ESTTA Tracking number: ESTTA1090553 10/22/2020

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1090553

Filing date: 10/22/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91244876

Party PlaintiffKona USA, Inc.

CorrespondenceAddress

STEVEN E KLEINDAVIS WRIGHT TREMAINE LLP1300 SW FIFTH AVENUE, SUITE 2400PORTLAND, OR 97201UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected], [email protected]

Submission Motion for Summary Judgment

Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule2.120(a); OR the motion for summary judgment is based on claim or issue pre-clusion, or lack of jurisdiction.

The deadline for pretrial disclosures for the first testimony period as originally setor reset: 12/08/2020

Filer's Name Steven E. Klein

Filer's email [email protected], [email protected], [email protected], [email protected]

Signature /s Steven E. Klein/

Date 10/22/2020

Attachments 02-00 - Motion for SJ_FINAL.pdf(392016 bytes )02-01-00 - Klein Declaration Redacted_FINAL.pdf(3112632 bytes )02-01-01 - Klein Declaration Redacted_FINAL.pdf(3236246 bytes )02-02 - Heilbron Declaration ISO Opposers MPSJ - Exs_FINAL.pdf(2398597bytes )

http://estta.uspto.gov

OPPOSER’S MOTION FOR 1 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Trademark Application Serial No. 87/934,992

For the Mark:

Published: October 23, 2018

KONA USA, INC.,

Opposer,

v.

GLOBAL ESPRIT INC.,

Applicant.

Opposition No. 91244876

OPPOSER’S MOTION FOR PARTIAL SUMMARY JUDGMENT

Opposer, Kona USA, Inc. (“Opposer”), by and through its undersigned counsel, moves

for partial summary judgment refusing Applicant Global Esprit Inc.’s (“Applicant”) intent-to-use

Application Ser. No. 87/934,992 (the “Application”) to register the KONA81 stylized mark

(“Applicant’s Mark”) in connection with “[a]thletic apparel, namely, shirts, pants, jackets,

footwear, hats and caps, athletic uniforms;” “[c]lothing for athletic use, namely, padded pants;”

“[c]lothing for athletic use, namely, padded shirts;” “[c]lothing for athletic use, namely, padded

shorts;” “[c]yclists’ jerseys;” and “triathlon shirts” for lack of bona fide intent to use, pursuant to

Trademark Act Section 1(b), 15 U.S.C. § 1051(b).1

1 Concurrently with Motion, Opposer moves to amend its Notice of Opposition to assert an

additional claim for refusal of the Application in part for lack of bona fide intent with respect to

the goods identified herein. 23 TTABVUE; see TBMP § 528.07(a) (“[A] party that seeks

summary judgment on an unpleaded issue may simultaneously move to amend its pleading to

assert the matter”).


I. UNDISPUTED FACTS.

A. Opposer’s Use and Registration of Its KONA Mark.

Opposer manufactures and sells bicycles, as well as clothing, accessories and

promotional merchandise under the KONA word mark in United States commerce. Declaration

of Jacob Heilbron (“Heilbron Decl.2”) ¶¶ 4-5 & Exs. 1-5. Opposer is the owner of U.S.

Registration 1642717 for the word mark KONA in International Class 12 for “Bicycles,” which

issued April 30, 1991. Id. ¶ 3; Declaration of Steven E. Klein (“Klein Decl.”) ¶ 2 & Ex. 1.

Since well prior to May 24, 2018, Opposer has continuously engaged in the marketing,

promotion, sale and shipment in U.S. interstate and international commerce of KONA-branded

bicycles, shirts, jerseys, shorts, socks and hats. Heilbron Decl., ¶ 6.

B. Applicant’s Application to Register KONA81.

On May 24, 2018, Applicant, a Taiwanese corporation, filed its Application to register

Applicant’s Mark on an intent-to-use basis in connection with numerous goods in International

Class 25, including: “[a]thletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,

athletic uniforms;” “[c]lothing for athletic use, namely, padded pants;” “[c]lothing for athletic

use, namely, padded shirts;” “[c]lothing for athletic use, namely, padded shorts;” “[c]yclists’

jerseys,” and “triathlon shirts” (collectively, the “Disputed Goods”). May 24, 2018 Application,

USPTO Trademark Status and Document Retrieval system (“TSDR”) 4.

The Application included a supporting declaration, signed pursuant to 18 U.S.C. § 1001

by P. Jay Hines as “Counsel, Virginia Bar Member” stating in relevant part that “[t]he applicant

has a bona fide intention to use the mark in commerce on or in connection with the

goods/services in the application,” “[t]o the best of the signatory’s knowledge and belief, the

2 Mr. Heilbron is co-owner and Vice President of Opposer. Heilbron Decl. ¶ 2.


facts recited in the application are accurate,” and “[t]o 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.” May 24, 2018

Application, TSDR 5.

C. Applicant’s Responses to Written Discovery.

On May 29, 2019, Opposer served Applicant with a first set of requests for production.

Klein Decl. ¶ 3 & Ex. 2. On July 11, 2019, Applicant served written responses. Id. ¶ 4 & Ex. 3.

Applicant’s responses to Opposer’s first set of requests for production included the following:

REQUEST NO. 1: All documents referencing an actual or planned date of the

first commercial sale of a product bearing Applicant’s trademark in the United

States.

RESPONSE: Applicant identifies and produces Amazon platform extracts dated

February 27, 2019 with respect to clothing items and October 19. 2016 with

respect to swim goggles.

REQUEST NO. 7: A sample of each label, tag, sticker, container, package, box,

packaging insert, point of sale display or brochure ever used, sold, or considered

for use or sale, bearing or depicting Applicant’s mark in the United States.

RESPONSE: Applicant produces a representative sampling of such documents.

REQUEST NO. 9: High resolution images of each different type of product

bearing Applicant’s trademark that Applicant is currently selling in the United

States or that it plans to sell in the United States.

RESPONSE: Applicant produces a representative sampling of such documents.

REQUEST NO. 14: All documents regarding the types and classes of consumers

to whom, and the markets and channels of trade in the United States through

which Applicant markets or sells, or plans to market or sell, goods and services

identified by Applicant’s trademark, including without limitation all documents

indicating the channels of commerce through which Applicant offers or sells, or

plans to offer or sell, its services or goods to consumers, and including without

limitation all documents indicating the manner in which orders are solicited, or

will be solicited, for Applicant’s goods and services marketed or sold under

Applicant’s trademark or by any division, subsidiary, or related company.

RESPONSE: Applicant produces screenshots from its active websites and third

party online sites.


REQUEST NO. 15: All documents referring or relating to your current U.S.

marketing and branding strategy and target consumer for products bearing

Applicant’s trademark.

RESPONSE: Applicant is not in possession of any such documents.

REQUEST NO. 18: Documents referring or relating to, or comprising, analyses,

studies, or reports relating to the sales or projected sales of Applicant’s goods or

services under Applicant’s trademark, including but not limited to business plans,

marketing plans, development plans, financial plans, and budgetary plans.

RESPONSE: Applicant is not in possession of any such documents.

REQUEST NO. 19: All documents referring or relating to, or comprising, any

plan Applicant has to expand the type of goods or services it offers for sale under

Applicant’s trademark.

RESPONSE: Applicant is not in possession of any such documents

REQUEST NO. 21: Documents sufficient to show the current organizational

structure of Applicant’s operations, including without limitation documents

sufficient to identify any parent, subsidiary or other related companies of

Applicant.

RESPONSE: Applicant does not have any related companies.

REQUEST NO. 22: Documents sufficient to identify Applicant’s officers,

directors and managerial employees and their respective duties.

RESPONSE: Applicant is not in possession of any such documents

Klein Decl. Ex. 3.

Applicant’s responses were also accompanied by a production of documents totaling a

mere 59 pages. Klein Decl. ¶ 5 & Ex. 4. The documents related exclusively to Applicant’s

swimsuits, swim bags, kickboards and swim goggles. Id. None of the documents referred to any

plans or preparations to offer any of the Disputed Goods for sale, whether under the applied-for

mark or otherwise. Id.

On May 11, 2020, Opposer served Applicant with a second set of interrogatories and

requests for production. Klein Decl. ¶¶ 6-7 & Exs. 5-6. On August 24, 2020, Applicant served

written responses. Id. ¶¶ 8-9& Exs. 7-8. Applicant’s responses to Opposer’s second set of

interrogatories included the following:


INTERROGATORY NO. 20: Identify all brands of bicycles that You have ever

manufactured, resold or distributed.

RESPONSE: Global has not manufactured, resold, or distributed any bicycles.

INTERROGATORY NO. 21: Identify all plans You have to manufacture, resell

or distribute bicycles.

RESPONSE: Global does not currently plan to manufacture, resell or distribute

any bicycles.

INTERROGATORY NO. 22: Identify all categories of cycling apparel or

equipment that You have ever manufactured, resold or distributed.

RESPONSE: Global has not currently manufactured, resold, or distributed any

cycling apparel or equipment.

INTERROGATORY NO. 23: Identify all plans You have to manufacture, resell

or distribute cycling apparel or equipment.

RESPONSE: Global does not currently have any plans to manufacture, resell or

distribute cycling apparel or equipment.

