Notice of Opposition Opposer Information Applicant Information

Home , Automobile roof

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA980344 Filing date: 06/13/2019

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 Kia Motors Corporation Granted to Date 06/15/2019 of previous ex- tension Address 12, HEOLLEUNG-RO SEOCHO-GU, SEOUL, 06797 KOREA, REPUBLIC OF

Attorney informa- Laura Popp-Rosenberg tion Fross Zelnick Lehrman & Zissu, P.C. 151 W. 42nd Street, 17th Floor New York, NY 10036 UNITED STATES [email protected], [email protected], [email protected] 2128135900

Applicant Information

Application No 88218775 Publication date 04/16/2019 Opposition Filing 06/13/2019 Opposition Peri- 06/15/2019 Date od Ends Applicant SHANDONG JILUER TYRE CO.,LTD. Xinxing Industrial Park, Longyang, Tengzhou City, Shandong,, 277532 CHINA Goods/Services Affected by Opposition

Class 012. First Use: 2018/05/06 First Use In Commerce: 2018/08/08 All goods and services in the class are opposed, namely: Inner tubes for pneumatic tyres; Casings for pneumatic tires; Automobile tyres;Adhesive rubber patches for repairing inner tubes; Electric bicycles; Solid tyres for vehicle wheels; Baby strollers; Motorcycles; Suspension shock absorbers for vehicles; Brake pads for automobiles Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) No use of mark in commerce before application Trademark Act Sections 1(a) and (c) or amendment to allege use was filed Dilution by blurring Trademark Act Sections 2 and 43(c) Dilution by tarnishment Trademark Act Sections 2 and 43(c) Fraud on the USPTO In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 1723608 Application Date 02/10/1992 No. Registration Date 10/13/1992 Foreign Priority NONE Date Word Mark KIA Design Mark Description of NONE Mark Goods/Services Class 012. First use: First Use: 0 First Use In Commerce: 0 passenger cars, buses, [ motorboats, tires, bicycles, locomotives, ] trucks, [ tractors, and ] motorcycles

U.S. Registration 1955539 Application Date 09/07/1993 No. Registration Date 02/13/1996 Foreign Priority 06/18/1993 Date Word Mark KIA Design Mark

Description of NONE Mark Goods/Services Class 012. First use: First Use: 0 First Use In Commerce: 0 automobiles, buses, motor boats, locomotives, tires, vehicle wheels, tractors, trucks, airplanes, dump cars, tow cars, motorbicycles, tank trucks, motorcycles,helicopters, cargo boats, passenger boats, electric rail cars, refrigerated rail cars, racing automobiles, bicycles, motorcycle and bicycle saddles, motor- cycleand bicycle pedals, gasoline operated internal combustion engines for land vehicles, diesel fuel operated internal combustion engines for land vehicles, land vehicle transmissions, land vehicle shockabsorbers, automobile bumpers, steer- ingwheels for land vehicles, fitted vehicle covers, anti-theft alarms for vehicles, wipers for vehicles, drive belts for vehicles, tire valves; horns for vehicles, clutches for vehicles, brakes and brake discs for land vehicles, instrument panels for vehicles, rear view mirrors forvehicles and door panels for land vehicles

U.S. Registration 2351320 Application Date 08/25/1998 No. Registration Date 05/23/2000 Foreign Priority NONE Date Word Mark KIA Design Mark

Description of NONE Mark Goods/Services Class 012. First use: First Use: 1994/01/00 First Use In Commerce: 1994/01/00 AUTOMOBILES AND PARTS THEREOF, NAMELY, BRAKE DISCS, BUMP- ERS, SEAT BELTS, DOORS,SHOCK ABSORBERS, FENDERS, FRONT GRILLES, BRAKE PADS, BRAKE SHOES, AND GLASS WINDOWS FOR AUTOMOBILES

U.S. Registration 3867593 Application Date 08/04/2009 No. Registration Date 10/26/2010 Foreign Priority 08/03/2009 Date Word Mark KIA Design Mark

