) with particular focus upon the protection of Onyx’s intellectual property. My practice has focused upon representing SEMA members and it is my great honor to work with the good people at Onyx. I am writing to open a dialogue regarding your use of Onyx’s central trademark to sell automotive parts and accessories online at www.idparts.com. Since 2009, Onyx has operated an eCommerce platform for the sale of parts and accessories using the iD® brand:

Reg. No. 5658672

Leveraging its famous mark and the goodwill customers associate with the iD® brand, Onyx expanded its suite of eCommerce platforms into other complex part portfolios:

TECHNOLOGY | HEALTH CARE | HOSPITALITY Licensed in Arizona & Colorado | 2701 Lawrence Street, Denver, CO 80205 | www.apb-law.com | (d) 303.325.5467 | (f) 303.927.0809 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 2 of 20

NOTICE TO ID PARTS, LLC Page | 2 March 30, 2020

The effort to build the iD® brand has been consistent, persistent and global since launching www.CARiD.com in 2009. For more than a decade, Onyx has funded and lead a concerted campaign to drive iD® to the center of consumer purchasing for complex products such as automotive parts and accessories. From the outset, Onyx has offered the sale of parts and accessories under the iD® brand, including Volkswagen parts:

(Screen Capture from December 17, 2009)

Today, the vast majority of SEMA members associate the iD® Brand with Onyx and most consumers turn to the Onyx eCommerce platform to reliably purchase automotive parts and accessories from thousands of manufacturers. Without a doubt, the substantial brand power behind the iD® mark that has been developed over time is reflected in the consistent commercial impression, that when consumer and or vendors see iD®, there is no doubt to its quality, service and professionalism.

I did want to share that the iD® brand enjoys substantial state and Federal trademark protections given its ubiquitous and consistent use since 2009. Onyx is the registered owner of the above referenced federal trademark registration for the stylized “iD” logo (Reg. No. 5658672) for “Wholesale distributorships featuring automotive parts and accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories”. See Attachment A. Onyx has been using this stylized iD® logo in some version in connection with its CARiD e- commerce platform since at least 2009.

TECHNOLOGY | HEALTH CARE | HOSPITALITY Licensed in Arizona & Colorado | 2701 Lawrence Street, Denver, CO 80205 | www.apb-law.com | (d) 303.325.5467 | (f) 303.927.0809 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 3 of 20

NOTICE TO ID PARTS, LLC Page | 3 March 30, 2020

Reg. No. 5658672

In addition, Onyx owns the trademark application for its newly stylized iD® logo (Reg. No. 88211256) for “Distributorship services featuring parts and accessories for land vehicles and water vehicles; Distributorship services featuring goods for travel and outdoor recreational activities; Distributorship services featuring tools.” See Attachment B. This application received no opposition and will be approved for registration shortly. Onyx has been using this newly stylized iD® logo in some version in connection with its multiple retail platforms since at least 2013.

Ser. No. 88211256

Further, Onyx has incorporated the iD® Branding into trademarks, such as CARiD. Onyx is the registered owner of the federal trademark, wordmark, registration for CARiD® (Reg. No. 3711746) for “Wholesale distributorships featuring automotive accessories; retail store services featuring automotive accessories; online retail store services featuring automotive accessories.” See Attachment C. Onyx has been using this trademark in connection with its e-commerce platform since at least 2009. In addition, Onyx has registered the following marks: BOATiD®, CAMPERiD®, MOTORCYCLEiD®, POWERSPORTSiD®, RACINGiD®, RECREATIONiD®, STREETiD®, TOOLSiD®, and TRUCKiD® (collectively, the “iD® Brand” or “iD® Marks”).

Onyx has invested significant time and resources developing, promoting, and advertising its iD® Brand. As a SEMA member, you likely are aware of the iD® brand and its recognition and goodwill with manufacturers, distributors, resellers, industry publications, and consumers of vehicle parts and accessories. Onyx is proud of what it has built and has not hesitated to protect the iD® brand from use by others.

It has come to my attention that ID Parts, LLC is operating an eCommerce platform using the domain www.idparts.com for purposes of selling automotive parts and accessories.

TECHNOLOGY | HEALTH CARE | HOSPITALITY Licensed in Arizona & Colorado | 2701 Lawrence Street, Denver, CO 80205 | www.apb-law.com | (d) 303.325.5467 | (f) 303.927.0809 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 4 of 20

NOTICE TO ID PARTS, LLC Page | 4 March 30, 2020

More importantly, ID Parts branding specifically isolates and features the use of “ID” for purposes of selling Automotive parts & accessories.:

(www.idparts.com as captured on 3/26/2020)

(www.facebook.com/IDParts as captured on 3/26/2020)

Based upon our research, ID Parts launched at www.idparts.com in January of 2010, after changing its name from TDI Parts to ID Parts. In an application before the United States Patent and Trademark Office (the “USPTO”), Serial Number 86414309, ID Parts, LLC indicated that the date of first use was April 1, 2011. In either event, the use of ID as part of your branding came well after Onyx established the iD® Brand nationally. As shown

TECHNOLOGY | HEALTH CARE | HOSPITALITY Licensed in Arizona & Colorado | 2701 Lawrence Street, Denver, CO 80205 | www.apb-law.com | (d) 303.325.5467 | (f) 303.927.0809 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 5 of 20

NOTICE TO ID PARTS, LLC Page | 5 March 30, 2020 above, Onyx was selling all manner of parts and accessories, including Volkswagen parts and accessories, before ID Parts launched.

There can be little doubt that your use of “id” to sell automotive parts and accessories infringes Onyx’s iD® marks. In fact, the USPTO rejected your attempt to register the following mark: . The Examiner properly found that the application of this mark was rightfully refused under Sec. 2(d) as the examiner determined there would be a likelihood of confusion with U.S. Registration Number 5658672, which is Onyx’s mark. I am including a copy of that rejection in the event you have not reviewed it. See Attachment D.

In such situations, I prefer to reach out directly and open a dialogue on how we assist you on best solving to facilitate a rebranding effort. I prefer to solve the problem informally, rather than embroil the parties in expensive litigation that will result in the same outcome. I am happy to speak to you directly, or your designated counsel, for purposes of defining a solution that allows you to rebrand while maintaining your operations. We are sensitive to the need to maintain continuity of your operations and will work with you to achieve that so long as the following also occurs:

x You agree to change your name to something that does not include “ID.” This will include using “ID Parts” and “id parts” logos and wordmarks in any way whatsoever, including on your company’s website, on your company’s social media, on any other eCommerce and online platform, and on any printed marketing, sales, correspondence or other materials; x You agree to transfer www.idparts.com to Onyx after you have transitioned your operations to a new domain.

I understand that receiving this kind of lawyer letter can be frustrating and disorientating, particularly at this time in our history where there is much uncertainty arising from the outbreak of the novel Coronavirus. Rest assured that I have been instructed by Onyx to make this transition as painless as possible so long as the transition occurs. I look forward to hearing from you, or your counsel, by April 17, 2020 so that we can start the process.

TECHNOLOGY | HEALTH CARE | HOSPITALITY Licensed in Arizona & Colorado | 2701 Lawrence Street, Denver, CO 80205 | www.apb-law.com | (d) 303.325.5467 | (f) 303.927.0809 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 6 of 20

NOTICE TO ID PARTS, LLC Page | 6 March 30, 2020

This letter is being sent without waiver of Onyx’s rights to take a different course, particularly if no response is received.

TECHNOLOGY | HEALTH CARE | HOSPITALITY Licensed in Arizona & Colorado | 2701 Lawrence Street, Denver, CO 80205 | www.apb-law.com | (d) 303.325.5467 | (f) 303.927.0809 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 7 of 20

ATTACHMENT A Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 8 of 20

5HJ1R 2Q\[(QWHUSULVHV,QW O&RUS 1(:-(56(<&25325$7,21 &RUSRUDWH'ULYH 5HJLVWHUHG-DQ &UDQEXU\1(:-(56(< &/$66  :KROHVDOH GLVWULEXWRUVKLSV IHDWXULQJ DXWRPRWLYH SDUWV DQG DFFHVVRULHV UHWDLO VWRUH ,QW&O VHUYLFHV IHDWXULQJ DXWRPRWLYH SDUWV DQG DFFHVVRULHV RQOLQH UHWDLO VWRUH VHUYLFHV IHDWXULQJ 6HUYLFH0DUN DXWRPRWLYHSDUWVDQGDFFHVVRULHV ),56786(,1&200(5&( 3ULQFLSDO5HJLVWHU 7KHFRORU V ZKLWHDQGJUHHQLVDUHFODLPHGDVDIHDWXUHRIWKHPDUN

7KH PDUN FRQVLVWV RI RI WKH OHWWHULQJ L' WKH L EHLQJ QRQFDSLWDOL]HG WKH ' EHLQJ FDSLWDOL]HGLQZKLWHRQDJUHHQEDFNJURXQG

2:1(52)865(*12

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ATTACHMENT B Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 10 of 20

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

7KH PDUN FRQVLVWV RI WKH OHWWHULQJ L' WKH L EHLQJ QRQFDSLWDOL]HG WKH ' EHLQJ FDSLWDOL]HG

2:1(52)865(*12

6(512),/(' Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 11 of 20

ATTACHMENT C Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 12 of 20 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 13 of 20

ATTACHMENT D Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 14 of 20

To: IDParts LLC ([email protected]) Subject: U.S. Trademark Application Serial No. 86414309 - ID - 10056838 Sent: July 21, 2019 09:52:36 PM Sent As: [email protected] Attachments: Attachment - 1 Attachment - 2 Attachment - 3

United States Patent and Trademark Office (USPTO) Office Action (Official Letter) About Applicant’s Trademark Application

U.S. Application Serial No. 86414309

Mark: ID

Correspondence Address: Matthew Henning MORRISON MAHONEY LLP 250 SUMMER ST FL 1 BOSTON, MA 02210-1181

Applicant: IDParts LLC

Reference/Docket No. 10056838

Correspondence Email Address:

[email protected]

NONFINAL OFFICE ACTION

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Issue date: July 21, 2019

On January 23, 2015, action on this application was suspended pending the disposition of U.S. Application Serial No. 86253327. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.