INTERROGATORY NO. 24: Identify all categories of cycling apparel or

equipment that You have ever manufactured, resold or distributed.

RESPONSE: Global does not currently manufactured, resold, or distributed any

cycling apparel or equipment.

INTERROGATORY NO. 25: Describe in detail all steps taken towards the

offering, providing, or sale of athletic apparel, namely, shirts, pants, jackets,

footwear, hats and caps, athletic uniforms under or in connection with Applicant’s Mark.

RESPONSE: Global objects to this Request on the basis that it is overly broad,

unduly burdensome, vague, and ambiguous in that it seeks all steps taken towards

the offering, providing, or sale. Subject to and without waiving the foregoing

objections, Global states that it has currently not taken any steps towards the

offering, providing, or sale of athletic apparel, namely, shirts, jackets, footwear,

hats and caps, under or in connection with Applicant’s Mark, but has offered

swimwear for sale that includes pants and athletic uniforms on kona81.com and

through its distribution channels.


offering, providing, or sale of clothing for athletic use, namely, padded pants

under or in connection with Applicant’s Mark. RESPONSE: Global objects to this Request on the basis that it is overly broad,




offering, providing, or sale of clothing for athletic use, namely padded pants

under or in connection with Applicant’s Mark.

http://kona81.com/



offering, providing, or sale of clothing for athletic use, namely, padded shirts





offering, providing, or sale of clothing for athletic use, namely, padded shirts



offering, providing, or sale of clothing for athletic use, namely, padded shorts





offering, providing, or sale of clothing for athletic use, namely, padded shorts



offering, providing, or sale of cyclists’ jerseys under or in connection with

Applicant’s Mark. RESPONSE: Global objects to this Request on the basis that it is overly broad,




offering, providing, or sale of cyclists’ jerseys under or in connection with Applicant’s Mark.

Klein Decl. Ex. 7.

Applicant’s responses to Opposer’s second set of requests for production also included

the following:

REQUEST NO. 29: All documents You have used or intend to use in connection

with the sale, advertising or promotion of Applicant’s Goods under Applicant’s Mark in the United States that mention bicycles, bikes, cycles, cycling, biking or

cyclists, or clothing or apparel to worn while riding a bicycle.

RESPONSE: Global is not in possession of any such document.

REQUEST NO. 37: Documents sufficient to identify all categories of cycling

apparel or equipment that You have ever manufactured, resold or distributed

anywhere in the world.


RESPONSE: Global is currently not in possession of such document.

REQUEST NO. 38: Documents sufficient to show all steps taken towards the

offering, providing, and sale of any clothing for athletic use, namely, padded

pants under or in connection with Applicant’s Mark.


REQUEST NO. 39: Documents sufficient to show all manufacturers,

distributors, and wholesalers that you have used or intend to use in connection

with the production, distribution, and sale of any clothing for athletic use, namely,

padded pants under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.

REQUEST NO. 40: For each manufacturer, distributor, and wholesaler identified

in response to Document Request No. 39, Documents sufficient to identify all

business arrangements with the manufacturer, distributor, or wholesaler regarding

clothing for athletic use, namely, padded pants.




shirts under or in connection with Applicant’s Mark.





padded shirts under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.




clothing for athletic use, namely, padded shirts.




shorts under or in connection with Applicant’s Mark.





padded shorts under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.





clothing for athletic use, namely, padded shorts.



offering, providing, and sale of any of cyclists’ jerseys under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.



with the production, distribution, and sale of any cyclists’ jerseys under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.




cyclists’ jerseys. RESPONSE: Global is currently not in possession of such document.


offering, providing, and sale of any triathlon clothing, namely, triathlon tights,

triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits under or in

connection with Applicant’s Mark. RESPONSE: Global has produced documents related to swimwear as related to

triathlon tights, triathlon shorts, triathlon singlets, and triathlon suits, and is

currently not in possession of any additional document.




triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets,

triathlon shirts, triathlon suits.

RESPONSE: Global is not in possession of such document.

Klein Decl. Ex. 8.

Applicant’s responses were also accompanied by an additional production of documents

totaling 43 pages. Klein Decl. ¶ 10 & Ex. 9. The documents related exclusively to Applicant’s

swimsuits, swimwear for triathlons, kickboards and swim goggles and ear plugs. Id. None of


the documents referred to any plans or preparations to offer any of the Disputed Goods for sale,

whether under the applied-for mark or otherwise. Id. Nor did the document include any

documents evidencing Applicant’s claim in response to Interrogatory No. 25 to have “offered

swimwear for sale that includes pants and athletic uniforms on kona81.com and through its

distribution channels.” Id.

II LEGAL STANDARD

Summary judgment is appropriate where there are no genuine disputes as to any material

facts, thus allowing the claim to be resolved as a matter of law. Fed. R. Civ. P. 56(a). The party

seeking summary judgment bears the burden of demonstrating the absence of any genuine

dispute of material fact, and that it is entitled to judgment under the applicable law. See Celotex

Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Sweats Fashions, Inc. v. Pannill Knitting, 833

F.2d 1560, 1563, 4 U.S.P.Q.2d 1793, 1796 (Fed. Cir. 1987).

III. ARGUMENT

A. There is No Genuine Issue of Material Fact Concerning Opposer’s Standing.

To establish standing to oppose an application to register a trademark, Opposer need only

demonstrate that it has a “real interest” in the proceedings and a “reasonable” basis for its belief

of damage. Ritchie v. Simpson, 170 F.3d 1092, 1095-99, 50 U.S.P.Q.2d 1023, 1027-29 (Fed. Cir.

1999). Once Opposer shows standing on any pleaded ground, it may assert any other valid basis

for refusal. See A&H Sportswear Co., Inc. v. William W. Yedor, ___ U.S.P.Q.2d ____, 2019 WL

1453071, at *3 (TTAB Mar. 29, 2019) (“Standing having been established, petitioner is entitled

to rely on any statutory ground which negates appellant's right to the subject registration and may

invoke the general public interest in support of its claim.”) (quoting Lipton Indus. v. Ralston

Purina Co., 670 F.2d 1024, 1031, 213 U.S.P.Q. 185, 190 (CCPA 1982)).

http://kona81.com/


Here, Opposer has sufficiently alleged a claim of likelihood of confusion that is not

wholly without merit, based on its ownership of its pleaded Registration No. 1642717 for its

KONA mark in connection with bicycles, which is valid is subsisting, and prior use of Opposer’s

mark with bicycles and related goods. 1 TTABVUE. In support of its allegations, Opposer has

submitted a copy of the Trademark Status and Document retrieval record for Registration No.

1642717, showing current status and title in Opposer’s name. Klein Decl. ¶ 2 & Ex. 1. Opposer

has also presented the declaration of its co-owner and Vice President Jacob Heilbron, averring to

Opposer’s longstanding use of the KONA mark in connection with bicycles, cycling apparel,

including shirts, jerseys, shorts, socks and hats. Heilbron Decl. ¶¶ 1-6 & Exs. 1-5. Such

allegations and evidence is sufficient to establish the absence of any genuine dispute that

Opposer has a real interest in the outcome of this proceeding and a reasonable basis for its belief

of damages. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 U.S.P.Q.2d 1842,

1844 (Fed. Cir. 2000); Lipton Indus., 670 F.2d at 1028-29, 213 U.S.P.Q. at 189.

B. There is No Genuine Issue of Material Fact Concerning Applicant’s Lack of Bona Fide Intent to Use the KONA81 Mark with the Disputed Goods.

Trademark Act Section 1(b) requires that every application to register a mark on an

intent-to-use basis filed with the Patent and Trademark be accompanied by a statement verified

by the applicant specifying, among other things, the applicant’s bona fide intent to use the mark

in commerce. 15 U.S.C. § 1051(b)(1), (b)(3)(B). The absence of a bona fide intent to use the

mark as of the application filing date is a proper basis to challenge an application under Section

1(b), M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 U.S.P.Q.2d 1892 (Fed. Cir. 2015), as

an applicant’s lack of a bona fide intent to use in connection with recited goods and services at

the time of filing renders an application void as to those goods and services. American Forests v.

Sanders, 54 U.S.P.Q.2d 1860 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000).


Whether an applicant has a bona fide intention to use the mark in commerce is an

objective determination based on the totality of the circumstances. See M.Z. Berger, 787 F.3d at

1376, 114 U.S.P.Q.2d at, 1898; Swiss Grill Ltd. v. Wolf Steel Ltd., 115 U.S.P.Q.2d 2001, 2008

(TTAB 2015). The objective evidence must indicate an intention to use the mark that is “firm”

and “demonstrable.” M.Z. Berger, 787 F.3d at 1375-76, 114 U.S.P.Q.2d at 1897-98, Swiss Grill,

115 U.S.P.Q.2d at 2007. A “mere subjective belief” is insufficient. Id.

Where there is no evidence of an applicant's bona fide intent to use the mark at issue on

the claimed goods or services, entry of summary judgment on a claim that the applicant had no

bona fide intent to use the mark in commerce when the involved application was filed may be

warranted. See Honda Motor Co. v. Winkelmann, 90 U.S.P.Q.2d 1660 (TTAB 2009).