Description of The mark consists of the red stylized wording "KIA", and a red oval with black Mark edging. Goods/Services Class 007. First use: First Use: 0 First Use In Commerce: 0 Spark plugs for automobiles; Oil filters for automobiles; Oil pumps for automobiles; Pumps as parts of automobile motors and engines; Water pumps for automobiles Class 009. First use: First Use: 0 First Use In Commerce: 0 Radio receivers for automobiles; [ electric coils for automobiles; cassette players for automobiles; compact disc players for automobiles; ] television receivers for automobiles; navigation apparatusfor automobiles; Digital versatile discplayers for automobiles; MPEG audio layer-3 players for automobiles Class 011. First use: First Use: 0 First Use In Commerce: 0 [ Air purifying apparatus for automobiles; ] radiators for automobiles; automobile lights; [ reflectors for automobiles; ] lamps for directional signals of automobiles; air conditioners for automobiles; headlights for automobiles; [ Ventilation installations and apparatus for automobiles, namely, ventilation exhaust fans, ventilat- ors; ] heaters for automobiles Class 012. First use: First Use: 0 First Use In Commerce: 0 [ Electric power steering torque sensors, sold as a component of the power steering systems for automobiles; ] Parts for automobile repair services, namely, [ air suspension valves for controlling suspension height for vehicles, ] automobiles bodies, automobile engines, [ axle bearings for land vehicles, ] brake for automobiles, [ brake cylinders, drums, linings and facings for automobiles; Rub- ber transmission and drive belts for automobiles; Driving chains for automobiles in the nature of transmission chains and tire chains; ] Structure parts for automobiles, namely, grills; motors for automobiles; rearview mirrors for automobiles; [ bumpers for automobiles; Wheel bearing for land vehicles; ] seat covers for automobiles; air bags for automobiles; Windshield glasses for automobiles; [ engines for automobiles; ] Windshield wipers for automobiles; [ shock absorbers forautomobiles; transmission shafts for automobiles; brakes for automobiles; body panels for automobiles; clutches for automobiles ] Class 035. First use: First Use: 0 First Use In Commerce: 0 Commercial intermediary services in thefield of selling and purchasing automobiles; Retail store services featuring automobiles; Commercial intermediary services in the field of selling and purchasing parts of automobiles; Retail store services featuring parts of automobiles

U.S. Registration 5273518 Application Date 06/10/2016 No. Registration Date 08/29/2017 Foreign Priority 05/16/2016 Date Word Mark KIA Design Mark