Section 2(d) Refusal – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5658672. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “ du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc. , 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1744 (TTAB 2018). Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 15 of 20

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

Applicant has applied for the mark “ID” in stylized font for “On-line retail and wholesale store services featuring auto parts” in International Class 035.

Registrant’s mark is “ID” in stylized font for “Wholesale distributorships featuring automotive parts and accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories” in International Class 035.

Similarity of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

The word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of stylization or a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). Both marks are ID, and thus would be referred to by consumers in the same way.

Therefore the marks are confusingly similar.

Relatedness of the Services

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).

In this case, the services in the application and registration are virtually identical. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s services are related.

For the reasons noted above, the marks are similar and the services are related, therefore the application is refused under Section 2(d) for a likelihood of confusion with the registered mark.

Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “ Responding to Office Actions” and the informational video “Response to Office Action ” for more information and tips on responding.

How to respond. Click to file a response to this nonfinal Office action

/Kevin A. Mittler/ Kevin A. Mittler Training Unit Administrator USPTO 571-272-6003 [email protected]

Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 16 of 20

RESPONSE GUIDANCE Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.

Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 17 of 20 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 18 of 20 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 19 of 20 Case 1:20-cv-11253-RWZ Document 29-8 Filed 01/22/21 Page 20 of 20

To: IDParts LLC ([email protected]) Subject: U.S. Trademark Application Serial No. 86414309 - ID - 10056838 Sent: July 21, 2019 09:52:36 PM Sent As: [email protected] Attachments:

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued on July 21, 2019 for U.S. Trademark Application Serial No. 86414309

Your trademark application has been reviewed by a trademark examining attorney. As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned. Please follow the steps below.

(1) Read the official letter.

(2) Direct questions about the contents of the Office action to the assigned attorney below.

/Kevin A. Mittler/ Kevin A. Mittler Training Unit Administrator USPTO 571-272-6003 [email protected]

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3) Respond within 6 months (or earlier, if required in the Office action) from July 21, 2019, using the Trademark Electronic Application System (TEAS). The response must be received by the USPTO before midnight Eastern Time of the last day of the response period. See the Office action for more information about how to respond.

GENERAL GUIDANCE · Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

· Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

· Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees. All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”

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EXHIBIT B

Case 1:20-cv-11253-RWZ Document 31 Filed 02/05/21 Page 1 of 61

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS

PARTS ID, LLC,

Plaintiff, Civil Action No. 20-cv-11253 v.

IDPARTS LLC,

Defendant.

IDPARTS LLC,

Counterclaim Plaintiff,

v.

PARTS ID, LLC and PARTS ID, INC.,

Counterclaim Defendants.

IDPARTS’ ANSWER, AFFIRMATIVE DEFENSES, AND COUNTERCLAIMS TO PARTS ID’S SECOND AMENDED COMPLAINT

Defendant and Counterclaim Plaintiff IDParts LLC submits its answer, affirmative defenses, and counterclaims to Plaintiff and Counterclaim Defendant PARTS iD, LLC’s (“PARTS iD”) Second Amended Complaint.

NATURE OF ACTION

Complaint Paragraph No. 1

This case involves the Defendant’s infringement of PARTS iD’s brand and most prominent house mark, the iD® Mark, as Parts iD has used in connection with the sale of automotive parts and accessories since 2009.

Answer No. 1

Defendant denies.

1

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Complaint Paragraph No. 2

ID Parts has been selling automotive parts and accessories on the website www.idparts.com. ID Parts has been copying PARTS iD’s trademark in order to benefit from the national name recognition and good will associated with PARTS iD’s signature iD® brand, to mislead consumers into believing that www.idparts.com is associated with Plaintiff iD® brand, and ultimately to divert market share away from PARTS iD.

Answer No. 2

Defendant admits that it sells automotive parts and accessories on its website,

www.idparts.com; otherwise, Defendant denies.

Complaint Paragraph No. 3

Defendant’s infringement of PARTS iD’s distinctive signature iD® Mark and its unauthorized use of its likeness encroach upon any reasonable notion of fair competition. PARTS iD thus brings this action for damages and injunctive relief for trademark infringement, unfair competition, and false designation of origin pursuant to the Lanham Act (15 U.S.C. § 1051, et seq.), and trademark infringement, unfair competition, and deceptive trade practices pursuant to the common law of Massachusetts and G.L.c. 93(a) § 2.

Answer No. 3

Defendant admits that Plaintiff seeks damages and injunctive relief in its amended

complaint and that Plaintiff purports to state claims for trademark infringement, unfair

competition, and false designation of origin pursuant to the Lanham Act (15 U.S.C. § 1051, et

seq.), and trademark infringement, unfair competition, and deceptive trade practices pursuant to the common law of Massachusetts and G.L.c. 93(a) § 2; otherwise, Defendant denies.

PARTIES

Complaint Paragraph No. 4

Onyx was a New Jersey corporation having a principal place of business at 1 Corporate Drive, Suite C, Cranbury New Jersey 08512.

Answer No. 4

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Defendant admits that Onyx Enterprises Int’l, Corp., is or was a New Jersey corporation, but otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 5

PARTS iD, LLC is a Delaware limited liability company having a principal place of business at 1 Corporate Drive, Suite C, Cranbury New Jersey 08512. PARTS iD merged with and acquired Onyx in November 2020. In so doing, PARTS iD acquired the iD® Mark and all associated rights, privileges, and goodwill developed by Onyx as summarized in this Second Amended Complaint.

Answer No. 5

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 6

Upon information and belief, ID Parts is a Massachusetts corporation having a principal place of business at 1257 Franklin Street, Duxbury, MA 023320. Upon information and belief, ID Parts owns, operates, and controls the website www.idparts.com.

Answer No. 6

Defendant denies that it is a Massachusetts corporation, though admits that it is a

Massachusetts limited liability company and that it owns, operates, and controls the website www.idparts.com. Defendant further denies that its principal place of business is at 1257 Franklin

Street, Duxbury, MA 023320; Defendant admits it has a principal place of business at 3 Pond Park

Road, Hingham, MA 02043.

JURISDICTION AND VENUE

Complaint Paragraph No. 7

This Court has subject matter jurisdiction over the asserted claims under 15 U.S.C. § 1121, 28 U.S.C. §§ 1331, 1338(a), and 1338(b).

Answer No. 7

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Defendant admits.

Complaint Paragraph No. 8

This Court has supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a) over PARTS iD’s state and common law claims because those claims are so related to the federal claims that they form part of the same case or controversy.

Answer No. 8

Defendant admits.

Complaint Paragraph No. 9

This Court has personal jurisdiction over ID Parts, a Massachusetts limited liability company, as it has committed tortious acts in this District, maintains a website accessible in this District, and has and will continue to transact substantial business in this District. ID Parts also regularly solicits business from, does business with, and derives value from goods and services provided to consumers in this District.

Answer No. 9

Defendant admits that this Court has personal jurisdiction over it in this suit as a

Massachusetts limited liability company that operates a website accessible in this District and transacts business in this District from which it derives value, but denies the remaining contentions, including that it has committed tortious acts in this District.

Complaint Paragraph No. 10

Venue is proper within this District pursuant to 28 U.S.C. § 1391(b) and (c) and under 28 U.S.C. § 1400(b) because ID Parts resides within this Judicial District. Venue is also proper pursuant to 28 U.S.C. § 1391(b)(2) because a substantial part of the property that is the subject of the claims contained herein is located within this District.

Answer No. 10

Defendant admits.

FACTUAL ALLEGATIONS

Complaint Paragraph No. 11

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As early as 2008, Onyx deployed its iD® Mark to brand its eCommerce platform designed to sell complex product portfolios. For more than a decade, Onyx has been singularly focused upon the creation of a unique, comprehensive, and reliable online customer experience for those seeking to purchase automotive products, both original equipment (“OE”) and aftermarket (“AM”) parts. By reliably connecting consumers to millions of products from thousands of brands, Onyx drove consumer confidence in the purchase of automotive products online and established the iD® brand as the leader in online automotive product sales.

Answer No. 11

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 12

Onyx was, and PARTS id remains, a pure online retailer. When formed, the market for the online purchase of automotive parts was minimal. In 2008, Onyx launched its first iD® branded platform, www.CARiD.com, and funded a consistent and persistent effort to compete with traditional channels for the sale of automotive products by creating demand for products online.

Answer No. 12

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 13

Onyx deployed the following iD® Marks on its eCommerce platform in the first year of operation:

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Answer No. 13

Defendant denies.

Complaint Paragraph No. 14

To protect the above iD® Mark, Onyx sought and was granted trademark protection for CARID as detailed in Trademark Registration No. 3711746.

Answer No. 14

Defendant admits that the U.S. Patent & Trademark Office (“USPTO”) lists Onyx as the current owner of the CARID mark as depicted in Reg. No. 3,711,746; otherwise, Defendant denies.

Complaint Paragraph No. 15

To compete with traditional automotive retailers and create consumer confidence for the online purchase of automotive products, Onyx spent hundreds of millions of dollars constructing a proprietary platform coupled with a comprehensive product catalog featuring millions of

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OE/AM products from thousands of brands. Onyx integrated customer service and consumer education components to create a comprehensive online experience that customers enjoy and companies respect. PARTS iD has continued this operation following the merger.