Further, the absence of any documentary evidence regarding an applicant's bona fide

intention to use a mark in commerce establishes a prima facie case that an applicant lacks such

intention as required by Section 1(b), and shifts the burden to Applicant to rebut the prima facie

case by offering evidence which would adequately explain or outweigh its failure to provide such

documentary evidence. See Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, 88

U.S.P.Q.2d 1581, 1587 (TTAB 2008); Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26

U.S.P.Q.2d 1503, 1507 & n.11 (TTAB 1993).

Here, the record demonstrates that there is no objective evidence that Applicant had a

bona fide intent to use Applicant’s mark with the Disputed Goods as of the time the Application

was filed. As a threshold matter, Applicant concedes that Applicant:

Has not manufactured, resold or distributed cycling apparel (Resp. to Interrog.

No. 22);

Has no plans to manufacture, resell or distribute cycling apparel (Resp. to

Interrog. No. 23);


Has not taken any steps towards the offering, providing, or sale of “athletic apparel, namely, shirts, jackets, footwear, hats and caps;”3 “clothing for athletic use, namely, padded pants;” “clothing for athletic use, namely, padded shirts;” “clothing for athletic use, namely, padded shorts;” “cyclists’ Jerseys;” and “triathlon shirts” under or in connection with Applicant’s Mark (Resp. to

Interrog. Nos. 25-29).

Klein Decl. Ex. 7.

Applicant’s responses to Opposer’s written discovery likewise identify no documents that

show any plans to use, any use of, or any concrete steps toward using, Applicant’s Mark on any

of the Disputed Goods, or that show advertising, promotions, media, marketing plans, business

plans or packaging materials or expenditures directed towards the same. Indeed, the categories of

documents that Applicant expressly states that it does not have include:

Documents referring or relating to Applicant’s current U.S. marketing and

branding strategy and target consumer for products bearing Applicant's

trademark (Resp. to Req. No. 15);

Documents referring or relating to, or comprising, analyses, studies, or reports

relating to the sales or projected sales of Applicant's goods or services under

Applicant's trademark, including but not limited to business plans, marketing

plans, development plans, financial plans, and budgetary plans (Resp. to Req.

No. 18);

Documents referring or relating to, or comprising, any plan Applicant has to

expand the type of goods or services it offers for sale under Applicant's

trademark (Resp. to Req. No. 19);

Documents used or intended for use in connection with the sale, advertising or

promotion of Applicant’s Goods under Applicant’s Mark in the United States that mention bicycles, bikes, cycles, cycling, biking or cyclists, or clothing or

apparel to worn while riding a bicycle (Resp. to Req. No. 29);

Documents sufficient to show the steps taken towards the offering, providing,

and sale of “clothing for athletic use, namely, padded pants;” “clothing for athletic use, namely, padded shirts;” “clothing for athletic use, namely, padded

3 While Applicant does make the conclusory assertion that it “has offered swimwear for sale that

includes pants and athletic uniforms on kona81.com and through its distribution channels,” Resp. to Interrog. No. 25, Applicant has produced no objective evidence that corroborates this claim.


shorts;” “cyclists’ Jerseys;” and “triathlon shirts” (Resp. to Req. Nos. 38, 41,

44, 47, 51);

Documents sufficient to show the manufacturers, distributors, and wholesalers

that Applicant has used or intends to use in connection with the production,

distribution, and sale of the same, and any business arrangements therewith

Resp. to Req. Nos. 39, 40, 41, 43, 45-46, 48-49).

Klein Decl. Exs. 3, 8.

Although Applicant had the opportunity when responding to Opposer’s written discovery

to come forward with documentary evidence to show any concrete steps taken or plans made to

actually use Applicant’s Mark in connection with the Disputed Goods, such as marketing plans,

business plans, manufacturing, licensing or marketing efforts, correspondence with potential

manufacturers or licensees, or the creation of labels or promotional materials directed to the

Disputed Goods, no such evidence was identified or produced. See Klein Decl. ¶¶ 4-5, 8-10 &

Exs. 3-4, 7-9. In sum, the lack of documentation demonstrates Applicant’s lack of a bona fide

intent to use the applied-for mark in connection with the Disputed Goods at the time of filing.

See Honda Motor Co., 90 U.S.P.Q.2d at 1664 (Board granted summary judgment sustaining the

opposition where applicant had no documentary evidence to support its intent to use); A&H

Sportswear, 2019 WL 1453071, at *7; SmithKline Beecham Corp. v. Omnisource DDS LLS, 97

U.S.P.Q.2d 1300, 1304 (TTAB 2010).

The record also shows that Applicant has no discernable experience or expertise in

manufacturing or selling the Disputed Goods. Applicant’s discovery responses and production

show that Applicant is a small enterprise that, at best, has only sold a limited line of swimsuits

and basic swim accessories, such as goggles and kickboards. Applicant has no prior experience

or plans to manufacture cycling apparel and has provided no evidence that it has any

demonstrable means or expertise to manufacture or sell specialized sporting apparel, such as


padded pants, padded shirts, padded shorts or cycling jerseys. See L’Oreal S.A. v. Marcon, 102

U.S.P.Q2d 1434, 1442-44 (TTAB 2012) (applicant’s lack of capacity to produce the goods

identified in application supports finding of no bona fide intent).

In short, the record here is analogous to those cases in which the applicant had no

evidence of its business plans or partners, its capacity to offer the disputed goods, its concrete

steps taken in preparation for using the mark or its design or marketing preparations at or near

the time of filing. See e.g. L’Oreal, 102 U.S.P.Q.2d at 1442-44; SmithKline Beecham, 97

U.S.P.Q.2d at 1304-05; A&H Sportswear, 2019 WL 1453071; LinkedIn Corp. v. Int’l Council for

Educ. Reform & Dev., Opp. No. 91225285, 2018 WL 529851, at *7 (TTAB Jan. 19, 2018) (non-

precedential). As in those cases, the evidence here is consistent with a finding that Applicant

lacked a bona fide intention to use Applicant’s Mark with the Disputed Goods at the time of

filing. Accordingly, entry of partial summary judgment refusing the Application with respect to

the Disputed Goods is appropriate.

IV. CONCLUSION

For the reasons set forth above, Opposer respectfully requests that the Board grant partial

summary judgment refusing registration of the Disputed Goods on the ground of lack of bona

fide intent to use pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b).

DATED October 22, 2020 DAVIS WRIGHT TREMAINE LLP

By: /s Steven E. Klein/

Sheila Fox Morrison

Steven E Klein

1300 S.W. Fifth Avenue, Suite 2400

Portland, OR 97201-5610

Tel: (503) 778-5311

Fax: (503) 778-5299

[email protected]

[email protected]

Attorneys for Opposer Kona USA, Inc.


CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of the foregoing MOTION FOR PARTIAL

SUMMARY JUDGMENT has been served, via electronic mail, on this 22nd day of October,

2020, upon the following.

Thomas Lee

BACON & THOMAS PLLC

625 Slaters Lane, Fourth Floor

Alexandria, VA 22314

[email protected]; [email protected];

[email protected]

Counsel for Global Esprit Inc.

DAVIS WRIGHT TREMAINE LLP

/s Steven E. Klein /

Steven E. Klein

DECLARATION OF STEVEN E. KLEIN 1 4822-6884-6543v.2 0114823-000005




For the Mark:


KONA USA, INC.,

Opposer,

v.

GLOBAL ESPRIT INC.,

Applicant.


DECLARATION OF STEVEN E. KLEIN

IN SUPPORT OF MOTION FOR PARTIAL SUMMARY JUDGMENT

I, STEVEN E. KLEIN, declare as follows:

1. I am an attorney with Davis Wright Tremaine LLP, counsel for Opposer Kona

USA, Inc. (“Opposer”) in this matter.

2. Attached as Exhibit 1 is a true and correct a copy of the Trademark Status and

Document Retrieval record for U.S. Registration No. 1642717, as it appeared on October 22,

2020.

3. Attached as Exhibit 2 is a true and correct copy of excerpts from Opposer’s First

Set of Requests for Production to Applicant, served on May 29, 2019.

4. Attached as Exhibit 3 is a true and correct copy of excerpts from Applicant’s

Responses to Opposer’s First Set of Requests for Production, served on July 11, 2019.

DECLARATION OF STEVEN E. KLEIN 2 4822-6884-6543v.2 0114823-000005

5. Attached as Exhibit 4 is a true and correct copy of 59 pages of documents

produced by Applicant (without production numbers) on or about July 11, 2019.

6. Attached as Exhibit 5 is a true and correct copy of excerpts from Opposer’s

Second Set of Interrogatories to Applicant, served on May 11, 2020.

7. Attached as Exhibit 6 is a true and correct copy of excerpts from Opposer’s

Second Set of Requests for Production to Applicant, served on May 11, 2020.


Responses to Opposer’s Second Set of Interrogatories, served on August 24, 2020.


Responses to Opposer’s Second Set of Requests for Production, served on August 24, 2020.

10. Attached as Exhibit 9 is a true and correct copy of 43 pages of documents

produced by Applicant (without production numbers) on or about August 24, 2020.