Description of The mark consists of the word "KIA" with an oval shape around it. Mark Goods/Services Class 001. First use: First Use: 0 First Use In Commerce: 0 Antifreeze; brake fluid; coolants; power steering fluid; transmission fluid Class 004. First use: First Use: 0 First Use In Commerce: 0 Engine oils; industrial grease; lubricating grease; fuel oil; industrial oil; lubricating oils; motor oil Class 007. First use: First Use: 0 First Use In Commerce: 0 Air compressors; balance shafts for engines; belts for engines; belts for machines; belts for motors; power transmission belts for machines; timing belts for engines; timing belts for machines; timing belts for motors; fan belts for engines and motors; timing belts for land vehicle engines; power operated blowers; bel- lows parts of machines; camshafts; canisters for automobile engines; carbur- etors; catalytic converters; injectors for engines; fuel injection devices for internal combustion engines; compressors as parts of machines, motors and engines; connecting rods for engines and motors; pumps for cooling engines; control mechanisms for machines, engines or motors; fansfor engines and motors; crankshafts; automotive engine blocks; cylinder heads for engines; cover for cylinder head and rocker for engines and motors; engine parts, namely, cylinder liners; distributors for vehicle engines; distributor capsfor vehicle engines; exhaust gas recirculation EGR coolers for motors and engines; exhaust gas recirculation EGR valvesfor motors and engines; engine mountinginsulator for motors and engines; exhaust pipes for land vehicle engines; exhaust valves for land vehicle engines; machine flywheels; engine fuel filters; machine fuel filters; fuel injection pumps for engines; fuel injectors for internal combustion engines; fuel pumps for land vehicle engines; pulleys parts of machines; pumps for machines; machine pumps; glow plugs for diesel engines; idler being parts of machines; idler pulleys beingparts of machines; ignition coils partsof engines; ignition coil harness partsof engines; injection nozzle and holderparts of engines; intake valve for engines and motors; inter coolers for engines and motors; LPG pump drivers for engines and motors; intake manifolds for internal combustion engines; exhaust manifold for engines; intake manifolds for engines; intake manifolds for motors; gas mixing machines; engine parts, namely, fuel mixer; muffler pipes for motors and engines; oil pumps for land vehicle engines; positive crank- case ventilation PCV valves for motors and engines; pistons parts of machines or engines; piston rings;radiators cooling for motors and engines; radiator shroud for motors and engines; rocker arms for engines; rocker arm for motors; rocker arm lash adjusters formotors and engines; sparking plugs for internal combustion engines; sparking plug cables for internal combustion engines; starters for motors and engines; tensioners for machines, motors and engines;throttle bodies for engines and motors;timing belts for motors and engines; timing belt covers for motors and engines;transmission mounting insulator for motors and engines; turbochargers for machines; valves parts of machines; va- porizers for motors and engines; water separators; linear actuators; hydraulic valve actuators; pneumatic valve actuators; air cleaners parts of engines; air- cooled condensers; air filters for automobile engines; forging moulds for automobiles; regulators parts of machines; metal enginegaskets for vehicles; gaskets, not of metal, for vehicle engines; oil coolers for engines and motors; oil filters for engines and motors; motors for air conditioner blowers; motors for gas condensers; cooling fans; pulleys for compressors for automobiles air conditioners; air intake surge tanks for automobile engines;air tanks for automobile engines; oil pans for automobiles; engine oil pan for automobiles; air filter cartridges for land vehicle engines; oil filter cartridges for land vehicle engines; generators for automobiles; generator rectifier forautomobiles; generator rotors for automobiles; generator stator for automobiles; engine gaskets for automobiles Class 009. First use: First Use: 0 First Use In Commerce: 0 Electric sensors for measuring, other than for medical use; antennas; armatures- for use in electrical apparatus; audio equipment for vehicles, namely, loud speakers for automotive audio systems; batteries; battery cables; battery boxes; battery plates; electronic control systemsfor machines; cameras; automatic steering apparatus for vehicles; electrical controllers; electronic control units for automobiles; fuel gauges; temperature gauges; fuses; electric junction boxes; navigational instruments for cars; relays,electric; resonators; speakers; speedo- meters; speedometer cables; switches, electric; tachometers; thermostats; thermostat cases; thermostat housing; time clocks; transmitters telecommunication; blinkers signalling lights; wires, electric;electronic apparatus for parking information; lighting ballasts; emergency light bars for vehicles; emergency signal transmitters; pulse generators for automobiles Class 011. First use: First Use: 0 First Use In Commerce: 0 Fans parts of air-conditioning installations; filters for air purifiers; air conditioning units; air dryers; hot air blowers; light bulbs; fans for gas condensers, other than parts of machines; covers specially adapted for gas condensers, other than parts of machines; evaporative air coolers and evaporators for air conditioners; electric heaters; lamps for automobiles; lamp glasses; lamp bulbs; dryers for industrial purposes; radiator caps; air filters for air conditioning units Class 012. First use: First Use: 0 First Use In Commerce: 0 Anti-lock braking systems ABS for automobiles; structural parts for automobiles; accelerator cables for automobiles; accelerator pedals for automobiles; air bags for vehicles; air pumps for automobile tires; arms for windscreen wipers; ash- trays for vehicles; torque converters for automobiles; anti-theft alarms for vehicles; anti-theft devices for vehicles; valve bodies for automobiles; axles for vehicles; axle carriers for automobiles;axle housings for automobiles; axle knuckles for automobiles; ball joints for automobiles; axle bearings for land vehicles; wheel bearings for land vehicles; safety belts for automobile seats; brakesfor automobiles; brake boosters for automobiles; brake discs for vehicles; brake drums for vehicles; brake cylinders for vehicles; brake pads for automobiles; brake pedals for vehicles; brake shoes for automobiles; brake linings for automobiles; bumper covers for automobiles; bumper energy absorbers for automobiles; bumper guards for automobiles; bumper lips for automobiles; mouldings for automobile bumpers; bumper rails for automobiles; bumper stays for automobiles; bumper steps for automobiles; cabins for automobiles; brake calipers for vehicles; cap mounting cylinders for automobiles; automobile covers shaped; center facia for automobiles; frames for automobile chassis; child re- straints for vehicle seats; clutch boosters for automobiles; clutch cables for automobiles; clutch covers forautomobiles; clutch discs for automobiles; clutch housings for automobiles; clutch master cylinders for automobiles; clutch pedals for land vehicles; clutch power cylinders for automobiles; clutch release cylinders for automobiles; clutch release forks for automobiles; concentric slave cylinders for automobiles; console armrests for automobiles; cooling fanclutches for land vehicles; couplings for land vehicles; cowl cross bars for automobiles; cowl top covers for automobiles; crash pads for automobiles; crossmembers for automobiles; constant-velocity joints for automobiles; decks for trucks; differential carriers for automobiles;differential cases for automobiles; disc and clutch covers for automobiles; disc brake seals for automobiles; automobile door checker; automobile door handles;automobile door steps; automobile door visors; drag links for automobiles; automobile engines; engine covers for automobiles; engine mounting rubbers for automobiles; engine undercover for automobiles; undercover for fenders for land vehicles; floor consoles for automobiles; frame mouldings for automobiles; caps for vehicle gas tanks; doors for vehicle gas tanks; fuel pump senders for vehicle gastanks; fuel tanks for vehicles; garnishfor automobiles; gears for land vehicles; glass mouldings for automobiles; glove boxes for vehicles; head linings for automobiles; headrests for vehicle seats;hood insulat- ing pads for automobiles; hood strips for automobiles; idle speed control apparatus for automobiles; interior trim for automobiles; leaf springs for land vehicle suspensions; levers for automobiles; lever cables for automobiles; anti-theft locks for use on automobilesteering wheels; electrical anti-theft installations for vehicles; mudguards; over running clutch for automobiles; bodypanels for vehicles; door panels for land vehicles; parking brakes for automobiles; pillers for automobiles; planer carriers for automobiles; power steering gear seal for automobiles; transmission mechanisms for land vehicles; motors for powered windows for land vehicles; propeller shafts for automobiles; radiator grills for automobile; mirrors for use on vehicles; rearview mirrors; reservoirs for land vehicles; reservoir tank for landvehicles; car-top luggage carriers; roof panels for land vehicles; automobile roof racks; rubber bushes for automobile wheel suspensions; automobile seats; seat back organizers specially adapted for use in cars; safety belts for vehicle seats; automobile seat covers; automobile seat cushions; security alarms for vehicles; security harness for vehicle seats;cardan shafts for vehicles; drive shafts for land vehicles; transmission shaftsfor land vehicles; shock absorbers for automobiles; side members for land vehicles; slack adjuster for brakes for vehicles; spare tire carriers for vehicles; spoilers for vehicles; vehicle suspensionsprings; shock absorbing springs for vehicles; sta- bilizer bars for land vehiclesuspensions; steering gears for land vehicles; steering linkages for land vehicles; automobile steering wheels; column for automobile steering wheels; shafts for automobile steering wheels; strut insulator for automobiles; automobile sunroofs; automobile windscreen sunshades; sun visors for automobiles; synchronizer rings parts of land vehicles; tailboard lifts parts of land vehicles; connecting rods for land vehicles, other than partsof motors and engines; tires; torque converters for land vehicles; tow bars forvehicles; rubber tracks for automobiles; transfers for transmissions for land vehicles; transmissions for land vehicles; universal joints for land vehicles; solenoid valve for automobiles; brake valve for automobiles; expansion valve for automobiles; weather strips for land vehicles; automobile wheels; wheel brake cylinders for land vehicles; wheel covers for land vehicles; wheel cylinders for land vehicles; wheel guards for automobiles; automobile wheel hubs; cap for automobile wheel hubs; windows for vehicles; nozzle for windshield washer; windshield wiper blades; motor for windshield wipers; wiper motor arm for automobiles; wood- grain upholstery for vehicles; electronic automobile dashboards; back-up warn- ing alarms for vehicles; automobile horns;anti-theft devices for automobiles; oilscreens for automobiles Class 021. First use: First Use: 0 First Use In Commerce: 0 Unfinished window glass for vehicles