Answer No. 15

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 16

Through this effort, Onyx has grown the iD® brand into one of the largest online retailers of automotive products in the United States. At the time it was formed in 2008, online traffic for the sale of automotive products was virtually non-existent, as depicted below. Today, Onyx receives over 10 million visitors to its site each month, nearly three times its closest online competitor, as depicted below. PARTS iD continues to enjoy and expand these results following the merger.

Answer No. 16

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 17

Figure 1 is a graphical representation from a marketing analytics firm of monthly clicks directed at some of the top pure online retailers from 2006 through the present:

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Answer No. 17

Defendant admits that Figure 1 contains a graphic; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 18

Figure 2 is a graphical representation of the number of monthly clicks directed at some of the top pure online retailers from 2015 through the present:

Answer No. 18

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Defendant admits that Figure 2 contains a graphic; otherwise, Defendant is without

knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and

denies.

Complaint Paragraph No. 19

After Onyx launched its iD® platform in 2008, traditional automotive product retailers such as AutoZone, Advanced Auto Parts, O’Reilly Auto/Pep Boys, and NAPA started to heavily invest in eCommerce. Specialty brick and mortar retailers, such as 4 Wheel Parts and others, also followed suit. Figure 3 is a graphical representation of the performance, expressed in terms of monthly clicks, of the top six traditional retailers’ domains from 2006 through the present.

Answer No. 19

Defendant admits that Figure 3 contains a graphic; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and

denies.

Complaint Paragraph No. 20

Through its concerted campaign to drive its iD® Mark to the center of consumer purchasing for automotive parts and accessories, Onyx has outperformed all traditional retailers online other than AutoZone:

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Answer No. 20

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 21

Figure 4 is a graphical representation of the number of monthly clicks on the indicated domains from 2015 through the present.

Answer No. 21

Defendant admits that Figure 4 contains a graphic; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 22

To achieve these results, Onyx committed substantial resources to ensure that it would perform relative to its competition, both traditional retailers and the field of pure eCommerce retailers. Onyx has spent nearly $200 million in marketing its brand. PARTS iD continues this capital expenditure following the merger.

Answer No. 22

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

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Complaint Paragraph No. 23

To maintain its position relative to eCommerce and traditional retailers, Onyx has similarly outspent the competition to drive traffic to its iD® Branded platforms, a trend that continues following its merger with PARTS iD.

Answer No. 23

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 24

As a result of its efforts, PARTS iD’s online presence exceeds the profiles of its top online competitors:

Answer No. 24

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 25

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Like the end consumer, most automotive product manufacturers, both OE and AM, associate the iD® brand with PARTS iD and its unique, comprehensive, and reliable eCommerce platform. PARTS iD works with manufacturers and distributors of OE and AM products (“the Brands”) to build educational tools and product pages to connect the right customer, with the right Brand, for the right car. The Brands associate the iD® Mark with quality service and professional product placement.

Answer No. 25

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 26

The substantial brand power behind the iD® Mark that has been developed for over a decade is reflected in a consistent commercial impression: When consumers and/or Brands see the iD® Mark with its unique properties and design elements, they know to expect quality, service, and professionalism, deriving from a very specific and distinguishable source.

Answer No. 26

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 27

Leveraging its famous mark and the goodwill customers associate with the iD® brand, Onyx expanded its suite of eCommerce platforms into other complex market product portfolios, a suite that PARTS iD continues to advance following the merger.

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Answer No. 27

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 28

For example, Onyx developed and released its MOTORCYCLEiD® mark in July 2018. Similar to CARiD®, MOTORCYCLEiD® conveys to customers that they can come to Onyx—and MOTORCYCLEiD®—to identify the unique parts and pieces that are suited for that customer’s particular motorcycle.

Answer No. 28

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 29

For example, Onyx developed and released its TRUCKiD® mark in July 2018. Similar to CARiD®, TRUCKiD® conveys to customers that they can come to Onyx—and TRUCKiD®—to identify the unique parts and pieces that are suited for that customer’s particular semi-truck or other oversized or commercial vehicle.

Answer No. 29

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 30

Onyx’s iD® Mark and the reputation it has developed in association with its iD® trademark and iD® brand have grown based on the quality associated with them. Consequently, Onyx has registered the following marks: BOATiD®, CAMPERiD®, MOTORCYCLEiD®, POWERSPORTSiD®, RECREATIONiD®, STREETiD®, TOOLSiD®, and TRUCKiD®. Onyx has launched associated eCommerce platforms utilizing the same trade dress.

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Answer No. 30

Defendant admits that the USPTO” lists Onyx as the registrant of the registered marks

BOATID, CAMPERID, MOTORCYCLEID; POWERSPORTSID, RECREATIONID,

STREETID, TOOLSID, and TRUCKID; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 31

PARTS iD has secured new domains such as www.RIMSiD.com, www.IDAutoMall.com and www.TireID.com through acquisition and enforcement of its iD® Mark.

Answer No. 31

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 32

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Onyx’s CARiD® branded services have received consistently high ratings, a trend that continues following the merger with PARTS iD.

Answer No. 32

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 33

PARTS iD has an “Elite” rating of 9.5/10 out of about 102,877 reviews on www.ResellerRatings.com. Based on the reviews submitted within the last six months, PARTS iD’s CARiD® branded services has an average customer service rating of 9.09/10 and a “chance of future purchase” rating of 8.99/10.

Answer No. 33

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 34

PARTS iD has an “A+” rating with the Better Business Bureau.

Answer No. 34

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 35

PARTS iD has a 4.7 out of 5 on Google Reviews based upon just under 10,000 reviews.

Answer No. 35

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 36

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PARTS iD’s CARiD® Facebook page currently has a 4.4/5 rating out of about 20,088 reviews.

Answer No. 36

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 37

The CARiD® Instagram account currently has approximately 39,000 followers while the CARiD® Facebook account currently has over 2.5 million followers. The CARiD® YouTube Channel has over 69,100 subscribers and over 35.6 million views.

Answer No. 37

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 38

As a result of its efforts, including its extensive financial investment, Onyx made a substantial amount of sales through its iD® brand in the United States and abroad, a trend that continues with the merger with PARTS iD. Sales of products sold through CARiD® and other iD® branded services have far exceeded those of PARTS iD’s direct competitors in the United States and abroad.

Answer No. 38

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 39

In addition to the strong consumer recognition, the iD® brand enjoys substantial state and federal trademark protections given its ubiquitous and consistent use since 2008. PARTS iD is the registered owner of the federal trademark registration for the stylized “iD” logo (Reg. No. 5658672) for “Wholesale distributorships featuring automotive parts and accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories.” See Exhibit 1.

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Answer No. 39

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 40

PARTS iD owns the trademark application for its newly-stylized iD® logo (Reg. No. 5804750) for “Distributorship services featuring parts and accessories for land vehicles and water vehicles; Distributorship services featuring goods for travel and outdoor recreational activities; Distributorship services featuring tools.”

Answer No. 40

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 41

This application received no opposition and was registered on the Principal Register on July 16, 2019. PARTS iD and Onyx have been using this newly stylized iD® logo in some version in connection with its multiple retail platforms since at least 2013.

Answer No. 41

Defendant admits that Onyx’s application for the stylized mark shown above (Serial No.

88/211,256) received no opposition and was registered on the Principal Register as Reg. No.

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5,804,750; otherwise Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 42

PARTS iD is the registered owner of the federal trademark, wordmark, and registration for CARiD® (Reg. No. 3711746) for “Wholesale distributorships featuring automotive accessories; retail store services featuring automotive accessories; online retail store services featuring automotive accessories.” PARTS iD and Onyx have been using this trademark in connection with its eCommerce platform since at least 2008. For avoidance of doubt, PARTS iD identifies Trademark Registration Nos. 3711746, 5658672, 5804750, 6096254, and 6100524 as the “iD® Mark.”

Answer No. 42

Defendant denies that the CARID mark, as depicted in Reg. Nos. 3,711,746 and 6,100,524, qualifies as an iteration of Plaintiff’s alleged iD mark; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 43

PARTS iD owns U.S. Trademark Registrations and pending U.S Trademark Applications for the following marks, copies of which are attached as Exhibit 2:

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Answer No. 43

Defendant admits that Exhibit 2 contains the USPTO records for the registrations and

applications above; otherwise, Defendant is without knowledge or information sufficient to form

a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 44

Registration No. 3711746 is “incontestable” under § 15 U.S.C. § 1065, and thereby is conclusive evidence of the validity of the registered mark and of PARTS iD’s ownership of the mark.

Answer No. 44

Plaintiff’s allegations in paragraph 40 consist entirely of a legal conclusion to which no response is required. To the extent a response is required, Defendant states that the USPTO records reflect that Onyx filed a declaration pursuant to § 1065 and it was accepted by the USPTO and otherwise denies.

Complaint Paragraph No. 45

Consequently, its iD® brands have become distinctive and well-known in the industry as a symbol of PARTS iD’s goodwill with manufacturers, distributors, resellers, industry publications, and consumers of vehicle parts and accessories. The breadth and scope of PARTS iD’s offerings is extensive, and many of the parts comprising a vehicle could be purchased through the platform. As a result, its stylized iD® Mark has become famous and a strong indicator of source and affiliation. PARTS iD also owns valid and subsisting common law right in the marks depicted below, which PARTS iD has continuously used in interstate commerce for many years:

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Answer No. 45

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 46

Onyx enforced its intellectual property rights to ensure the integrity and strength of its iD® brands. See, e.g., Onyx, Enters. Int'l, Corp. v. Guangzhou Zezhong Elecs. Co., Ltd., No. 1:18-cv- 03226 (D. Colo. filed Dec. 14, 2018) and Onyx, Enters. Int'l, Corp. v. Sloan Int'l Holdings Corp., No. 0:20-cv-60871-RKA (S.D. Fla. filed Apr. 29, 2020).