I declare under penalty of perjury that the foregoing is true and correct.

Executed on October 22, 2020

Beaverton, Oregon

/s Steven E. Klein/

Steven E. Klein

Mark Information

Mark LiteralElements:

KONA

Standard CharacterClaim:

No

Mark DrawingType:

1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)

Foreign Information

Priority Claimed: Yes

ForeignApplication

Number:

616928 ForeignApplication Filing

Date:

Oct. 11, 1988

ForeignRegistration

Number:

370624 ForeignRegistration Date:

Jul. 13, 1990

ForeignApplication/Registration

Country:

CANADA Foreign ExpirationDate:

Jul. 13, 2005

Goods and Services

Note:The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; andAsterisks *..* identify additional (new) wording in the goods/services.

For: BICYCLES

InternationalClass(es):

012 - Primary Class U.S Class(es): 019

Class Status: ACTIVE

Basis: 44(e)

Basis Information (Case Level)

Filed Use: No Currently Use: No

Generated on: This page was generated by TSDR on 2020-10-22 15:18:39 EDT

Mark: KONA

US Serial Number: 73791929 Application FilingDate:

Apr. 07, 1989

US RegistrationNumber:

1642717 Registration Date: Apr. 30, 1991

Register: Principal

Mark Type: Trademark

TM5 Common StatusDescriptor:

LIVE/REGISTRATION/Issued and Active

The trademark application has been registered with the Office.

Status: The registration has been renewed.

Status Date: Mar. 12, 2011

Publication Date: Feb. 05, 1991

Kona USA, Inc. v. Global Esprit Inc.,

Opp. No. 91244876 (TTAB)

Declaration of Steven E. Klein

EXHIBIT 1

Filed ITU: No Currently ITU: No

Filed 44D: No Currently 44E: Yes

Filed 44E: No Currently 66A: No

Filed 66A: No Currently No Basis: No

Filed No Basis: No

Current Owner(s) Information

Owner Name: KONA USA INC.

Owner Address: 2455 SALASHAN LOOPFERNDALE, WASHINGTON UNITED STATES 98248

Legal Entity Type: CORPORATION State or CountryWhere Organized:

WASHINGTON

Attorney/Correspondence Information

Attorney of Record

Attorney Name: Sheila Fox Morrison Docket Number: 114823-4

Attorney PrimaryEmail Address:

[email protected] Attorney EmailAuthorized:

Yes

Correspondent

CorrespondentName/Address:

Sheila Fox MorrisonDavis Wright Tremaine LLP1300 SW Fifth Avenue, Suite 2400Suite 2400Portland, OREGON UNITED STATES 97201

Phone: 5032412300 Fax: 503.778.5499

Correspondent e-mail:

[email protected] Correspondent e-mail Authorized:

Yes

Domestic Representative

DomesticRepresentative

Name:

Barry E. Bretschneider

Prosecution History

Date DescriptionProceedingNumber

Apr. 30, 2020 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED

Jan. 08, 2020 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Jan. 08, 2020 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Feb. 09, 2019 NEW CERTIFICATE UNDER SECTION 7 Â– PROCESSED 59136

Feb. 06, 2019 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY

Feb. 04, 2019 TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED

Aug. 04, 2018 POST REGISTRATION ACTION MAILED - SEC. 7 59136

Jan. 25, 2018 POST REGISTRATION ACTION MAILED - SEC. 7 59136

Jan. 25, 2018 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 59136

Dec. 28, 2017 TEAS SECTION 7 REQUEST RECEIVED

Dec. 18, 2017 REGISTERED - SEC. 7 REQUEST ABANDONED 59136

Dec. 18, 2017 POST REGISTRATION ACTION MAILED - SEC. 7 59136

Dec. 18, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 59136

Nov. 09, 2017 TEAS VOLUNTARY AMENDMENT RECEIVED

Nov. 08, 2017 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Nov. 08, 2017 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Mar. 30, 2017 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Mar. 30, 2017 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Mar. 12, 2011 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 68973

Mar. 12, 2011 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Mar. 12, 2011 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 68973


Opp. No. 91244876 (TTAB)


EXHIBIT 1

Mar. 11, 2011 TEAS SECTION 8 & 9 RECEIVED

Oct. 18, 2007 CASE FILE IN TICRS

Aug. 16, 2001 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)

Aug. 16, 2001 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Aug. 14, 2001 RESPONSE RECEIVED TO POST REG. ACTION - SEC. 8 & 9

Jul. 25, 2001 POST REGISTRATION ACTION MAILED - SEC. 8 & 9

Apr. 27, 2001 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED

Sep. 14, 1996 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.

Jul. 01, 1996 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED

Mar. 04, 1994 CANCELLATION DENIED NO. 999999 19854

Aug. 26, 1991 CANCELLATION INSTITUTED NO. 999999 19854

Apr. 30, 1991 REGISTERED-PRINCIPAL REGISTER

Feb. 05, 1991 PUBLISHED FOR OPPOSITION

Jan. 04, 1991 NOTICE OF PUBLICATION

Nov. 02, 1990 APPROVED FOR PUB - PRINCIPAL REGISTER

Oct. 10, 1990 CORRESPONDENCE RECEIVED IN LAW OFFICE

Aug. 01, 1990 LETTER OF SUSPENSION MAILED

Jun. 29, 1990 CORRESPONDENCE RECEIVED IN LAW OFFICE

Jan. 04, 1990 INQUIRY AS TO SUSPENSION MAILED

Jun. 14, 1989 LETTER OF SUSPENSION MAILED

Jun. 13, 1989 CANCELLATION TERMINATED NO. 999999 67509

TM Staff and Location Information

TM Staff Information - None

File Location

Current Location: POST REGISTRATION Date in Location: Feb. 09, 2019

Assignment Abstract Of Title Information

Summary

Total Assignments: 2 Registrant: TBG THE BICYCLE GROUP INC.

Assignment 1 of 2

Conveyance: ASSIGNS THE ENTIRE INTEREST AND THE GOODWILL

Reel/Frame: 1186/0179 Pages: 4

Date Recorded: Jul. 21, 1994

SupportingDocuments:

No Supporting Documents Available

Assignor

Name: TBG THE BICYCLE GROUP INC. Execution Date: Jun. 14, 1994

Legal Entity Type: EXISTS UNDER LAWS OF CANADA State or CountryWhere Organized:

No Place Where Organized Found

Assignee

Name: KONA USA INC.

Legal Entity Type: EXISTS UNDER LAW OF CANADA State or CountryWhere Organized:

No Place Where Organized Found

Address: 1122 FIR AVENUE BLAINE, WASHINGTON 98230

Correspondent

CorrespondentName:

CHRISTIE, PARKER & HALE

CorrespondentAddress:

D. BRUCE PROUTP.O. BOX 7068PASADENA, CA 91109-7068

Domestic Representative - Not Found

Assignment 2 of 2


Opp. No. 91244876 (TTAB)


EXHIBIT 1

Conveyance: CORRECTIVE ASSIGNMENT TO CORRECT THE ASSIGNEE ENTITY AND STATE OF INCORPORATION PREVIOUSLYRECORDED ON REEL 001186 FRAME 179. ASSIGNOR(S) HEREBY CONFIRMS THE TRADEMARK ASSIGNMENT.

Reel/Frame: 6545/0389 Pages: 6

Date Recorded: Nov. 28, 2018

SupportingDocuments:

assignment-tm-6545-0389.pdf

Assignor

Name: TBG THE BICYCLE GROUP INC. Execution Date: Jun. 14, 1994


CANADA

Assignee

Name: KONA USA INC.


WASHINGTON

Address: 1122 FIR AVENUEBLAINE, WASHINGTON 98230

Correspondent

CorrespondentName:

SEED IP LAW GROUP LLP


701 FIFTH AVENUESUITE 5400SEATTLE, WA 98104

Domestic Representative - Not Found

Proceedings

Summary

Number ofProceedings:

7

Type of Proceeding: Opposition

ProceedingNumber:

91250991 Filing Date: Sep 17, 2019

Status: Terminated Status Date: Jan 07, 2020

InterlocutoryAttorney:

ELIZABETH WINTER

Defendant

Name: Kona Enterprises, Inc.


MICHAEL F SNYDERVOLPE AND KOENIG PC30 SOUTH 17TH STREET SUITE 1800PHILADELPHIA PA UNITED STATES , 19103


[email protected] , [email protected] , [email protected]

Associated marks

Mark Application Status Serial NumberRegistrationNumber

KONA SURF CO. Registered 88157009 6158800

Plaintiff(s)

Name: Kona USA, Inc.


KEVIN COSTANZASEED IP LAW GROUP LLP701 FIFTH AVENUE, SUITE 5400SEATTLE WA UNITED STATES , 98104


[email protected] , [email protected]

Associated marks

Mark Application StatusSerialNumber

RegistrationNumber


Opp. No. 91244876 (TTAB)


EXHIBIT 1

KONA REGISTERED AND RENEWED 73791929 1642717

Prosecution History

Entry Number History Text Date Due Date

1 FILED AND FEE Sep 17, 2019

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 17, 2019 Oct 27, 2019

3 INSTITUTED Sep 17, 2019

4 D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 24, 2019

5 SUSPENDED Oct 24, 2019

6 MOT TO AMEND APPLICATION Oct 28, 2019

7 D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Dec 27, 2019

8 BD DECISION: OPP DISMISSED W/ PREJ Jan 07, 2020

9 TERMINATED Jan 07, 2020


ProceedingNumber:

91244876 Filing Date: Nov 20, 2018

Status: Suspended Status Date: Aug 07, 2019


ASHLEY D HAYES

Defendant

Name: Global Esprit Inc.