U.S. Registration 5617776 Application Date 11/24/2015 No. Registration Date 11/27/2018 Foreign Priority NONE Date Word Mark KIA CVIS Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 2014/06/01 First Use In Commerce: 2016/05/01 Computer software for estimating car repair costs, for estimating the time required to repair a damaged car; computer application software for mobile phones, portable media players, namely, software for estimating car repair costs, for estimating the time required to repair a damaged car; computer software for conducting customer survey and satisfaction evaluations; computer application software for mobile phones, portable media players, namely, software for conducting customer survey and satisfaction evaluations;computer software for performing vehicle diagnostic tests; computer applicationsoftware for mobile phones, portable media players, namely, software for performing vehicle diagnostic tests; computer software for making online rental car reservations; computer application software for mobile phones, portable media players, namely, software for making online rental car reservations; computer software for sharing car repair status information; computer application software for mobile phones, portable media players, namely, software for sharing car repair status information; computer software fornotifying users of electronic payments processing; computer application software for mobile phones, portable media players, namely, software for notifying users of electronic payments processing; computer software for enabling electronic communications between customers and car dealers; computer application software for mobile phones, portable media players, namely, software for enabling electronic communications between customers and car dealers; computer software for operating system programs; computer software for computer application management; computer software for en- suring the securityof computer applications