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Answer No. 46

Defendant admits that Onyx filed two lawsuits against, respectively, Guangzhou Zezhong

Elecs. Co., Ltd. and Sloan Int'l Holdings Corp.; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 47

On November 2, 2008, Mr. Peter Noble registered an LLC in Massachusetts under the name “TDIParts LLC.”

Answer No. 47

Defendant admits.

Complaint Paragraph No. 48

On or about December 15, 2009—after Onyx launched its first iD® branded ecommerce site at www.CARiD.com—Mr. Noble filed a Certificate of Amendment with the Massachusetts Secretary of the Commonwealth, amending the name of the LLC from “TDI Parts LLC” to “IDPARTS LLC.”

Answer No. 48

Defendant admits that Peter Noble filed a Certificate of Amendment with the

Massachusetts Secretary of the Commonwealth, amending the name of Defendant’s LLC from

“TDI Parts LLC” to “IDPARTS LLC” on or about December 15, 2009; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 49

Upon information and belief, after its incorporation and subsequent name change, ID Parts began to operate and control the www.idparts.com website, its social media accounts, and to provide retail services for automotive parts and accessories under the infringing www.idparts.com domain name.

Answer No. 49

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Defendant admits that after its incorporation and subsequent name change, it began to

operate and control the www.idparts.com website, its social media accounts, and provides retail

services for automotive parts and accessories, but otherwise denies.

Complaint Paragraph No. 50

Upon information and belief, ID Parts is the registered owner of the www.idparts.com website.

Answer No. 50

Defendant admits.

Complaint Paragraph No. 51

Upon information and belief, ID Parts had full knowledge of Plaintiff’s ownership of the iD® Mark, including Plaintiff’s use of the following stylized marks on or about the dates indicated:

Answer No. 51

Defendant denies.

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Complaint Paragraph No. 52

Upon information and belief, ID Parts had full knowledge of Plaintiff’s ownership of the iD® Mark, including Plaintiff’s exclusive rights to use and license such intellectual property and the goodwill associated therewith.

Answer No. 52

Defendant denies.

Complaint Paragraph No. 53

On October 3, 2014, ID Parts applied to register its infringing ID mark: (the “Infringing ID Mark”) on the principal register with the United States Patent and Trademark Office under Serial No. 86414309.

Answer No. 53

Defendant admits that it filed a trademark application (Serial No. 86/414,309) with the

USPTO on October 3, 2014 to register its stylized mark, shown above, but otherwise denies.

Complaint Paragraph No. 54

On July 21, 2019, the USPTO issued a non-final office action informing ID Parts that registration of its Infringing ID Mark was refused due to a likelihood of confusion in the market between Defendant’s Infringing ID Mark and Plaintiff’s iD® Mark. See Exhibit 3. ID Parts did not file a response to the office action, and the mark was deemed abandoned by the USPTO on April 14, 2020.

Answer No. 54

Defendant admits that the USPTO issued a non-final office action on July 21, 2019 refusing

registration of Defendant’s stylized mark (Serial No. 86/414,309) on the ground of a likelihood of

confusion with Onyx’s registered mark (Reg. No. 5,658,672); that Defendant did not file a

response to the office action; and that the application was deemed abandoned by the USPTO on

April 14, 2020; Defendant otherwise denies the remaining allegations.

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Complaint Paragraph No. 55

Despite receiving a non-final office action of refusal specifically stating that there is a likelihood of confusion between the Infringing ID Mark and Plaintiff’s iD® Mark, and receiving a Notice of Abandonment from the USPTO, ID Parts continues to use its Infringing ID Mark to distribute and sell identical and/or similar automotive parts and accessories as PARTS iD..

Answer No. 55

Defendant admits that the USPTO issued a non-final office action refusing registration of

Defendant’s stylized mark (Serial No. 86/414,309) on the ground of a likelihood of confusion with

Onyx’s registered mark (Reg. No. 5,658,672) and that Defendant uses its ID mark to distribute and sell automotive parts and accessories; Defendant otherwise denies the remaining allegations, including that its principals were aware of and received the office action and notice of abandonment.

Complaint Paragraph No. 56

ID Parts has marketed, and continues to market, its retail services for automotive parts and accessories into the same channels of trade as PARTS iD and to the same types of consumers.

Answer No. 56

Defendant admits that it provides retail services for automotive parts and accessories;

otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth

of Plaintiff’s allegations and denies.

Complaint Paragraph No. 57

The www.idparts.com website, social media accounts, and marks directly incorporate Plaintiff’s iD® Mark and are identical in spelling and sound to Plaintiff’s iD® Mark, and often duplicate the color scheme as used by PARTS iD, which is depicted in the below side-by-side comparisons:

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Answer No. 57

Defendant admits that column labeled “Defendant’s Infringing ID Mark” contains accurate depictions of Defendant’s ID mark as used on Defendant’s website and social media accounts; otherwise, Defendant denies.

Complaint Paragraph No. 58

True and correct copies of the website screenshots for PARTS iD’s current CARiD, BOATiD, CAMPERiD, MOTORCYCLEiD, POWERSPORTSiD, RECREATIONiD, TOOLSiD, and TRUCKiD websites depicting the above-referenced complimentary iD® Marks are attached as Exhibit 4.

Answer No. 58

Defendant admits that website screenshots for the websites CARiD, BOATiD,

MOTORCYCLEiD, POWERSPORTSiD, RECREATIONiD, TRUCKiD, and TOOLSiD are attached to the complaint as Exhibit 4, but otherwise denies.

Complaint Paragraph No. 59

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A true and correct copy of the website screenshot for the www.idparts.com website, as captured on May 31, 2020, is attached as Exhibit 5. A true and correct copy of the website screenshot showing the thumbnail from the current www.idparts.com website is attached as Exhibit 6. True and correct copies of the website screenshots for the ID Parts Facebook, Instagram, and Twitter accounts are attached as Exhibit 7.

Answer No. 59

Defendant denies that Exhibit 6 displays a thumbnail from the current www.idparts.com website; otherwise, Defendant admits.

Complaint Paragraph No. 60

Upon information and belief, ID Parts initially created the www.idparts.com website and name with the intention of creating consumer confusion and passing off the www.idparts.com retail service as being associated with Plaintiff’s iD® Mark.

Answer No. 60

Defendant denies.

Complaint Paragraph No. 61

At all relevant times, PARTS iD began using its iD® Mark, namely Reg. No.

3711746, prior to Defendant’s use of its Infringing ID Mark utilizing the term “ID”.

Answer No. 61

Defendant denies.

Complaint Paragraph No. 62

ID Parts has acted purposefully and in bad faith to usurp the substantial goodwill that PARTS iD has developed under its iD® Mark to confuse and deceive consumers into believing that the www.idparts.com website and services are in some way affiliated or connected to Plaintiff’s iD® brand when it is not.

Answer No. 62

Defendant denies.

Complaint Paragraph No. 63

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ID Parts has made and will continue to make substantial profits and gains off of the goodwill and value PARTS iD has acquired through their iD® Mark, to which ID Parts is not in law or equity entitled.

Answer No. 63

Defendant denies.

Complaint Paragraph No. 64

PARTS iD is not affiliated or connected with ID Parts or its services, nor has PARTS iD endorsed or sponsored ID Parts or its services.

Answer No. 64

Defendant admits.

Complaint Paragraph No. 65

PARTS iD has not in any way authorized Defendant’s use of Plaintiff’s iD® Mark or its likeness.

Answer No. 65

Subject to Defendant’s affirmative defenses, Defendant admits that Plaintiff has not licensed its alleged mark to Defendant and otherwise denies.

Complaint Paragraph No. 66

PARTS iD has no control over the nature and quality of the services or goods that ID Parts provides through the www.idparts.com website or under the Infringing ID Mark.

Answer No. 66

Defendant admits that Plaintiff has no control over the nature and quality of the services or goods that Defendant provides through the www.idparts.com website or under Defendant’s ID mark; otherwise, Defendant denies.

Complaint Paragraph No. 67

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Upon information and belief, ID Parts does not provide services through the infringing www.idparts.com website or Infringing ID Mark that meet the high standard and quality that consumers have come to associate with Plaintiff’s iD® Mark.

Answer No. 67

Defendant denies.

Complaint Paragraph No. 68

Defendant’s use of the infringing www.idparts.com website and the Infringing ID Mark have harmed, and will continue to cause harm, to the goodwill symbolized by Plaintiff’s iD® Mark and the reputation for quality and excellence that it embodies.

Answer No. 68

Defendant denies.

Complaint Paragraph No. 69

On March 30, 2020, shortly after discovering Defendant’s use of the infringing www.idparts.com website and the Infringing ID Mark, Plaintiff notified ID Parts of its rights in its iD® Mark and requested that ID Parts cease using the infringing www.idparts.com website and iD® Mark. See Exhibit 8. ID Parts acknowledged receipt of the notice via e-mail reply on April 14, 2020. See Exhibit 9. Plaintiff communicated with ID Parts again on May 7, 2020 to again request it cease and desist its unlawful use of Plaintiff’s iD® Mark (Exhibit 10), but ID Parts did not reply to or acknowledge this second notice.