THOMAS LEEBACON & THOMAS PLLC625 SLATERS LANE, FOURTH FLOORALEXANDRIA VA UNITED STATES , 22314



Associated marks


RegistrationNumber

KONA81 Opposition Pending 87934992

Plaintiff(s)



STEVEN E KLEINDAVIS WRIGHT TREMAINE LLP1300 SW FIFTH AVENUE, SUITE 2400PORTLAND OR UNITED STATES , 97201


[email protected] , [email protected] , [email protected] , [email protected]

Associated marks


RegistrationNumber


Prosecution History


1 FILED AND FEE Nov 20, 2018

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Nov 20, 2018 Dec 30, 2018

3 PENDING, INSTITUTED Nov 20, 2018

4 ANSWER Dec 28, 2018


6 P MOT FOR EXT W/ CONSENT Mar 14, 2019

7 EXTENSION OF TIME GRANTED Mar 14, 2019

8 P MOT FOR EXT W/ CONSENT Jun 24, 2019

9 EXTENSION OF TIME GRANTED Jun 24, 2019

10 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Aug 07, 2019

11 SUSPENDED Aug 07, 2019

12 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Nov 04, 2019


Opp. No. 91244876 (TTAB)


EXHIBIT 1

13 SUSPENDED Nov 04, 2019

14 D APPEARANCE / POWER OF ATTORNEY Nov 12, 2019

15 P APPEARANCE / POWER OF ATTORNEY Dec 20, 2019

16 P CHANGE OF CORRESP ADDRESS Dec 20, 2019

17 D APPEARANCE / POWER OF ATTORNEY Jan 21, 2020

18 D CHANGE OF CORRESP ADDRESS Jan 30, 2020

19 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Jan 31, 2020

20 SUSPENDED Feb 27, 2020

21 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS May 26, 2020

22 SUSPENDED May 26, 2020


ProceedingNumber:

91237547 Filing Date: Nov 01, 2017

Status: Terminated Status Date: Jun 29, 2019


JILL M MCCORMACK

Defendant

Name: Hyundai Motor America


ROBERT B GOLDENLACKENBACH SIEGEL LLP1 CHASE RD, LACKENBACH SIEGEL BUILDINGSCARSDALE NY UNITED STATES , 10583-4156


[email protected] , [email protected] , [email protected]

Associated marks


KONA Registered 87171109 5897542

Plaintiff(s)

Name: Kona USA Inc.


KEVIN S COSTANZASEED IP LAW GROUP LLP701 FIFTH AVENUE, SUITE 5400SEATTLE WA UNITED STATES , 98104


[email protected] , [email protected] , [email protected] , [email protected]

Associated marks


RegistrationNumber


Prosecution History


1 FILED AND FEE Nov 01, 2017

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Nov 01, 2017 Dec 11, 2017

3 PENDING, INSTITUTED Nov 01, 2017

4 D CHANGE OF CORRESP ADDRESS Dec 11, 2017


6 P MOT TO COMPEL DISCOVERY May 07, 2018

7 SUSP PEND DISP OF OUTSTNDNG MOT May 08, 2018

8 D OPP/RESP TO MOTION May 29, 2018

9 P REPLY IN SUPPORT OF MOTION Jun 18, 2018




13 TRIAL DATES RESET Oct 01, 2018

14 P MOT FOR EXT W/ CONSENT Oct 23, 2018


Opp. No. 91244876 (TTAB)


EXHIBIT 1

15 EXTENSION OF TIME GRANTED Oct 23, 2018

16 D NOTICE OF EXPERT DISCLOSURES Jan 04, 2019

17 STIP FOR EXT Jan 08, 2019

18 EXTENSION OF TIME GRANTED Jan 09, 2019

19 STIP FOR EXT Mar 20, 2019

20 EXTENSION OF TIME GRANTED Mar 26, 2019

21 D CHANGE OF CORRESP ADDRESS Apr 22, 2019

22 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS May 02, 2019

23 SUSPENDED May 02, 2019

24 W/DRAW OF OPPOSITION Jun 26, 2019

25 BD DECISION: OPP DISMISSED W/ PREJ Jun 29, 2019

26 TERMINATED Jun 29, 2019


ProceedingNumber:

91179493 Filing Date: Sep 13, 2007

Status: Terminated Status Date: Dec 22, 2007


LINDA M SKORO

Defendant

Name: Darin Booton


Darin Booton522 Cedar StreetSt Charles IL UNITED STATES , 60174-1837


[email protected]

Associated marks


RegistrationNumber

KONA ENDURANCE Abandoned - After Inter-Partes Decision 77106777

Plaintiff(s)



Kevin S. CostanzaSeed IP Law Group PLLC701 Fifth Avenue, Suite 5400Seattle WA UNITED STATES , 98104



Associated marks


RegistrationNumber


Prosecution History




3 PENDING, INSTITUTED Sep 13, 2007

4 NOTICE OF DEFAULT Nov 07, 2007

5 BOARD'S DECISION: SUSTAINED Dec 22, 2007

6 TERMINATED Dec 22, 2007


ProceedingNumber:

91166607 Filing Date: Sep 16, 2005

Status: Terminated Status Date: Sep 25, 2006


ANGELA LYKOS

Defendant


Opp. No. 91244876 (TTAB)


EXHIBIT 1

Name: Stevens, Lynnette J.


Stevens, Lynnette J.73-4335 Holoholo StreetKailua-Kona HI UNITED STATES , 96740

Associated marks


RegistrationNumber

KONA BUILT LOCALFIED 808 Abandoned - After Inter-Partes Decision 78346736

Plaintiff(s)

Name: KONA USA INC.


Kevin S. CostanzaSEED IP Law Group PLLC701 Fifth Avenue; Suite 6300Seattle WA UNITED STATES , 98104-7092

Associated marks


RegistrationNumber


Prosecution History




3 PENDING, INSTITUTED Sep 19, 2005

4 NOTICE OF DEFAULT Dec 16, 2005

5 Duplicate of #6 Dec 27, 2005


7 Notice of default vacated; trial dates reset Jan 10, 2006

8 RESPONSES TO DISCOVERY REQUESTS Apr 10, 2006

9 BD'S ORDER RE: DISCOVERY Apr 29, 2006

10 P'S MOTION TO AMEND PLEADING/AMENDED PLEADING Jul 28, 2006

11 P'S MOTION FOR SUMMARY JUDGMENT Jul 28, 2006

12 P'S DECLARATION IN SUPPORT OF ITS MOTION Jul 28, 2006

13 P'S MOT TO SUSP PEND DISP OUTSTNDNG MOT Jul 28, 2006

14 SUSPENDED PENDING DISP OF OUTSTNDNG MOT Aug 09, 2006

15 BOARD'S DECISION: SUSTAINED Sep 25, 2006

16 TERMINATED Sep 25, 2006


ProceedingNumber:

91166285 Filing Date: Aug 17, 2005

Status: Terminated Status Date: May 30, 2006


CINDY B GREENBAUM

Defendant

Name: DKC Designs, Inc.


KIT M. STETINA, ESQ.STETINA BRUNDA GARRED & BRUCKER75 ENTERPRISE, SUITE 250ALISO VIEJO CA UNITED STATES , 92656

Associated marks


RegistrationNumber

KONA CLAY Abandoned - After Inter-Partes Decision 78443274

Plaintiff(s)

Name: KONA USA INC.


KEVIN S. COSTANZASEED IP LAW GROUP PLLC701 FIFTH AVENUE, SUITE 6300


Opp. No. 91244876 (TTAB)


EXHIBIT 1

SEATTLE WA UNITED STATES , 98104

Associated marks


RegistrationNumber


Prosecution History


1 FILED AND FEE Aug 17, 2005

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Aug 18, 2005 Sep 27, 2005

3 PENDING, INSTITUTED Aug 18, 2005

4 NOTICE OF DEFAULT Mar 20, 2006

5 BOARD'S DECISION: SUSTAINED May 30, 2006

6 TERMINATED May 30, 2006

Type of Proceeding: Cancellation

ProceedingNumber:

92019854 Filing Date: May 28, 1991

Status: Terminated Status Date: Jun 02, 1994


MARC BERGSMAN

Defendant

Name: TBG THE BICYCLE GROUP INC.