U.S. Registration 4278052 Application Date 07/07/2011 No. Registration Date 01/22/2013 Foreign Priority 07/07/2011 Date Word Mark KIA UVO Design Mark

Description of The mark consists of an oval containingstylized wording "KIA" in capital, solid Mark letters. The letters "UVO" in a different stylized font appear to the right ofthe oval. The letter "O" has two curvedlines suggestive of signal transmissionwhich appear above and to the right of it. Goods/Services Class 012. First use: First Use: 0 First Use In Commerce: 0 Automobiles; replacement parts for automobiles

U.S. Registration 4154511 Application Date 12/16/2009 No. Registration Date 06/05/2012 Foreign Priority NONE Date Word Mark KIA UVO Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 2011/05/31 First Use In Commerce: 2011/05/31 Apparatus in automobile for video monitoring and display of the rear of automobiles, namely, an on-board automobile surveillance system comprised of cameras and monitors; electronic control unit in automobile for tracking and displaying wear information for automobile parts; electronic control unit in automobile for tracking and displaying remote door unlock, theft detection and notification status, [ stolen vehicle tracking, ] automatic notification of air bag deployment, and interacting with a customer service center; electronic control unit in automobile for interacting with an automobile customer service center and displaying information; [ diagnostic units in automobiles, namely, sensors and detectors for- use in tracking, displaying and controlling the actuation and operation of safety apparatus and equipment; ] electroniccontrol unit in automobile for navigation; electronic control unit in automobile for receiving, transmitting, storing, and displaying sound, data, music, videoand text; electronic control unit in automobiles for use with radio and electronic media players; electronic control unit in automobiles for transmitting vehicle diagnostic information, for transmitting vehicle status information to emergency and service personnel, for receivingand displaying traffic status information, and for providing and displaying directional guidance information

Attachments 74435490#TMSN.png( bytes ) 75543265#TMSN.png( bytes ) 79076034#TMSN.png( bytes ) 79202248#TMSN.png( bytes ) 86830663#TMSN.png( bytes ) 85365305#TMSN.png( bytes ) 77895034#TMSN.png( bytes ) F3086768.pdf(57104 bytes )

Signature /Laura Popp-Rosenberg/ Name Laura Popp-Rosenberg Date 06/13/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

KIA MOTORS CORPORATION,

Opposer, Opposition No. ______-against-

SHANDONG JILUER TYRE CO., LTD.,

Applicant.

NOTICE OF OPPOSITION

Kia Motors Corporation (“Opposer”) believes that it will be damaged by the issuance of a

registration for the trademark applied for in Application Serial No. 88218775 and therefore

opposes the same. As grounds for this opposition, Opposer, by its counsel, Fross Zelnick

Lehrman & Zissu, P.C., states as follows:

FACTS

A. Opposer and Opposer’s KIA Mark

1. Opposer is a Republic of Korea corporation with its principal place of business at

12, Heolleung-ro, Seocho-gu, Seoul, Republic of Korea.

2. Founded in 1944, Opposer is one of the best-known manufacturers of motor

vehicles worldwide, including in the United States. Opposer sells a wide variety of motor vehicles under its famous KIA mark, including, for example, passenger cars, semi-trucks, minibuses, vans, minivans, sports utility vehicles, all-terrain drive vehicles, omnibuses and motorcycles.

{F3059614.2 } 3. Since at least the early 1990s, Opposer and its licensees have used the mark KIA

and other KIA-inclusive marks in the United States in connection with motor vehicles, vehicle parts and related goods and services.

4. As a result of Opposer’s reputation, use, substantial sales success, inestimable popularity, and significant investment in advertising, the KIA mark has become famous throughout the United States and the world, and consumers have come to recognize the KIA mark as exclusively denoting Opposer’s goods and services.