Answer No. 69

Defendant admits that Onyx sent Defendant a letter on March 30, 2020 alleging that

Defendant had infringed its alleged iD mark and requesting that Defendant cease using the

www.idparts.com website and ID mark; that Defendant responded via email on April 14, 2020;

that Onyx sent Defendant a subsequent email on May 7, 2020; and that Defendant did not

immediately respond to Plaintiff’s May 7, 2020 email; otherwise, Defendant denies.

Complaint Paragraph No. 70

Rather than cease using the infringing www.idparts.com website and the Infringing ID Mark as requested, ID Parts failed to respond any further to Plaintiff’s attempts to negotiate and has not changed anything on the its infringing www.idparts.com website.

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Answer No. 70

Defendant admits that it continues to use its ID mark and www.idparts.com website and that it did not immediately respond to Onyx’s May 7, 2020 email; otherwise, Defendant denies.

Complaint Paragraph No. 71

ID Parts continues to advertise, market, and sell competing automotive parts and accessories in the same industry and through the same channels of trade as PARTS iD using its infringing www.idparts.com website and Infringing ID Mark.

Answer No. 71

Defendant admits that it continues to use its ID mark and www.idparts.com website to advertise, market, and sell select automotive parts and accessories; otherwise, Defendant is without knowledge or information sufficient to form a belief as to the truth of Plaintiff’s allegations and denies.

Complaint Paragraph No. 72

Absent injunctive relief, PARTS iD will continue to suffer irreparable harm in the loss of control of its reputation and goodwill in its iD® Mark.

Answer No. 72

Defendant denies.

Complaint Paragraph No. 73

This and all other damage to PARTS iD reputation and goodwill in its iD® Mark and brand resulting from the conduct alleged in this action cannot be easily quantified nor could it be undone through an award of money damages alone.

Answer No. 73

Defendant denies.

Count I Federal Trademark Infringement of U.S. Trademark Reg. Nos. 3711746, 5658672, 5804750,

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6096254, and 6100524 in Violation of 15. U.S.C. § 1114(1)

Complaint Paragraph No. 74

PARTS iD incorporates the allegations in Paragraphs 1 through 73 as if fully set forth herein.

Answer No. 74

Defendant incorporates herein, as if stated in full, its responses to the foregoing paragraphs.

Complaint Paragraph No. 75

PARTS iD is the owner of all right, title, and interest in, to and under its iD® Mark, specifically Trademark Reg. Nos. 3711746, 5658672, 5804750, 6096254, and 6100524, and all goodwill appurtenant thereto.

Answer No. 75

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 76

PARTS iD’s federal registrations on the Principal Register are prima facie evidence of validity and PARTS iD’s exclusive right to use the marks pursuant to 15 U.S.C. § 1115.

Answer No. 76

Plaintiff’s allegations in paragraph 76 consist entirely of a legal conclusion to which no response is required.

Complaint Paragraph No. 77

Plaintiff;s iD® Mark has been continuously and widely used by PARTS iD nationwide, abroad, and on its eCommerce platforms. PARTS iD intends to preserve and maintain its rights to, and continued use of, the iD® Mark.

Answer No. 77

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

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Complaint Paragraph No. 78

Without PARTS iD’s consent, ID Parts has used, and continues to use reproductions, copies, or colorable imitations of PARTS iD’s identified marks mark in connection with the sale, offering for sale, distribution, or advertising of goods or services on orin interstate commerce in connection with the promotion, advertisement, and operation of identical distributorship and retail store services, and specifically automotive products.

Answer No. 78

Defendant admits that it uses its ID mark in connection with the promotion, advertisement,

and operation of retail store services for automotive products and that Plaintiff has not licensed its

alleged mark to Defendant; otherwise, Defendant denies.

Complaint Paragraph No. 79

Defendant’s unauthorized use of Plaintiff’s iD® Mark, and/or confusingly similar variations thereof, is causing and is likely to continue to cause confusion, or to cause mistake, or to deceive, consumers and the relevant public into falsely believing that ID Parts is affiliated, connected, or associated with Plaintiff’s iD® Mark.

Answer No. 79

Defendant denies.

Complaint Paragraph No. 80

The acts of ID Parts as alleged herein and above constitute trademark infringement, in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114.

Answer No. 80

Defendant denies.

Complaint Paragraph No. 81

ID Parts has engaged in this conduct knowingly, willfully, and in bad faith, in total disregard of PARTS iD’s proprietary rights. Even though ID Parts received notice of its infringement, ID Parts intentionally and willfully continues their unauthorized use of Plaintiff’s iD® Mark. PARTS iD is therefore entitled to statutory and treble damages.

Answer No. 81

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Defendant denies.

Complaint Paragraph No. 82

Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

Answer No. 82

Defendant denies.

Complaint Paragraph No. 83

As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill.

Answer No. 83

Defendant denies.

Complaint Paragraph No. 84

PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

Answer No. 84

Defendant denies.

Complaint Paragraph No. 85

PARTS iD is therefore entitled to recover actual and treble damages, attorney fees, and costs pursuant to 15 U.S.C. §§ 1114 and 1117 and injunctive relief pursuant to 15 U.S.C. § 1116.

Answer No. 85

Defendant denies.

COUNT II Unfair Competition and False Designation of Origin in Violation of 15. U.S.C. § 1125(a)

Complaint Paragraph No. 86

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PARTS iD incorporates the allegations in Paragraphs 1 through 85 as if fully set forth herein.

Answer No. 86

Defendant incorporates herein, as if stated in full, its responses to the foregoing paragraphs.

Complaint Paragraph No. 87

PARTS iD is the owner of all right, title, and interest in, to and under its iD® Mark, and all goodwill appurtenant thereto.

Answer No. 87

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 88

Plaintiff’s iD® Mark has been continuously and widely used by PARTS iD nationwide, abroad, and on its eCommerce platforms. PARTS iD intends to preserve and maintain its rights to the iD® Mark and to continue the use of the iD® Mark in connection with its distributorship and retail store services relating to the distribution and sale of automotive products.

Answer No. 88

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 89

By virtue of the renown of the iD® Mark, the iD® Mark has developed secondary meaning and significance in the mind of the relevant public. Goods and services associated with the iD® Mark are immediately associated by the purchasing public with Plaintiff’s iD® Mark and its automotive product-based eCommerce platforms.

Answer No. 89

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

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Complaint Paragraph No. 90

Without PARTS iD’s consent, ID Parts has used, and continues to use PARTS iD’s iD® Mark or confusingly similar variations thereof, in interstate commerce in connection with the promotion, advertisement, and operation of identical distributorship and retail store services, and specifically automotive products.

Answer No. 90

Defendant admits that it uses its ID mark in connection with the promotion, advertisement,

and operation of retail store services for automotive products and that Plaintiff has not licensed its

alleged mark to Defendant; otherwise, Defendant denies.

Complaint Paragraph No. 91

Defendant’s unauthorized use of PARTS iD’s iD® Mark, and/or confusingly similar variations thereof, is causing and is likely to continue to cause confusion, or to cause mistake, or to deceive, consumers and the relevant public into falsely believing that ID Parts is affiliated, connected, or associated with Plaintiff’s iD® Mark.

Answer No. 91

Defendant denies.

Complaint Paragraph No. 92

The acts of ID Parts as alleged herein and above constitute unfair competition and/or false designation of origin in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

Answer No. 92

Defendant denies.

Complaint Paragraph No. 93

ID Parts has engaged in this conduct knowingly, willfully, and in bad faith, in total disregard of PARTS iD’s proprietary rights. Even though ID Parts received notice of its infringement, ID Parts intentionally and willfully continues their unauthorized use of Plaintiff’s iD® Mark. PARTS iD is therefore entitled to statutory and treble damages.

Answer No. 93

Defendant denies.

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Complaint Paragraph No. 94

Defendant’s conduct has deprived PARTS iD of its rightful ability to control the quality of goods and services uniquely associated with Plaintiff’s iD® Mark and to ensure that their associated, valuable goodwill, and reputation are protected. Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

Answer No. 94

Defendant admits that Plaintiff has no control over the quality of the services or goods that

Defendant provides under Defendant’s ID mark; otherwise, Defendant denies.

Complaint Paragraph No. 95

As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill.

Answer No. 95

Defendant denies.

Complaint Paragraph No. 96

PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

Answer No. 96

Defendant denies.

Complaint Paragraph No. 97

PARTS iD is therefore entitled to recover actual and treble damages, attorney fees, and costs pursuant to 15 U.S.C. § 1114 and 1117 and injunctive relief pursuant to 15 U.S.C. § 1116.

Answer No. 97

Defendant denies.

COUNT III Trademark Infringement in Violation of Massachusetts Common Law

Complaint Paragraph No. 98

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PARTS iD incorporates the allegations in Paragraphs 1 through 91 as if fully set forth herein.

Answer No. 98

Defendant incorporates herein, as if stated in full, its responses to the foregoing paragraphs.

Complaint Paragraph No. 99

PARTS iD is the owner of valid common law rights in the iD® Mark which it has used continuously and in connection with PARTS iD’s goods and services prior to Defendant’s unauthorized use of the Infringing ID Mark.

Answer No. 99

Defendant denies.

Complaint Paragraph No. 100

Defendant’s conduct as set forth above constitutes trademark infringement in violation of Massachusetts common law.

Answer No. 100

Defendant denies.

Complaint Paragraph No. 101

ID Parts is promoting and otherwise advertising its automotive retail store services under marks that are identical or confusingly similar variations of Plaintiff’s iD® Mark.

Answer No. 101

Defendant admits that it promotes and advertises its retail services for automotive parts and accessories; otherwise, Defendant denies.

