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Estta1138514 06/07/2021 in the United States Patent And Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1138514 Filing date: 06/07/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91269491 Party Plaintiff WENZHOU ZHONGBANG SMOKING-SET MANUFACTURING CO., LTD. Correspondence P. JAY HINES Address MUNCY, GEISSLER, OLDS & LOWE, P.C. 4000 LEGATO RD SUITE 310 FAIRFAX, VA 22033 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] 7036217140 Submission Motion to Amend Pleading/Amended Pleading Filer's Name P. Jay Hines Filer's email [email protected] Signature /pjh/ Date 06/07/2021 Attachments 2021-06-07 Motion for Leave to Submit Amended Notice of Opposition.pd f(198680 bytes ) 2021-06-07 AMENDED NOTICE OF OPPOSITION.pdf(3260900 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Application Serial No. 90262909 For the mark: Published: May 18, 2021 – – – – – – – – – – – – – – – – – – – – – – – – – – X WENZHOU ZHONGBANG SMOKING-SET : MANUFACTURING CO., LTD., : Opposition No. 91269491 Opposer, : : v. : : Fengmei Gu, : : Applicant. : – – – – – – – – – – – – – – – – – – – – – – – – – – X MOTION FOR LEAVE TO SUBMIT AMENDED NOTICE OF OPPOSITION Pursuant To TBMP Section 315 and Fed. R. Civ. P. 15, Applicant moves the Board for leave to submit the attached Amended Notice of Opposition. Opposer filed the current Notice of Opposition on May 24, 2021. Opposer wishes to add a new Paragraph 16 and corresponding Exhibit C to include an allegation that was overlooked in the initial filing. Opposer is not adding to the goods or services opposed or adding a joint Opposer. Respectfully submitted, MUNCY, GEISSLER, OLDS & LOWE, P.C. __/s/ P. Jay Hines___ P. JAY HINES 4000 LEGATO ROAD SUITE 310 FAIRFAX, VA 22033 703-621-7140 [email protected] CERTIFICATE OF TRANSMISSION AND SERVICE I certify that the foregoing MOTIN FOR LEAVE TO SUBMIT AMENDED NOTICE OF OPPOSITION is being electronically filed with: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313 and that a courtesy copy of the foregoing MOTION FOR LEAVE TO SUBMIT AMENDED NOTICE OF OPPOSITION is being sent via email ([email protected]) to: Gu, Fengmei RmA8, 3rd Flor, Jun Ying Plaza No: 129 Xicha Rd. Tongdewei, Baiyun Di Guangzhou, Guangdong CHINA 510407 This 7th day of June 2021. Roman Campos Attorney Docket No.: 0251/0101OT IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Application Serial No. 90262909 For the mark: Published: May 18, 2021 X – – – – – – – – – – – – – – – – – – – – – – – – – – WENZHOU ZHONGBANG SMOKING-SET : MANUFACTURING CO., LTD., : Opposition No. 91269491 Opposer, : : v. : : Fengmei Gu, : : Applicant. : – – – – – – – – – – – – – – – – – – – – – – – – – – X AMENDED NOTICE OF OPPOSITION WENZHOU ZHONGBANG SMOKING-SET MANUFACTURING CO., LTD. ("Opposer"), an limited company existing under the laws of China with a principal place of business at No.55 Gaoying Road, Gaoxiang Industrial, Zone, Xinqiao, Ouhai District, Wenzhou City, Zhejiang CHINA 325000, believes that it will be damaged by the issuance of a registration for the mark ZOBO as shown in Fengmei Gu’s ("Applicant") Application Serial No. 90262909 (the "Challenged Application") in connection with “Hookahs; Pipes for tobacco; Cigarette filters; Re-useable cigarette filters; Cigarette cases; Cigarette holders; Cases for re-usable cigarette filters” in International Class 34, and hereby opposes the Challenged Application on grounds of likelihood of confusion and fraud/lack of ownership pursuant to Section 13 of the Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. § 1063. As grounds for opposition, Opposer alleges as follows: COUNT I – LIKELIHOOD OF CONFUSION 1. Opposer is a limited company existing under the laws of China with a principal place of business at No.55 Gaoying Road, Gaoxiang Industrial, Zone, Xinqiao, Ouhai District, Wenzhou City, Zhejiang CHINA 325000. 2. Opposer has engaged, and is now engaged in the rendering, distribution, sale, advertising, and promotion in interstate commerce of consumer goods in Class 34, “Hookahs; Ashtrays for smokers; Cigar cutters; Cigarette-rolling machines; Cigarette cases; Cigarette filters; Cigarette holders; Cigarette rolling machines; Filter tips; Lighters for smokers; Snuff boxes; Tobacco grinders; Tobacco jars; Tobacco pipes.” 3. As Opposer is in the business of selling the goods identified in the Challenged Application, namely “Hookahs; Pipes for tobacco; Cigarette filters; Re-useable cigarette filters; Cigarette cases; Cigarette holders; Cases for re-usable cigarette filters,” and is using the marks ZOBO and , (“the ZOBO Marks”), in connection with these goods, the Challenged Application and any resulting registration interfere with the Opposer's current business and business plans. Opposer therefore has a real interest in opposing the Challenged Application and standing to bring this action. 