Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1144939 Filing date: 07/07/2021

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 Leatherman Tool Group, Inc. Entity Corporation Citizenship Oregon Address 12106 N.E. AINSWORTH CIRCLE PORTLAND, OR 97220 UNITED STATES

Attorney informa- SARA MILLER tion ALSTON & BIRD LLP 101 SOUTH TRYON STREET SUITE 4000 CHARLOTTE, NC 28280-4000 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected] 704.444.1192

Docket Number 51238/562360 Applicant Information

Application No. 90322845 Publication date 06/08/2021 Opposition Filing 07/07/2021 Opposition Peri- 07/08/2021 Date od Ends Applicant KIM, DAE KYEONG 90 NAMSAN 2-GIL, EOMO-MYEON, GIMCHEON-SI GYEONGSANGBUK-DO, 39535 REPUBLIC OF KOREA Goods/Services Affected by Opposition

Class 008. First Use: 2019/09/30 First Use In Commerce: 2019/09/30 All goods and services in the class are opposed, namely: cases for knives, namely, knife roll-upbags; carrying cases for knives; knife bags Grounds for Opposition

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

U.S. Registration 5776732 Application Date 02/23/2018 No. Registration Date 06/11/2019 Foreign Priority NONE Date Word Mark FREE Design Mark

Description of NONE Mark Goods/Services Class 008. First use: First Use: 2019/03/26 First Use In Commerce: 2019/03/26 Hand tools being knives; knives, namely, pocket knives, folding knives, sport knives, hunting knives, fixed blade knives, camping knives, and survival knives; fabric and leather sheaths and carrying pouches for knives and multi-function hand tools; knife sharpeners; multi-function hand tools comprised of scissors, knife, screwdrivers, and any combination ofnail file, tweezers, bottle opener, canopener, cork puller, pliers, wire-cutters, wire stripper, crimper, combo edge knife blade with a liner lock, wood saw, bit driver, bit driver bits, awl, fire starter, whistle, hammer, carabiner, pocket clip, lanyard hole, removable ceramic- sharpening stick, package opener, ruler, file, scraper, punch, and strap cutter; hand tools, namely, pruners; multi-function hunting hand tool comprised of any- combination of the following knife blade, gut hook, bone saw, and sharpener; multi-function hunting hand tool comprisedof any combination of the following components bypass shears, wire cutters, saw, knife blade, choke tube tool, screwdriver, awl, and a bottle opener; hand tools, namely, tools for cutting seat belt, wrenches, tools for breaking and cuttingglass, and hex drive holes; multi- function hand tool for use by medical personnel not for medical use comprised of shears and any combination of file, ring cutter, oxygen wrench, strap cutter, glass breaker, ruler, and lanyard for use in emergency first responder rescue activities, excluding tools and devices used in surgical procedures; manually op- erated hand-held tool for use in connection withmaking adjustments to weapons and comprised of wrenches, bit driver and screwdriver bits, and any combination of gut hook, punch, lanyard, and carabiner; manually operated hand-held tool for use in connection with making adjustments to archery equipment and comprised of wrench, bit driver and screwdriver bits and any combination of diamond file, gut hook, lanyard, and carabiner

Attachments 87808983#TMSN.png( bytes ) Notice of Opposition_FREE LIFE MAKERS_Leatherman v. Kim.pdf(105608 bytes )

Signature /Sara Miller/ Name Sara Miller Date 07/07/2021

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

In the matter of Trademark Application Serial No. 90/322,845 Trademark: FREE LIFE MAKERS Filed: November 16, 2020 Published: June 8, 2021

------X Leatherman Tool Group, Inc., ) ) Opposer, ) ) Opposition No. ______v. ) ) Dae Kyeong Kim, ) ) Applicant. ) ------X

NOTICE OF OPPOSITION

Leatherman Tool Group, Inc., an Oregon corporation having a mailing address of 12106

N.E. Ainsworth Circle, Portland, Oregon 97220 (“Opposer” or “Leatherman”), believes that it will be damaged by the registration of the designation FREE LIFE MAKERS made the subject of Application Serial No. 90/322,845 (the “Application”), which was filed on November 16,

2020, by Dae Kyeong Kim, an individual, having a mailing address of 90 Namsan 2-gil, Eomo- myeon, Gimcheon-si Gyeongsangbuk-do, Republic of Korea, 39535 (“Applicant” or “Kim”).