Complaint Paragraph No. 102

Defendant’s use of its Infringing ID Mark is likely to cause, has caused, and will continue to cause confusion, mistake, or deception as to the sponsorship, affiliation, or source of Defendant’s goods and services in that consumers and others are likely to believe Defendant’s goods and services are legitimately connected with or approved by PARTS iD and/or its iD® brands in violation of Massachusetts common law.

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Answer No. 102

Defendant denies.

Complaint Paragraph No. 103

ID Parts engaged in this conduct knowingly, willfully, and in bad faith.

Answer No. 103

Defendant denies.

Complaint Paragraph No. 104

Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

Answer No. 104

Defendant denies.

Complaint Paragraph No. 105

As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill, in an amount as yet not fully ascertained.

Answer No. 105

Defendant denies.

Complaint Paragraph No. 106

PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

Answer No. 106

Defendant denies.

COUNT IV Unfair Competition in Violation of Massachusetts Common Law

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Complaint Paragraph No. 107

PARTS iD incorporates the allegations in Paragraphs 1 through 106 as if fully set forth herein.

Answer No. 107

Defendant incorporates herein, as if stated in full, its responses to the foregoing paragraphs.

Complaint Paragraph No. 108

Plaintiff’s iD® Mark have become well and favorably known throughout the United States, including the Commonwealth of Massachusetts.

Answer No. 108

Defendant is without knowledge or information sufficient to form a belief as to the truth of

Plaintiff’s allegations and denies.

Complaint Paragraph No. 109

Defendant’s conduct as set forth above constitute unfair competition, false representation, and/or false designation of origin, which are have and/or are likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association with PARTS iD and/or its iD® Mark, brands, or origin, sponsorship, or approval of the infringing ID Parts services by PARTS iD and/or its iD® and brands in violation of PARTS iD’s rights at common law and under the law of the Commonwealth of Massachusetts.

Answer No. 109

Defendant denies.

Complaint Paragraph No. 110

ID Parts engaged in this conduct knowingly, willfully, and in bad faith.

Answer No. 110

Defendant denies.

Complaint Paragraph No. 111

Defendant’s intentional and willful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

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Answer No. 111

Defendant denies.

Complaint Paragraph No. 112

As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill, in an amount as yet not fully ascertained.

Answer No. 112

Defendant denies.

Complaint Paragraph No. 113

PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

Answer No. 113

Defendant denies.

COUNT V Deceptive Trade Practices in Violation in G. L. c. 93 (a) § 2

Complaint Paragraph No. 114

PARTS iD incorporates the allegations in Paragraphs 1 through 113 as if fully set forth herein.

Answer No. 114

Defendant incorporates herein, as if stated in full, its responses to the foregoing paragraphs.

Complaint Paragraph No. 115

Defendant’s conduct as set forth above constitutes deceptive trade practices in violation of G.L.c. 93(a) § 2.

Answer No. 115

Defendant denies.

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Complaint Paragraph No. 116

Defendant’s use of PARTS iD’s iD® Mark and confusingly similar variations thereof, falsely suggests PARTS iD and/or its iD® brands as the source of Defendant’s goods and services.

Answer No. 116

Defendant denies.

Complaint Paragraph No. 117

In the course of Defendant’s business, ID Parts has and continues to make false representations as to the source, sponsorship, approval, or certification of goods and services provided by ID Parts in order to deceive consumers into believing that Defendant’s’ goods and services are sponsored, approved, or certified by PARTS iD and/or its iD® Mark of brands in violation of Massachusetts common law.

Answer No. 117

Defendant denies.

Complaint Paragraph No. 118

In the course of Defendant’s business, ID Parts has and continues to make false representations to deceive consumers into believing that Defendant’s and/or their goods and services are affiliated, connected, or associated with PARTS iD and/or its iD® brands.

Answer No. 118

Defendant denies.

Complaint Paragraph No. 119

ID Parts has engaged in this conduct knowingly, willfully, and in bad faith and accordingly the Defendant’s conduct in this regard was immoral or otherwise unscrupulous.

Answer No. 119

Defendant denies.

Complaint Paragraph No. 120

Defendant’s actions have caused and will continue to cause confusion among unsuspecting consumers familiar with the iD® Mark and brands, which are used to identify PARTS iD goods and services, and thereby significantly impact the public as actual or potential consumers.

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Answer No. 120

Defendant denies.

Complaint Paragraph No. 121

Defendant’s unlawful actions have caused and are continuing to cause PARTS iD irreparable injury and monetary damages.

Answer No. 121

Defendant denies.

Complaint Paragraph No. 122

As a direct and proximate result of Defendant’s conduct, PARTS iD has been and is likely to be substantially injured in its business, including its goodwill and reputation acquired under the iD® Mark and brands, resulting in lost revenues and profits and diminished goodwill, in an amount as yet not fully ascertained.

Answer No. 122

Defendant denies.

Complaint Paragraph No. 123

PARTS iD has no adequate remedy at law and, if Defendant’s activities are not preliminarily and permanently enjoined, PARTS iD will continue to suffer irreparable harm and injury.

Answer No. 123

Defendant denies.

Complaint Paragraph No. 124

PARTS iD is therefore entitled to recover actual and treble damages, attorney fees, and costs pursuant to G.L.c. 93(a) § 9(3A).

Answer No. 124

Defendant denies; Plaintiff has no right as a corporation conducting trade or commerce to bring an action for damages pursuant to M.G.L 93A § 9(3A).

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AFFIRMATIVE DEFENSES

1. Defendant states that Plaintiff’s claims are barred in whole or part by laches.

Upon information and belief, Plaintiff has known of Defendant’s use of ID and IDPARTS for several years and delayed raising any objections it has had with Defendant’s marks until sending the March 30, 2020 cease-and-desist letter and filing this lawsuit. This delay was not reasonable or excusable given Plaintiff’s likely knowledge of Defendant, especially given the prominence of

Defendant’s company. This delay has prejudiced Defendant given the efforts Defendant has taken to promote and expand its business in the meantime.

2. Defendant states that Plaintiff’s trademark infringement, unfair competition, and deceptive trade practices claims brought pursuant to the common law of Massachusetts and

G.L.c. 93(a) § 2 are barred in whole or part by Massachusetts’ statute of limitations, at least

G.L.c. 260 § 2A.

3. Defendant states that Plaintiff’s claims to common law rights in the mark “ID” are invalid due to the fact that the Defendant’s first use of the ID and IDPARTS marks in commerce in connection with online retail and wholesale store services featuring automotive parts and accessories predates Plaintiff’s first use of its alleged ID mark.

4. Defendant states that Plaintiff’s claims are barred in whole or part by unclean hands. Upon information and belief, Plaintiff willfully and in bad faith adopted its new name

“PARTS iD” simply in an attempt to gain an unfair advantage in this litigation, and not for any legitimate business purpose. As a result, Plaintiff is at least not entitled to any equitable relief, let alone any relief.

5. Defendant reserves the right to raise additional affirmative defenses as they become known through further investigation and discovery.

RESPONSE TO PLAINTIFF’S PRAYER FOR RELIEF

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Defendant denies that Plaintiff is entitled to any of the relief it seeks in its second amended

complaint.

COUNTERCLAIM AGAINST PLAINTIFF

Defendant IDParts LLC (“IDParts” or “Counterclaim-Plaintiff”) counterclaims against

PARTS iD, LLC and PARTS iD, Inc. (unless otherwise noted, collectively, “PARTS iD” or

“Counterclaim-Defendants”) as follows:

THE PARTIES

1. IDParts is a Massachusetts limited liability company with a principal place of

business in Massachusetts.

2. Onyx was a New Jersey corporation with a principal place of business in New

Jersey.

3. Upon information and belief, PARTS iD, LLC is a Delaware limited liability company having a principal place of business in New Jersey.

4. Upon information and belief, PARTS iD, Inc. is a Delaware corporation having a principal place of business in New Jersey.

JURISDICTION AND VENUE

5. This Court has subject matter jurisdiction over IDParts’ affirmative counterclaims

pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§ 1331, 1338(a), and 1338(b).

6. This Court has personal jurisdiction over PARTS iD, LLC because PARTS iD

filed its amended complaint in this Court. This Court has personal jurisdiction over PARTS iD,

Inc. because PARTS iD, Inc. has purposefully directed its infringing behavior to the

Commonwealth of Massachusetts, including one of its companies, namely, IDParts.

7. Venue is proper in this District pursuant to at least 28 U.S.C. § 1391(b).

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8. This is an exceptional case under 15 U.S.C. § 1117(a). IDParts is entitled to recover its reasonable legal fees, disbursements, and costs in connection with this action.

COUNT I Federal Trademark Infringement, Unfair Competition, and False Designation of Origin in Violation of 15 U.S.C. § 1125(A) – ID Mark

9. Applicant incorporates paragraphs 1 through 8 by reference

10. IDParts is the owner of valid common law rights in the ID mark, which it has used continuously in interstate commerce in connection with IDParts’ services prior to Onyx and

PARTS iD’s unauthorized use of the ID mark.

11. IDParts has continuously used the trademark ID, and variations thereof, in commerce in connection with online retail and wholesale store services featuring automotive parts and accessories since at least as early as December 2009.

12. Upon information and belief, Onyx and its purported successors-in-interest, including PARTS iD, did not begin using the ID mark, and specifically, ID as a standalone mark, in commerce in connection with the sale of automotive parts and accessories until 2013.

13. Upon information and belief, PARTS iD promotes or advertises goods and services sold under the ID mark on at least its websites, www.partsidinc.com and www.carid.com.

14. PARTS iD does not present a single instance of it or Onyx using the mark ID, as a standalone mark, not part of the mark CARID, prior to 2013 in its complaint against IDParts.