D. BRUCE PROUTCHRISTIE, PARKER & HALEP.O. BOX 7068PASADENA CA UNITED STATES , 91109-7068

Associated marks


RegistrationNumber


Plaintiff(s)

Name: WORLD TRIATHLON CORPORATION


WILLIAM T. RIFKINROCKEY AND RIFKIN30 NORTH LASALLE STREET, SUITE 2700CHICAGO IL UNITED STATES , 60602

Associated marks


Prosecution History


1 FILED AND FEE May 28, 1991

2 NOTICE SENT; ANSWER DUE: 10/07/91 Aug 26, 1991

3 DELETE ENTRY Aug 26, 1991

4 DELETE ENTRY Oct 16, 1991

5 PENDING, INSTITUTED Aug 26, 1991

6 ANSWER Oct 10, 1991

7 STIPULATION TO REOPEN TESTIMONY Nov 08, 1991

8 D'S MOT FOR EXTEN. OF TIME W/ CONSENT Jan 23, 1992

9 P'S MOT FOR EXTEN. OF TIME W/ CONSENT Mar 10, 1992

10 PL'S MOT TO SUSP PROCS Jun 08, 1992

11 PROCS RESUMED; TRIAL DATES RESET Mar 25, 1993

12 P'S MOT FOR EXTEN. OF TIME W/ CONSENT Jul 16, 1993

13 DEF'S OPP TO PL'S MOTION TO EXT TIME Jul 26, 1993

14 TRIAL DATES SET Sep 29, 1993

15 STIP TO DISMISS Oct 22, 1993

16 PL'S BRIEF IN RESPONSE Nov 05, 1993


Opp. No. 91244876 (TTAB)


EXHIBIT 1

17 DF'S BRIEF IN RESPONSE TO #16 Nov 30, 1993

18 PL'S MOT TO STRIKE Dec 10, 1993

19 D'S RESPONSE TO MOTION TO STRIKE Jan 04, 1994

20 BOARD'S DECISION: DISMISSED W/ PREJUDICE Mar 04, 1994

21 TERMINATED Jun 02, 1994


Opp. No. 91244876 (TTAB)


EXHIBIT 1

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

Kona USA, Inc. Opposer, v. Global Esprit, Inc., Applicant.

) ) ) ) ) ) ) ) ) )

Opposition No. 91244876 Serial No. 87/934992 Attorney Docket No. 550069.814

OPPOSER'S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT

Pursuant to Section 2.120 of the Rules of Practice in Trademark Cases and Rules 26 and

34 of the Federal Rules of Civil Procedure, Opposer, Kona USA, Inc. (“Kona” or “Opposer”), by

their undersigned attorneys, requests that Applicant Global Esprit, Inc. (“Global Esprit” or

“Applicant”), provide written responses to these requests and produce the requested documents

for inspection and copying at the location where the documents are usually kept or at some other

mutually agreeable location within thirty (30) days after service. These document requests are

continuing and the responses thereto must be supplemented and newly discovered documents

must be promptly produced, to the extent required by Fed. R. Civ. P. 26(e).

INSTRUCTIONS

1. Pursuant to Federal Rules of Civil Procedure 26 and 34, you are required to

answer the following Requests for Production separately and fully, under oath, in writing, within

thirty (30) days from the date of service. You must answer each Request for Production on the

basis of all information in your possession, custody, or control. You must furnish all requested

information that is known by, possessed by, or available to you or to any of your attorneys,

consultants, representatives, or other agents.


Opp. No. 91244876 (TTAB)


EXHIBIT 2

OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 2

2. Documents produced in response to these requests shall be delivered to the offices

of Seed IP Law Group LLP, located at 701 5th Avenue, Suite 5400, Seattle, WA 98104. At

Plaintiff’s option, documents may also be delivered via secure online file transfer to

[email protected] and [email protected].

3. If you object to answering any Request for Production, in whole or in part, state

your objection and state with particularity all of the factual and legal reasons supporting your

objection.

4. If you refuse to provide information or documents on the basis that it is

privileged, you are requested to describe in sufficient detail, the nature of the privilege and facts

upon which you rely to support the claim of privilege. If you contend any responsive document

is privileged, in whole or in part, you shall, in a privilege log, set forth the following information:

a. the date;

b. the type of document or thing, e.g., letter or memorandum;

c. the name and title of the authors if a document and the persons present if an

oral communication;

d. the name and title of all recipients;

e. the subject matter;

f. the number of pages;

g. the nature of the privilege claimed and facts upon which you rely to support

the claim of privilege; and

h. the number of the Request to which the document or thing is responsive.

5. Following the service of your responses to these requests, you are subject to the

duty of supplementation imposed by Rule 26(e) of the Federal Rules of Civil Procedure. These

discovery requests shall be deemed continuing and continuously renewed until the time of trial.

6. Objection will be made at the time of any trial or hearing to any attempt to

introduce evidence which is directly responsive to these Requests for Production and to which no

disclosure has been made.


Opp. No. 91244876 (TTAB)


EXHIBIT 2


DEFINITIONS

1. If any request, instruction or definition is ambiguous or unclear to you, you are

requested to contact the undersigned counsel as soon as possible so the request, instruction or

definition can be clarified to avoid unnecessary delays in discovery.

2. “Applicant” and “Global Esprit” and “you” and “your” means Global Esprit, Inc.,

and all predecessors or successors in interest, partners, employees, consultants, agents, attorneys,

and persons acting or purporting to act on their behalf.

3. “Opposer” and “Kona” mean Kona USA, Inc., unless otherwise specified.

4. “Applicant’s trademark” refers to the mark that is the subject of U.S. Application

No. 87/934,992.

5. “Opposer’s trademark” refers to the mark that is the subject of U.S. Registration

1,642,717, as well as any use of a “KONA” trademark by Opposer.

6. “KONA” encompasses all forms and variations of the term “Kona,” including but

not limited to variations in capitalization, font, and stylization, and whether used alone or in

combination with one or more additional terms.

7. “Identify” in reference to a person or entity means to provide its full name,

address and telephone number.

8. “Identify” in reference to a product means to provide the full name of the product

as labelled or advertised to purchasers of the product and the generic name of the type of

product.

9. “Identified” means named, listed, included, referred-to, or otherwise designated.

10. “Communication” means any type of transmittal of information (in the form of

facts, ideas, inquiries or otherwise), including any electronic correspondence, such as emails,

written correspondence and any summaries or notes of any communications.


Opp. No. 91244876 (TTAB)


EXHIBIT 2


11. “Document” is defined to be synonymous in meaning and equal in scope to the

usage of this term in Federal Rule of Civil Procedure 34(a), including, without limitation,

electronic or computerized data compilations. A draft or non-identical copy is a separate

document within the meaning of this term.

12. “Person” means any natural person or any business, legal or governmental entity

or association.

13. “Concerning” means relating to, referring to, describing, evidencing or

constituting, embodying, identifying, revealing, confirming, containing, showing, involving or

mentioning, or pertaining to in any way, directly or indirectly, or having any logical or factual

connection with the subject matter in question.

14. “Including” means including without limitation.

15. The connectives “and” and “or” shall be construed either disjunctively or

conjunctively as necessary to bring within the scope of the discovery request all responses that

might otherwise be construed to be outside of its scope.

REQUESTS FOR PRODUCTION

REQUEST NO. 1:

All documents referencing an actual or planned date of the first commercial sale of a

product bearing Applicant’s trademark in the United States.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 2


REQUEST NO. 7:

A sample of each label, tag, sticker, container, package, box, packaging insert, point of

sale display or brochure ever used, sold, or considered for use or sale, bearing or depicting

Applicant’s mark in the United States.

RESPONSE:

REQUEST NO. 9:

High resolution images of each different type of product bearing Applicant’s trademark

that Applicant is currently selling in the United States or that it plans to sell in the United States.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 2


REQUEST NO. 14:

All documents regarding the types and classes of consumers to whom, and the markets

and channels of trade in the United States through which Applicant markets or sells, or plans to

market or sell, goods and services identified by Applicant’s trademark, including without

limitation all documents indicating the channels of commerce through which Applicant offers or

sells, or plans to offer or sell, its services or goods to consumers, and including without

limitation all documents indicating the manner in which orders are solicited, or will be solicited,


Opp. No. 91244876 (TTAB)


EXHIBIT 2


for Applicant’s goods and services marketed or sold under Applicant’s trademark or by any

division, subsidiary, or related company.

RESPONSE:

REQUEST NO. 15:

All documents referring or relating to your current U.S. marketing and branding strategy

and target consumer for products bearing Applicant’s trademark.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 2


REQUEST NO. 18:

Documents referring or relating to, or comprising, analyses, studies, or reports relating to

the sales or projected sales of Applicant’s goods or services under Applicant’s trademark,

including but not limited to business plans, marketing plans, development plans, financial plans,

and budgetary plans.

RESPONSE:

REQUEST NO. 19:

All documents referring or relating to, or comprising, any plan Applicant has to expand

the type of goods or services it offers for sale under Applicant’s trademark.

RESPONSE:

REQUEST NO. 21:

Documents sufficient to show the current organizational structure of Applicant’s

operations, including without limitation documents sufficient to identify any parent, subsidiary

or other related companies of Applicant.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 2


REQUEST NO. 22:

Documents sufficient to identify Applicant’s officers, directors and managerial

employees and their respective duties.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 2


DATED this 29th day of May, 2019.