Leatherman hereby opposes the registration of said mark.

As grounds of opposition, it is alleged that:

1. Since at least as early as March 26, 2019, and, in any event, since prior to either the November 16, 2020, filing date of the Application, or the September 30, 2019, alleged date of first use of the FREE LIFE MAKERS designation by Applicant, Opposer has continually used the trademark FREE in the United States in connection with hand tools and various other goods

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(“Opposer’s Mark”). Opposer’s goods sold under the FREE trademark include pocketknives and accessories therefor, and folding multipurpose tools that are comprised of one or more hand tools, including, but not limited to, knives, scissors, screwdrivers, wire cutters, wire strippers, saws, files, can openers, and bottle openers.

2. The availability of those goods under the FREE mark has been promoted and advertised to the public at considerable expense.

3. By reason of the adoption and the longstanding and continuous use of the FREE mark, that designation has a distinctive quality in this country and has acquired special and particular significance and very valuable goodwill as identifying Opposer and its pocketknife and hand-tool products.

4. Consequently, through such usage and recognition, Opposer has acquired common-law rights in the designation FREE as a proprietary trademark, which rights extend, without limitation, to the exclusive right to use such designation nationwide in conjunction with pocketknives, hand tools, and related goods.

5. Opposer also owns a U.S. registration for the FREE mark, namely, U.S. Reg. No.

5,776,732, which issued June 11, 2019, from an application filed February 23, 2018, and pertains to the use of the FREE designation as a trademark for various goods, including, without limitation, pocketknives, multifunction hand tools, and related goods. Opposer’s federal registration of its FREE mark is valid, subsisting, and in full force and effect.

6. On November 16, 2020, Applicant Kim filed U.S. Appl. Serial No. 90/322,845 to register the designation FREE LIFE MAKERS as a trademark for use on goods in International

Class 8, specifically, “cases for knives, namely, knife roll-up bags; carrying cases for knives; knife bags.” In so doing, Applicant claims to have used the designation FREE LIFE MAKERS in commerce as a trademark for those goods since September 30, 2019, after Leatherman

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commenced use of the FREE trademark for pocketknives, multifunction hand tools, and related goods in the United States, and after Leatherman’s February 23, 2018, date of nationwide constructive use of its FREE trademark.

7. Applicant’s Mark includes the entirety of Leatherman’s proprietary FREE trademark for pocketknives, hand tools, and related goods, which factor contributes significantly to a likelihood of confusion.

8. Further, some of the goods listed in the Application are identical to the pocketknife-related goods listed in Opposer’s registration for FREE, namely, carrying pouches for knives. Other goods listed in the opposed Application are closely related to other goods listed in Opposer’s registration, such as knives and pocket knives. Accordingly, the channels of trade and target consumers of the parties’ FREE and FREE LIFE MAKERS goods are presumed to be identical. These factors all contribute to a likelihood of confusion.

9. Hence, the Application to register the designation FREE LIFE MAKERS in

International Class 8 should be refused on the basis that the usage of that mark on the goods listed therein is likely to cause confusion with Opposer’s FREE mark.

10. Accordingly, Leatherman asserts that it will be damaged by the issuance of a registration for the FREE LIFE MAKERS mark to Applicant as sought in the Application.

WHEREFORE, Leatherman prays that said Application for registration of the FREE

LIFE MAKERS mark be rejected, that no registration be issued thereon to Applicant, and that this opposition be sustained in favor of Leatherman.

Please charge all fees incurred by Leatherman in conjunction with this proceeding to the firm’s Deposit Account No. 16-0605.

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Date: July 7, 2021 Respectfully submitted,

/Sara Miller/ Larry C. Jones Sara Miller Alston & Bird LLP 101 S. Tryon Street, Suite 4000 Charlotte, North Carolina 28280-4000 Telephone: (704) 444-1000 [email protected] [email protected]

Attorneys for Opposer, Leatherman Tool Group, Inc.

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