15. The mark CARID does not have the same commercial impression as the mark ID to purchasers of automotive parts and accessories.

16. Onyx stated in its application for registration for its alleged stylized ID mark, shown below (Reg. No. 5,804,750), that Onyx first began using the mark both anywhere and in commerce in connection with “distributorship services featuring parts and accessories for land

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vehicles and water vehicles; distributorship services featuring goods for travel and outdoor recreational activities; distributorship services featuring tools” at least as early as June 1, 2018 and that the mark was first used both anywhere and in commerce in a different form other than that depicted in the registration at least as early as September 1, 2013:

.

17. Onyx stated in its application for registration for its alleged green stylized mark,

shown below (Reg. No. 5,658,672), that Onyx first began using the mark both anywhere and in

commerce in connection with “wholesale distributorships featuring automotive parts and

accessories; retail store services featuring automotive parts and accessories; online retail store

services featuring automotive parts and accessories” at least as early as September 1, 2013:

.

18. Onyx stated in its pending application Serial No. 87/412,406 that Onyx first began

using the stylized mark shown below both anywhere and in commerce in connection with, inter

alia, “automobiles and structural parts therefor” at least as early as January 15, 2013:

.

19. In the event that this Court finds that a likelihood of confusion exists between

IDParts’ and PARTS iD’s respective marks, then, because IDParts is the senior user of the ID

mark, PARTS iD should be liable to IDParts for federal common law trademark infringement,

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unfair competition, and false designation of origin pursuant to the Lanham Act, specifically 15

U.S.C. § 1125(a).

20. In the event that this Court finds that a likelihood of confusion exists between

IDParts and PARTS iD’s respective ID marks, IDParts is entitled to recover actual and treble damages, attorney fees, and costs pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to

15 U.S.C. § 1116.

COUNT II Federal Trademark Infringement, Unfair Competition, and False Designation of Origin in Violation of 15 U.S.C. § 1125(A) – IDPARTS Mark

21. Applicant incorporates paragraphs 1 through 20 by reference.

22. IDParts is the owner of valid common law rights in the IDPARTS mark, which it has continuously used in interstate commerce in connection with IDParts’ services prior to Onyx and PARTS iD’s unauthorized use of the PARTS ID mark.

23. IDParts has continuously used the trademark IDPARTS, and variations thereof, in commerce in connection with online retail and wholesale store services featuring automotive parts and accessories since at least as early as December 2009.

24. Upon information and belief, PARTS iD has used the mark PARTS ID in commerce in connection with the sale of at least automotive parts and accessories since

November 2020.

25. Upon information and belief, PARTS iD promotes or advertises goods and services sold under the PARTS ID mark on at least its websites, www.partsidinc.com and www.carid.com.

26. The PARTS ID mark is confusingly similar to the IDPARTS mark, for both marks consist of the terms “PARTS” and “ID,” with the order of the words simply reversed.

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27. In light of the relatedness of IDParts and PARTS iD’s goods and services and the

similarities between the marks, a likelihood of confusion exists between the PARTS ID and

IDPARTS marks, and PARTS iD should be liable to IDParts for federal common law trademark infringement, unfair competition, and false designation of origin pursuant to the Lanham Act, specifically 15 U.S.C. § 1125(a).

28. Accordingly, IDParts is entitled to recover actual and treble damages, attorney fees, and costs pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to 15 U.S.C. § 1116.

COUNT III Cancellation of U.S. Trademark Registration Nos. 5,658,672; 5,804,750; and 6,096,254 Pursuant to 15 U.S.C. § 1119

29. IDParts incorporates paragraphs 1 through 28 by reference.

30. In addition to the ’672 Registration and ’750 Registration, the USPTO lists Onyx

as the current owner of U.S. Trademark Registration No. 6,096,254 (the “’254 Registration”) for

the following mark

for “on-line retail store services featuring a wide variety of consumer goods; on-line retail store

services featuring automotive parts and accessories; reseller services, namely, distributorship

services in the field of electronics and apparel; wholesale and retail store services featuring

automotive parts and accessories; wholesale and retail store services featuring electronics, tools,

apparel, goods used for travel and outdoor recreational activities, and parts and accessories for

land and water vehicles; wholesale and retail store services featuring a wide variety of consumer

goods” in International Class 35 and listing a date of first use both anywhere and in commerce of

June 1, 2018. True and correct copies of the registration certificate and USPTO records for the

’254 Registration are attached as Exhibit A.

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31. Onyx’s filing dates for the aforementioned applications and alleged dates of first

use in the ’672 Registration, ’750 Registration, and ’254 Registration are junior to IDParts’ first

use of the ID mark.

32. On October 3, 2014, IDParts filed Application Serial No. 86/414,309 (the “’309

Application”) for the mark:

for “on-line retail and wholesale store services featuring auto parts” in International Class 35.

33. On July 21, 2019, the USPTO issued a Non-Final Office Action, refusing the ’309

Application on the ground of a likelihood of confusion with the mark depicted in the ’672

Registration.

34. Given at least the present lawsuit filed against IDParts, IDParts has a reasonable

belief that it will be damaged by the continued registration of the marks depicted in the ’672

Registration, ’750 Registration, and ’254 Registration.

35. In the event that this Court finds that a likelihood of confusion exists between

IDParts’ and PARTS iD’s respective marks, then, because IDParts is the senior user of the ID mark, Onyx’s registrations should be cancelled given IDParts’ priority.

36. Consequently, IDParts’ continued and lawful use of its mark and ability to register its mark will be impaired by the continued registration of Onyx’s marks, entitling

IDParts to cancellation of the ’672 Registration, ’750 Registration, and ’254 Registration in their

entireties.

COUNT IV Unfair and Deceptive Trade Practices in Violation of MASS. GEN. LAWS ch. 93A

37. IDParts incorporates paragraphs 1 through 36 by reference.

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38. This claim is against PARTS iD for unfair competition in violation of MASS. GEN.

LAWS ch. 93A.

39. PARTS iD is engaged in the conduct of trade or commerce within the meaning of

MASS. GEN. LAWS ch. 93A.

40. The acts complained of herein occurred primarily and substantially within the

Commonwealth of Massachusetts, in large part because PARTS iD’s actions were directly targeted at a Massachusetts company.

41. PARTS iD’s acts as detailed herein, including, without limitation, the confusingly similar use and imitation of the ID mark and IDPARTS mark, have impaired IDParts’ goodwill, created a likelihood of confusion, and are likely to mislead consumers.

42. PARTS iD’s unauthorized use of the confusingly similar ID mark and PARTS ID mark is, and has been, committed knowingly and willfully in order to capitalize on and misappropriate IDParts’ valuable goodwill in the ID mark and IDPARTS mark that IDParts created through years of continuous usage.

43. Such deceptive acts or practices in the conduct of trade and commerce constitute unfair competition under MASS. GEN. LAWS ch. 93A.

44. IDParts has no adequate remedy at law and, if PARTS iD’s activities are not preliminarily and permanently enjoined, IDParts will continue to suffer irreparable harm and injury.

45. As a direct and proximate result of the aforementioned acts of unfair competition,

PARTS iD has wrongfully profited from IDParts’ ID mark and IDPARTS mark, and IDParts has been damaged and will continue to suffer a loss of money.

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46. As a result of PARTS iD’s violations of MASS. GEN. LAWS ch. 93A, IDParts is

entitled to damages in an amount to be proven at trial, such amount to be doubled or tripled, and

an award of reasonable attorneys’ fees and costs as provided by statute.

COUNT V Cybersquatting in Violation of 15. U.S.C. § 1125(d)

47. IDParts incorporates paragraphs 1 through 46 by reference.

48. The domain names www.partsidinc.com and www.partsid.com are confusingly similar to IDParts’ IDPARTS mark, which was distinctive at the time PARTS iD registered the

www.partsidinc.com and www.partsid.com domain names.

49. PARTS iD had actual knowledge of IDParts’ rights in IDPARTS at the time

PARTS iD either registered or obtained ownership of the the www.partsidinc.com and

www.partsid.com domain names.

50. PARTS iD registered and uses the www.partsidinc.com domain name and

registered the www.partsid.com domain name knowing that they are confusingly similar to the

IDPARTS mark.

51. PARTS iD’s acts described above demonstrate a bad faith intent to profit from the

IDPARTS mark and the goodwill associated therewith.

52. PARTS iD’s activities as alleged herein and above constitute cybersquatting in violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d).

53. Therefore, IDParts is entitled to recover actual and treble damages, attorney fees, and costs pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to 15 U.S.C. § 1116.

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DEFENDANT’S PRAYER FOR RELIEF

WHEREFORE, IDParts prays for judgment against PARTS iD as follows:

1. A determination that PARTS iD has no trademark rights in the mark ID and the text portion of PARTS iD’s logos containing the term “ID”.

2. A determination that IDParts has not infringed PARTS iD’s alleged trademark rights under 15 U.S.C. § 1051, et seq., the common law of Massachusetts, and G.L.c. 93(a) §§ 2

& 11.

3. A determination, in IDParts’ favor, that this case is “exceptional,” as that term is used in 15 U.S.C. § 1117(a).

4. An award of costs, disbursements (including any expert fees), and reasonable attorneys’ fees in IDParts’s favor.

5. An award of IDParts’ damages arising out of PARTS iD’s acts.

6. Equitable relief, including an appropriately worded injunction, requiring that

PARTS iD remove any and all references to the iD and PARTS ID marks, including any company or account names, logos, photographs or videos, and/or any other posts or references, from the Internet and social media outlets, such as Facebook, Instagram, and Twitter.