5. Opposer owns numerous U.S. trademark registrations for the KIA mark in

connection with a wide array of goods and services, including, but not limited to, the following:

Reg’n No. Mark Reg’n Date International Class(es) 1723608 KIA 10/13/1992 12 1955539 02/13/1996 12

2351320 05/23/2000 12

3867593 10/26/2010 7, 9, 11, 12, and 35

5273518 08/29/2017 1, 4, 7, 9, 11, 12, 21

5617776 KIA CVIS 11/27/2018 9 4278052 01/22/2013 12

4154511 KIA UVO 06/05/2012 9

{F3059614.2 }

B. Applicant and Its Application

6. Upon information and belief and according to the online records of the United

States Patent and Trademark Office (“USPTO”), applicant Shandong Jiluer Tyre Co., Ltd. is a

China limited company with an address of Xinxing Industrial Park, Longyang, Tengzhou City,

Shandong, China 277532.

7. Upon information and belief and according to the online records of the USPTO, on December 6, 2018, Applicant filed with the USPTO trademark application Serial No.

88218775 (the “Application”) to register the mark shown below:

(hereinafter, “Applicant’s Mark”) for “Inner tubes for pneumatic tyres; Casings for pneumatic tires; Automobile tyres; Adhesive rubber patches for repairing inner tubes; Electric bicycles;

Solid tyres for vehicle wheels; Baby strollers; Motorcycles; Suspension shock absorbers for vehicles; Brake pads for automobiles” in International Class 44.

8. Applicant filed the Application under Section 1(a) of the Lanham Act, 15 U.S.C.

§ 1051(a), and in the Application claimed first use of Applicant’s Mark as of May 6, 2018, and

first use in commerce as of August 8, 2018.

9. Applicant is not connected to Opposer in any way, and has not been authorized by

Opposer to use Applicant’s Mark.

10. At the time that Applicant filed the Application herein opposed, or as of any date

upon which Applicant can rely, Applicant was on constructive notice of Opposer’s prior and

{F3059614.2 } exclusive rights in the KIA mark by virtue of Opposer’s federal registrations, pursuant to Section

22 of the Lanham Act, 15 U.S.C. § 1072.

11. Upon information and belief, at the time that Applicant filed the Application herein opposed, or as of any date upon which Applicant can rely, Applicant had actual knowledge of Opposer’s prior and exclusive rights in the KIA mark as a result of Opposer’s extensive use and promotion of the KIA mark and the fame of the KIA mark accruing from such use and promotion.

12. Opposer searched for but did not find any evidence of use in United States commerce of the mark EAKIA by Applicant on any goods, including the goods identified in the

Application in International Class 12, at any time.

FIRST GROUND FOR RELIEF PRIORITY AND LIKELIHOOD OF CONFUSION UNDER 15 U.S.C. § 1052(d)

13. Opposer repeats the allegations contained in paragraphs 1 through 12 above as if

fully set forth herein.

14. Upon information and belief, Opposer’s rights in the KIA mark in the United

States pre-exist any date on which Applicant can rely for its claim of rights in Applicant’s Mark.

15. Applicant’s Mark is highly similar to Opposer’s KIA mark in sight, sound, and

commercial impression, including because it incorporates Opposer’s KIA mark in its entirety and merely adds to it the prefix “ea” and because Opposer frequently uses marks incorporating KIA with other terms.

16. The goods identified in the Application are related to goods and services sold under the KIA mark and for which the KIA mark is registered.

17. Based on the similarity of the parties’ marks, the relatedness of the parties’ goods and services, the fame and strength of Opposer’s KIA mark, the breadth of goods and services

{F3059614.2 } upon which Opposer’s KIA mark has been used, and other factors, consumers are likely to be

deceived into falsely believing that the goods offered by Applicant under Applicant’s Mark

originate from or are otherwise associated with or endorsed by Opposer, or that there is some

relationship between Applicant and Opposer or the goods and services of Applicant and

Opposer, all to Opposer’s injury and harm.

18. Thus, registration of Applicant’s Mark as applied for in the Application is likely

to cause confusion, to cause mistake, or to deceive the public into the false belief that the goods

offered by Applicant under Applicant’s Mark come from or are otherwise sponsored by or

connected with Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).

SECOND GROUND FOR RELIEF DILUTION UNDER 15 U.S.C. § 1052(f)

19. Opposer repeats the allegations contained in paragraphs 1 through 18 above as if

fully set forth herein.

20. Opposer’s KIA mark is distinctive, has been used in commerce and widely

advertised throughout the United States, and is widely recognized by consumers as a symbol of

Opposer and its goods and services.