4. Opposer commenced use long prior to Applicant’s claimed date of first use of June 29, 2019 in connection with its goods, namely, as early as February 2007 for the word mark and September 2011 for the word & design mark. 5. Opposer owns numerous registrations such in China, European Union, Indonesia, Russia, India, Japan, Republic of Korea, Vietnam and several pending U.S. applications for the mark ZOBO in multiple consumer goods classes including pending Application Serial Nos. 90552165, 90552210, 90552157, 90552191 for the following goods in Classes 6, 7 and 34: “Safes; Buckles of common metal; Door handles of metal; Hinge pin door closers of metal; Hinges of metal; Locks of metal for vehicles; Locks of metal, other than electric; Split rings of common metal for keys; Spring-loaded door closers of metal,” “Friction lighters for igniting gas; Utility lighters for lighting grills, fireplaces and candles,” “Hookahs; Ashtrays for smokers; Cigar cutters; Cigarette-rolling machines; Cigarette cases; Cigarette filters; Cigarette holders; Cigarette rolling machines; Filter tips; Lighters for smokers; Snuff boxes; Tobacco grinders; Tobacco jars; Tobacco pipes.” Attached hereto in Exhibit A. 6. As a result of its widespread, continuous, and exclusive use of the ZOBO Marks to identify its goods and Opposer as their source, Opposer owns valid common law rights to the ZOBO Marks. 7. Opposer has made a substantial investment in promoting its goods under its Mark. Opposer has extensively used, promoted, and offered Opposer’s goods in connection with Opposer’s Mark to the public through various channels of trade in commerce, with the result that Opposer’s customers and the public in general have come to know and recognize Opposer’s Mark and associate same with Opposer and/or the goods offered by Opposer. Opposer has built extensive goodwill in connection with the provision of its goods under its Mark. 8. Applicant’s mark so resembles Opposer’s Mark as to be likely, when used in connection with the goods of Applicant, to cause confusion or mistake or to deceive purchasers resulting in damage and detriment to Opposer and its reputation. 9. Opposer, upon information and belief, avers that its customers, and the public in general, are likely to be confused, mistaken, or deceived as to the origin and sponsorship of Applicant’s goods marketed under Applicant’s challenge mark and misled into believing that such goods are produced by, emanate from, or are otherwise in some way directly or indirectly associated with Opposer, to the damage and detriment of Opposer and its reputation. 10. Applicant is clearly benefitting from, and trading off of, Opposer’s extensive goodwill in connection with the provision of its goods and services under its Mark, resulting in damage and detriment to Opposer and its reputation. COUNT II – LACK OF OWNERSHIP/FRAUD Opposer herein repeats and realleges paragraphs 1 through 10 above. 11. Upon information and belief, notwithstanding Opposer’s rights in and to its Mark, on October 19, 2020. Applicant, knowing he was not the legitimate owner of the mark, filed an application for registration of the Challenged Application for the mark ZOBO & Design for “Hookahs; Pipes for tobacco; Cigarette filters; Re-useable cigarette filters; Cigarette cases; Cigarette holders; Cases for re-usable cigarette filters” in International Class 34. Applicant filed the Challenged Application based on an intent to use the mark ZOBO in U.S. commerce under Section 1(b) of the Lanham Act, 15 U.S.C. §1051(b). Said application was assigned Serial No. 90262909 and was published for Opposition in the Official Gazette of May 18, 2021. 12. On information and belief, the Representation of the ownership of the mark ZOBO was false at the time of the filing. 13. On information and belief, Applicant knew the Representation was false at the time the Application was filed. 14. On information and belief, Applicant mislead the USPTO to cause the USPTO to approve the Challenged Application for publication. 15. On information and belief, Opposer sold its good to a person with the same address as Applicant on March 15, 2021, and April 16, 2021, in a shopping website in China. Attached hereto as Exhibit B. 16. On information and belief, Applicant’s specimen of record is Opposer’s specimen and the individual appearing on the specimen authorized Opposer to use his image for a period of two years on September 15, 2020, which predates the Applicant’s filing date. The image spokesperson Ray Lui is a popular film and TV actor in Hong Kong, China. The authorization of use, its translation and Wikipedia excerpts attached hereto as Exhibit C. 17. The false Representation was material because, but for the false Representation, the USPTO would not have approved the Challenged Application for publication. However, in reliance on the false Representation, the USPTO approved the Challenged Application for publication on May 18, 2021. 18. Opposer is being harmed and will be further harmed by issuance of the registration for the ZOBO & Design mark sought by the Challenged Application because it will block registration of Opposer’s ZOBO Marks and cause confusion in the marketplace.
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