7. An order requiring the transfer of the domain names, www.partsidinc.com, www.partsid.com, and any other domain names owned by PARTS iD that are confusingly similar to the IDPARTS Mark to IDParts.

8. Cancellation of the ’672 Registration, ’750 Registration, and ’254 Registration.

9. An award of such other and further relief as the Court deems just and proper, including prejudgment interest.

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DEMAND FOR JURY TRIAL

Pursuant to Fed. R. Civ. P. 38(b), Defendant respectfully demands a jury trial of all issues triable by jury.

Respectfully submitted,

Date: February 5, 2021 /s/ John Strand John Strand (BBO # 654985) Amanda B. Slade (BBO # 703951) [email protected] [email protected] WOLF, GREENFIELD & SACKS, P.C. 600 Atlantic Avenue Boston, MA 02210 617.646.8000 Phone 617.646.8646 Fax

Counsel for IDPARTS LLC

CERTIFICATE OF SERVICE

I hereby certify that a true copy of the foregoing document was served upon the attorneys of record for each party via the Court’s CM/ECF filing system.

/s/ John Strand John L. Strand

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EXHIBIT A Case 1:20-cv-11253-RWZ Document 31-1 Filed 02/05/21 Page 2 of 13

Reg. No. 5,658,672 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive Registered Jan. 22, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Wholesale distributorships featuring automotive parts and accessories; retail store Int. Cl.: 35 services featuring automotive parts and accessories; online retail store services featuring Service Mark automotive parts and accessories FIRST USE 9-1-2013; IN COMMERCE 9-1-2013 Principal Register The color(s) white and green is/are claimed as a feature of the mark.

The mark consists of of the lettering "iD", the "i" being non-capitalized, the "D" being capitalized, in white on a green background.

OWNER OF U.S. REG. NO. 3711746

SER. NO. 86-253,327, FILED 04-16-2014 Case 1:20-cv-11253-RWZ Document 31-1 Filed 02/05/21 Page 3 of 13 REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.

Requirements in the First Ten Years* What and When to File:

First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period, calculated from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.

Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.

Requirements in Successive Ten-Year Periods* What and When to File:

You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between every 9th and 10th-year period, calculated from the registration date.*

Grace Period Filings*

The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use (or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO). The time periods for filing are based on the U.S. registration date (not the international registration date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration, see http://www.wipo.int/madrid/en/.

NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the USPTO website for further information. With the exception of renewal applications for registered extensions of protection, you can file the registration maintenance documents referenced above online at h ttp://www.uspto.gov.

NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark owners/holders who authorize e-mail communication and maintain a current e-mail address with the USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms available at http://www.uspto.gov.

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Word Mark ID Goods and IC 035. US 100 101 102. G & S: Wholesale distributorships featuring automotive parts and Services accessories; retail store services featuring automotive parts and accessories; online retail store services featuring automotive parts and accessories. FIRST USE: 20130901. FIRST USE IN COMMERCE: 20130901 Mark Drawing (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Code Design Search 26.09.12 - Squares with bars, bands and lines Code 26.09.21 - Squares that are completely or partially shaded Serial Number 86253327 Filing Date April 16, 2014 Current Basis 1A Original Filing 1A Basis Published for November 6, 2018 Opposition Registration 5658672 Number Registration January 22, 2019 Date Owner (REGISTRANT) Onyx Enterprises Int'l, Corp. CORPORATION NEW JERSEY 1 Corporate Drive Cranbury NEW JERSEY 08512 Attorney of AARON P BRADFORD Record Prior 3711746 Registrations

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Description of The color(s) white and green is/are claimed as a feature of the mark. The mark consists of of the Mark lettering "iD", the "i" being non-capitalized, the "D" being capitalized, in white on a green background. Type of Mark SERVICE MARK Register PRINCIPAL Live/Dead LIVE Indicator

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Reg. No. 5,804,750 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive Registered Jul. 16, 2019 Cranbury, NEW JERSEY 08512 CLASS 35: Distributorship services featuring parts and accessories for land vehicles and Int. Cl.: 35 water vehicles; Distributorship services featuring goods for travel and outdoor recreational Service Mark activities; Distributorship services featuring tools FIRST USE 6-1-2018, The mark was first used anywhere in a different form other than that Principal Register sought to be registered at least as early as 09/01/2013; IN COMMERCE 6-1-2018, The mark was first used in commerce in a different form other than that sought to be registered at least as early as 09/01/2013

The mark consists of the lettering "iD", the "i" being non-capitalized, the "D" being capitalized.

OWNER OF U.S. REG. NO. 3711746, 8625332, 8741240

SER. NO. 88-211,256, FILED 11-29-2018 Case 1:20-cv-11253-RWZ Document 31-1 Filed 02/05/21 Page 7 of 13 REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.

Requirements in the First Ten Years* What and When to File:

First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period, calculated from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.

Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.

Requirements in Successive Ten-Year Periods* What and When to File:

You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between every 9th and 10th-year period, calculated from the registration date.*

Grace Period Filings*

The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use (or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO). The time periods for filing are based on the U.S. registration date (not the international registration date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration, see http://www.wipo.int/madrid/en/.

NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the USPTO website for further information. With the exception of renewal applications for registered extensions of protection, you can file the registration maintenance documents referenced above online at h ttp://www.uspto.gov.

NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark owners/holders who authorize e-mail communication and maintain a current e-mail address with the USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms available at http://www.uspto.gov.

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Word Mark ID Goods and IC 035. US 100 101 102. G & S: Distributorship services featuring parts and accessories for land Services vehicles and water vehicles; Distributorship services featuring goods for travel and outdoor recreational activities; Distributorship services featuring tools. FIRST USE: 20180601. USED IN ANOTHER FORM The mark was first used anywhere in a different form other than that sought to be registered at least as early as 09/01/2013. FIRST USE IN COMMERCE: 20180601 Mark Drawing (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Code Serial Number 88211256 Filing Date November 29, 2018 Current Basis 1A Original Filing 1A Basis Published for April 30, 2019 Opposition Registration 5804750 Number International Registration 1471829 Number Registration July 16, 2019 Date Owner (REGISTRANT) Onyx Enterprises Int'l, Corp. CORPORATION NEW JERSEY 1 Corporate Drive Cranbury NEW JERSEY 08512 Attorney of AARON P BRADFORD Record Prior 3711746;8625332;8741240 Registrations

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Description of Color is not claimed as a feature of the mark. The mark consists of the lettering "iD", the "i" being Mark non-capitalized, the "D" being capitalized. Type of Mark SERVICE MARK Register PRINCIPAL Live/Dead LIVE Indicator

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Reg. No. 6,096,254 Onyx Enterprises Int'l, Corp. (NEW JERSEY CORPORATION) 1 Corporate Drive, Ste. C Registered Jul. 07, 2020 Cranbury, NEW JERSEY 08512 CLASS 35: On-line retail store services featuring a wide variety of consumer goods; On-line Int. Cl.: 35 retail store services featuring automotive parts and accessories; Reseller services, namely, distributorship services in the field of electronics and apparel; Wholesale and retail store Service Mark services featuring automotive parts and accessories; Wholesale and retail store services featuring electronics, tools, apparel, goods used for travel and outdoor recreational activities, Principal Register and parts and accessories for land and water vehicles; Wholesale and retail store services featuring a wide variety of consumer goods

FIRST USE 6-1-2018; IN COMMERCE 6-1-2018

The mark consists of the term "ID", with the "I" being in lowercase and the "D" being capitalized.

OWNER OF U.S. REG. NO. 5658672, 5804750

SER. NO. 88-734,396, FILED 12-19-2019 Case 1:20-cv-11253-RWZ Document 31-1 Filed 02/05/21 Page 11 of 13 REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.

Requirements in the First Ten Years* What and When to File:

First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period, calculated from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.

Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.

Requirements in Successive Ten-Year Periods* What and When to File:

You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between every 9th and 10th-year period, calculated from the registration date.*

Grace Period Filings*

The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use (or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO). The time periods for filing are based on the U.S. registration date (not the international registration date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration, see http://www.wipo.int/madrid/en/.

NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the USPTO website for further information. With the exception of renewal applications for registered extensions of protection, you can file the registration maintenance documents referenced above online at h ttp://www.uspto.gov.

NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark owners/holders who authorize e-mail communication and maintain a current e-mail address with the USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms available at http://www.uspto.gov.

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Word Mark ID Goods and IC 035. US 100 101 102. G & S: On-line retail store services featuring a wide variety of consumer Services goods; On-line retail store services featuring automotive parts and accessories; Reseller services, namely, distributorship services in the field of electronics and apparel; Wholesale and retail store services featuring automotive parts and accessories; Wholesale and retail store services featuring electronics, tools, apparel, goods used for travel and outdoor recreational activities, and parts and accessories for land and water vehicles; Wholesale and retail store services featuring a wide variety of consumer goods. FIRST USE: 20180601. FIRST USE IN COMMERCE: 20180601 Mark Drawing (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Code Serial Number 88734396 Filing Date December 19, 2019 Current Basis 1A Original Filing 1A Basis Published for April 21, 2020 Opposition Registration 6096254 Number Registration July 7, 2020 Date Owner (REGISTRANT) Onyx Enterprises Int'l, Corp. CORPORATION NEW JERSEY 1 Corporate Drive, Ste. C Cranbury NEW JERSEY 08512 Attorney of AARON P BRADFORD Record Prior 5658672;5804750 Registrations

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Description of Color is not claimed as a feature of the mark. The mark consists of the term "ID", with the "I" being Mark in lowercase and the "D" being capitalized. Type of Mark SERVICE MARK Register PRINCIPAL Live/Dead LIVE Indicator

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