21. Opposer’s KIA mark is famous and has been famous long prior to any date upon

which Applicant can rely.

22. Applicant’s EAKIA mark incorporates Opposer’s famous KIA mark in whole and

is therefore closely similar to the KIA mark.

23. Applicant’s very use and registration of Applicant’s Mark will impair the

distinctiveness of Opposer’s KIA mark and its ability to identify the goods and services of

Opposer.

{F3059614.2 } 24. Further, any use Applicant makes of Applicant’s Mark will be on or in connection

with goods that are not approved or offered by Opposer. Upon information and belief, such

goods will be inferior to the quality of goods that are approved or offered by Opposer.

Applicant’s use of Applicant’s Mark will therefore tarnish the hard earned reputation and

goodwill built up in Opposer’s KIA mark.

25. Thus, Applicant’s registration of Applicant’s Mark in connection with the goods

identified in the Application will dilute by blurring and/or tarnishment Opposer’s famous KIA

mark in violation Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f).

THIRD GROUND FOR RELIEF VOID AB INITIO FOR NON-USE

26. Opposer repeats the allegations contained in paragraphs 1 through 25 above as if

fully set forth herein.

27. Upon information and belief, and upon Opposer’s investigation of Applicant and

its business, Applicant is not using Applicant’s Mark in U.S. commerce upon any of the goods

set forth in the Application.

28. Upon information and belief, and upon Opposer’s investigation of Applicant and

its business, at the time Applicant filed the Application under Section 1(a) of the Lanham Act,

Applicant was not using Applicant’s Mark in U.S. commerce in connection with any of the

goods set forth in the Application.

29. Because, notwithstanding Applicant’s claim of use in the Application, Applicant’s

Mark was not in use in commerce on or prior to the filing date of the Application in connection with any of the goods specified therein, the Application was void ab initio under Section 1(a) of

the Lanham Act, 15 U.S.C. 1051(a), and should not proceed to registration.

{F3059614.2 } FOURTH GROUND FOR RELIEF FRAUD

30. Opposer repeats the allegations contained in paragraphs 1 through 29 above as if

fully set forth herein.

31. In connection with the Application, Applicant claimed that it was using

Applicant’s Mark in U.S. commerce on or as of August 8, 2018.

32. In connection the Application, Applicant declared the following under penalty of

perjury:

[T]he applicant is the owner of the trademark/service mark sought to be registered; the applicant is using the mark in commerce on or in connection with the goods/services in the application;. . .

33. Applicant’s sworn statement in the Application that it “is using the mark in commerce on or in connection with the goods/services in the application” was false.

Specifically, upon information and belief, and upon Opposer’s knowledge of and investigation of

Applicant and its business, Applicant is not using and has never used the mark EAKIA in U.S. commerce for any goods. Further, upon information and belief, Applicant was fully aware that it had never used and was not using Applicant’s Mark in commerce in the United States when it swore under penalty of perjury that it was doing so.

34. Upon information and belief, Applicant knew that if it did not represent to the

USPTO that it had used Applicant’s Mark in U.S. commerce for the goods specified in the

Application then the USPTO would not approve Applicant’s Mark for registration.

35. There is therefore no other conclusion to be drawn than that Applicant intended

the USPTO to rely on its claim of use of Applicant’s Mark in U.S. commerce for the goods

specified in the Application, and in reliance on this statement, to approve Applicant’s Mark for

registration.

{F3059614.2 } 36. Upon information and belief, the USPTO, in approving the Application for publication and eventual registration, did in fact rely upon Applicant’s false statement regarding its use.

37. Therefore, upon information and belief, and upon the results of Opposer’s investigation, Applicant knowingly made false, material misrepresentations of fact in connection with the Application with the intent to defraud the USPTO.

38. Based on the aforementioned acts, Applicant committed fraud in connection with the Application.

WHEREFORE, Opposer respectfully requests that this opposition be sustained and that registration of the mark in International Class 12 sought by Application Serial No. 88218775 be denied.

Dated: New York, New York Fross Zelnick Lehrman & Zissu, P.C. June 13, 2019

By: /Laura Popp-Rosenberg/ Laura Popp-Rosenberg Jessica Vosgerchian 151 West 42nd Street, 17th Floor New York, NY 10036 Phone: (212) 813-5900 Email: [email protected] [email protected]

Attorneys for Opposer Kia Motors Corporation

{F3059614.2 }