Respectfully submitted,

SEED IP Law Group LLP /Thomas A. Shewmake/ Kevin S. Costanza Thomas A. Shewmake [email protected] [email protected] 701 Fifth Avenue, Suite 5400 Seattle, Washington 98104 Telephone (206) 622-4900 Facsimile: (206) 682-6031

Attorneys for Opposer KONA USA, INC.


Opp. No. 91244876 (TTAB)


EXHIBIT 2



I do hereby certify that on this 29th day of May, 2019 a true and correct copy of the

above and foregoing OPPOSER'S FIRST SET OF REQUESTS FOR PRODUCTION TO

APPLICANT has been served via email to:

Joe McKinney Muncy Jay Hines Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 [email protected] [email protected] [email protected]

/Jennifer Ruppert/

Jennifer Ruppert


Opp. No. 91244876 (TTAB)


EXHIBIT 2


Opp. No. 91244876 (TTAB)


EXHIBIT 3


Opp. No. 91244876 (TTAB)


EXHIBIT 4

OPPOSER’S SECOND SET OF 1 INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 0114823-000005




For the Mark:


KONA USA, INC.,

Opposer,

v.

GLOBAL ESPRIT INC.,

Applicant.


OPPOSER’S SECOND SET OF INTERROGATORIES TO APPLICANT

In accordance with Rules 26 and 33 of the Federal Rules of Civil Procedure and Rule

2.120 of the Trademark Rules of Practice, Opposer Kona USA, Inc. requests that Applicant

Global Esprit Inc. answer the following Interrogatories under oath, subject to the following

definitions and instructions, within thirty (30) days after service.

DEFINITIONS AND INSTRUCTIONS

1. “Applicant” and “Global Esprit” and “you” and “your” means Global Esprit Inc.,

and all predecessors or successors in interest, officers, directors, employees, attorneys, and

persons acting or purporting to act on their behalf.

2. “Opposer” and “Kona USA” mean Kona USA, Inc., unless otherwise specified.

3. “Applicant’s Mark” refers to the mark that is the subject of U.S. Application

No. 87/934,992.


Opp. No. 91244876 (TTAB)


EXHIBIT 5

OPPOSER’S SECOND SET OF 2

INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 0114823-000005

4. “Applicant’s Goods” refers to the goods recited in U.S. Application

No. 87/934,992.

5. “Opposer’s Mark” refers to the mark that is the subject of U.S. Registration No.













or association.









13. Unless otherwise stated herein, all interrogatories apply to activities in or in

connection with the United States.


Opp. No. 91244876 (TTAB)


EXHIBIT 5



INTERROGATORY NO. 20:

Identify all brands of bicycles that You have ever manufactured, resold or distributed.

RESPONSE:


Identify all plans You have to manufacture, resell or distribute bicycles.

RESPONSE:


Identify all categories of cycling apparel or equipment that You have ever manufactured,

resold or distributed.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 5




Identify all plans You have to manufacture, resell or distribute cycling apparel or

equipment.

RESPONSE:




RESPONSE:


Describe in detail all steps taken towards the offering, providing, or sale of athletic

apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms under or in

connection with Applicant’s Mark.

RESPONSE:


Describe in detail all steps taken towards the offering, providing, or sale of clothing for

athletic use, namely, padded pants under or in connection with Applicant’s Mark.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 5





athletic use, namely, padded shirts under or in connection with Applicant’s Mark.

RESPONSE:



athletic use, namely, padded shorts under or in connection with Applicant’s Mark.

RESPONSE:


Describe in detail all steps taken towards the offering, providing, or sale of cyclists’

jerseys under or in connection with Applicant’s Mark.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 5



DATED May 11, 2020 DAVIS WRIGHT TREMAINE LLP


Sheila Fox Morrison

Steven E Klein



Tel: (503) 778-5311

Fax: (503) 778-5299

[email protected]

[email protected]



Opp. No. 91244876 (TTAB)


EXHIBIT 5




I hereby certify that a true and complete copy of the foregoing OPPOSER’S SECOND

SET OF INTERROGATORIES TO APPLICANT has been served, via electronic mail, on this

11th day of May, 2020, upon the following.

Thomas Lee

BACON & THOMAS PLLC



[email protected]; [email protected];

[email protected]

Counsel for Global Esprit Inc.


/s Steven E. Klein /

Steven E. Klein


Opp. No. 91244876 (TTAB)


EXHIBIT 5

OPPOSER’S SECOND SET OF REQUESTS 1

FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005




For the Mark:


KONA USA, INC.,

Opposer,

v.

GLOBAL ESPRIT INC.,

Applicant.


OPPOSER’S SECOND SET OF REQUESTS FOR PRODUCTION TO APPLICANT

In accordance with Rules 26 and 34 of the Federal Rules of Civil Procedure and Rule

2.120 of the Trademark Rules of Practice, Opposer Kona USA, Inc. requests that Applicant

Global Esprit Inc., within thirty (30) days after service, produce at the offices of Davis Wright

Tremaine LLP, 1300 S.W. Fifth Avenue, Suite 2400, Portland, Oregon 97201, or such other

place as counsel may agree, and permit Opposer to inspect and copy, the documents and objects

listed below in each of the categories, subject to the following definitions.

DEFINITIONS AND INSTRUCTIONS

1. “Applicant” and “Global Esprit” and “you” and “your” means Global Esprit Inc.,

and all predecessors or successors in interest, officers, directors, employees, attorneys, and

persons acting or purporting to act on their behalf.

2. “Opposer” and “Kona USA” mean Kona USA, Inc., unless otherwise specified.

3. “Applicant’s Mark” refers to the mark that is the subject of U.S. Application

No. 87/934,992.


Opp. No. 91244876 (TTAB)


EXHIBIT 6



4. “Applicant’s Goods” refers to the goods recited in U.S. Application

No. 87/934,992.

5. “Opposer’s Mark” refers to the mark that is the subject of U.S. Registration No.













or association.









13. If production of any document is withheld on the basis of a claim of privilege,

each withheld document must be separately identified by providing the following information

(see Upjohn Co. v. United States, 449 U.S. 383 (1981)):


Opp. No. 91244876 (TTAB)


EXHIBIT 6



a. The identity and position of the person or persons supplying the information;

b. The date and manner of recording, or otherwise providing the instrument;

c. The names of the person or persons other than stenographic or clerical assistance

participating in the preparation of the documents;

d. The name and position of each person to whom the content of the document is

addressed or communicated to by copying, exhibiting, reading, or substantial

summarization;

e. A general description of the subject matter of the document; and

f. The type of privilege claimed (attorney/client or work product).

14. As used herein, the singular shall include the plural, and the present tense shall

include the past tense.

15. In addition to providing supplementary responses and amended production as

required by Rule 26(e) of the Federal Rules of Civil Procedure, Opposer requests that if

Applicant subsequently obtains further information or different documents or items or

information responsive to this request, it produce that information or those documents or items

promptly. If Applicant for any reason is not agreeable to providing such supplementary

responses and amended production, Opposer requests that Applicant so advise Opposer’s

attorneys at the time it serves its original response to this request.


Opp. No. 91244876 (TTAB)


EXHIBIT 6



REQUESTS FOR PRODUCTION

REQUEST NO. 29:

All documents You have used or intend to use in connection with the sale, advertising or

promotion of Applicant’s Goods under Applicant’s Mark in the United States that mention

bicycles, bikes, cycles, cycling, biking or cyclists, or clothing or apparel to worn while riding a

bicycle.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 6



REQUEST NO. 37:

Documents sufficient to identify all categories of cycling apparel or equipment that You

have ever manufactured, resold or distributed anywhere in the world.

RESPONSE:

REQUEST NO. 38:

Documents sufficient to show all steps taken towards the offering, providing, and sale of

any clothing for athletic use, namely, padded pants under or in connection with Applicant’s

Mark.

RESPONSE:

REQUEST NO. 39:

Documents sufficient to show all manufacturers, distributors, and wholesalers that you

have used or intend to use in connection with the production, distribution, and sale of any

clothing for athletic use, namely, padded pants under or in connection with Applicant’s Mark.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 6



REQUEST NO. 40:

For each manufacturer, distributor, and wholesaler identified in response to Document

Request No. 39, Documents sufficient to identify all business arrangements with the

manufacturer, distributor, or wholesaler regarding clothing for athletic use, namely, padded

pants.

RESPONSE:

REQUEST NO. 41:


any clothing for athletic use, namely, padded shirts under or in connection with Applicant’s

Mark.

RESPONSE:

REQUEST NO. 42:



clothing for athletic use, namely, padded shirts under or in connection with Applicant’s Mark.

RESPONSE:

REQUEST NO. 43:




shirts.


Opp. No. 91244876 (TTAB)


EXHIBIT 6



RESPONSE:

REQUEST NO. 44:


any clothing for athletic use, namely, padded shorts under or in connection with Applicant’s

Mark.

RESPONSE:

REQUEST NO. 45:



clothing for athletic use, namely, padded shorts under or in connection with Applicant’s Mark.

RESPONSE:

REQUEST NO. 46:




shorts.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 6



REQUEST NO. 47:


any of cyclists’ jerseys under or in connection with Applicant’s Mark.

RESPONSE:

REQUEST NO. 48:



cyclists’ jerseys under or in connection with Applicant’s Mark.

RESPONSE:

REQUEST NO. 49:



manufacturer, distributor, or wholesaler regarding cyclists’ jerseys.

RESPONSE:

REQUEST NO. 50:


any triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts,

triathlon suits under or in connection with Applicant’s Mark.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 6



REQUEST NO. 52:



manufacturer, distributor, or wholesaler regarding triathlon clothing, namely, triathlon tights,

triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 6



DATED May 11, 2020 DAVIS WRIGHT TREMAINE LLP


Sheila Fox Morrison

Steven E Klein



Tel: (503) 778-5311

Fax: (503) 778-5299

[email protected]

[email protected]



Opp. No. 91244876 (TTAB)


EXHIBIT 6




I hereby certify that a true and complete copy of the foregoing OPPOSER’S SECOND

SET OF REQUESTS FOR PRODUCTION TO APPLICANT has been served, via electronic

mail, on this 11th day of May, 2020, upon the following.

Thomas Lee

BACON & THOMAS PLLC



[email protected]; [email protected]


/s Steven E. Klein/

Steven E. Klein


Opp. No. 91244876 (TTAB)


EXHIBIT 6

Attorney Ref: GLOB7001/TL



Mark: KONA81 (Stylized)

App. No.: 87/934992

Filed: May 24, 2018

Kona USA, Inc.,

Opposer,

v. Opposition No. 91244876

Global Esprit, Inc.,

Applicant.

APPLICANT’S RESPONSES TO OPPOSER’S

SECOND SET OF INTERROGATORIES

Pursuant to the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and

Trademark Office (“USPTO”) Rules of Practice, 37 C.F.R. § 2.116 and 37 C.F.R. § 2.120(a)(3),

Applicant, Global Esprit, Inc. (“Global”) hereby files its Answers and Objections to Opposer,

Kona USA, Inc. (“Kona”)’s Second Set of Interrogatories, served on May 11, 2020. These

answers are based upon the best information presently available to Global and best belief of its

counsel, and are made without prejudice to the right of Global to make additional or modified

answers should better of further information or belief subsequently become available to Global.

Moreover, these answers are made without prejudice to any right of Global to offer evidence on

its behalf or to object to the relevance, competence or admissibility of any ground of any


Opp. No. 91244876 (TTAB)


EXHIBIT 7

ANSWER TO SECOND SET OF INTERROGATORIES

OPPOSITION


2

evidence or witness offered by Kona; and these answers do not constitute an admission of

competence or admissibility or evidence or a waiver of objection on any grounds.

GENERAL OBJECTIONS

1. Global objects to each and every discovery request (“Request” or “Requests”) to

the extent that it calls for information protected by the attorney-client privilege, attorney work

product, or that constitutes trial preparation materials on the grounds that matter within the

attorney-client privilege is outside the scope of permissible discovery and that attorney work

product and trial preparation material, absent an appropriate showing, fall outside the scope of

permissible discovery.

2. Global objects to Kona’s Requests to the extent they seek information that

constitutes confidential, highly confidential business, or trade/secret/commercially sensitive

information, but provide such information and documents in accordance with the terms of the

Stipulated Protective Order.

3. Global objects to Kona’s Requests to the extent they seek discovery from third

parties.

4. Global objects to Kona’s Requests to the extent they seek information that is not

within Global’s possession, custody, or control; to the extent that the information is in the public

domain and equally available to Kona; or to the extent that the information is already in Kona’s

possession.

5. Global objects to Kona’s Requests to the extent they are unreasonably broad,

unduly burdensome, oppressive, vague or ambiguous.


Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


3

6. Global objects to Kona’s Requests to the extent they seek information pertaining

to matters outside of the United States.

7. Global does not, by any response to any Request, admit to the validity of any

legal or factual contention asserted or assumed in the text of any Request.

8. Global objects to Kona’s Requests on the ground that its discovery and analysis

are ongoing and reserves the right to assert additional objections as appropriate, and to amend or

supplement these objections and responses as appropriate.

9. Global responds to Kona’s Requests as it understands and interprets them. To the

extent Kona asserts a differing interpretation, Global reserves the right to supplement its

responses and/or objections.

10. These General Objections are incorporated into each of the specific responses set

forth below, and the following responses are made without waiver of any of the General

Objections. Moreover, the production of any non-relevant information, whether or not in

response to any discovery requests, is not to be construed as a waiver of a claim of irrelevancy.

SECOND SET OF INTERROGATORIES


Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


6


Identify all brands of bicycles that You have ever manufactured, resold or distributed.

RESPONSE:

Global has not manufactured, resold, or distributed any bicycles.


Identify all plans You have to manufacture, resell or distribute bicycles.

RESPONSE:

Global does not currently plan to manufacture, resell, or distribute any bicycles.




RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


7

Global has not currently manufactured, resold, or distributed any cycling apparel or

equipment.


Identify all plans You have to manufacture, resell or distribute cycling apparel or

equipment.

RESPONSE:

Global does not currently have any plans to manufacture, resell or distribute cycling

apparel or equipment.




RESPONSE:

Global has not currently manufactured, resold, or distributed any cycling apparel or

equipment


Describe in detail all steps taken towards the offering, providing, or sale of athletic

apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms under or in

connection with Applicant’s Mark.

RESPONSE:


Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


8

Global objects to this Request on the basis that it is overly broad, unduly burdensome,

vague, and ambiguous in that it seeks all steps taken towards the offering, providing, or sale.

Subject to and without waiving the foregoing objections, Global states that it has currently not

taken any steps towards the offering, providing, or sale of athletic apparel, namely, shirts,

jackets, footwear, hats and caps, under or in connection with Applicant’s Mark, but has offered

swimwear for sale that includes pants and athletic uniforms on kona81.com and through its

distribution channels.



athletic use, namely, padded pants under or in connection with Applicant’s Mark.

RESPONSE:




taken any steps towards the offering, providing, or sale of clothing for athletic use, namely

padded pants under or in connection with Applicant’s Mark.




Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


9

athletic use, namely, padded shirts under or in connection with Applicant’s Mark.

RESPONSE:




taken any steps towards the offering, providing, or sale of clothing for athletic use, namely,

padded shirts under or in connection with Applicant’s Mark.



athletic use, namely, padded shorts under or in connection with Applicant’s Mark.

RESPONSE:




taken any steps towards the offering, providing, or sale of clothing for athletic use, namely,

padded shorts under or in connection with Applicant’s Mark.


Describe in detail all steps taken towards the offering, providing, or sale of cyclists’

jerseys under or in connection with Applicant’s Mark.


Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


10

RESPONSE:




taken any steps towards the offering, providing, or sale of cyclists’ jerseys under or in connection

with Applicant’s Mark.


Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


14

BACON & THOMAS, PLLC


Alexandria, Virginia 22314-1176

Phone: 703-683-0500

Fax: 703-683-1080

Email: [email protected]

Respectfully,

/Thomas Lee/

Date: August 24, 2020

Thomas Lee

Attorney for Global Esprit, Inc.


Opp. No. 91244876 (TTAB)


EXHIBIT 7


OPPOSITION


15


The undersigned hereby certifies that a copy of this document is being served on Opposer

by emailing it on the undersigned date addressed to the correspondence address of record in the

TTABVUE database at the website of the U.S. Patent and Trademark Office as follows:

Sheila Fox Morrison

Steven E. Klein

Davis Wright Tremaine LLP



[email protected]

[email protected]

[email protected]

Date: August 24, 2020 /Thomas Lee/

____________________________

Thomas Lee


Opp. No. 91244876 (TTAB)


EXHIBIT 7

Attorney Ref: GLOB7001/TL



Mark: KONA81 (Stylized)

App. No.: 87/934992

Filed: May 24, 2018

Kona USA, Inc.,

Opposer,

v. Opposition No. 91244876

Global Esprit, Inc.,

Applicant.

APPLICANT’S RESPONSES TO OPPOSER’S

SECOND SET OF REQUESTS FOR PRODUCTION

Pursuant to the Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and

Trademark Office (“USPTO”) Rules of Practice, 37 C.F.R. § 2.116 and 37 C.F.R. § 2.120(a)(3),

Applicant, Global Esprit, Inc. (“Global”) hereby files its Answers and Objections to Opposer,

Kona USA, Inc. (“Kona”)’s Second Set of Requests for Production, served on May 11, 2020.

These answers and productions are based upon the best information presently available to Global

and best belief of its counsel, and are made without prejudice to the right of Global to make

additional or modified answers or productions should better of further information or belief

subsequently become available to Global. Moreover, these answers and productions are made

without prejudice to any right of Global to offer evidence on its behalf or to object to the


Opp. No. 91244876 (TTAB)


EXHIBIT 8

ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION

OPPOSITION


2

relevance, competence or admissibility of any ground of any evidence or witness offered by

Kona; and these answers do not constitute an admission of competence or admissibility or

evidence or a waiver of objection on any grounds.

GENERAL OBJECTIONS

1. Global objects to each and every discovery request (“Request” or “Requests”) to

the extent that it calls for information protected by the attorney-client privilege, attorney work

product, or that constitutes trial preparation materials on the grounds that matter within the

attorney-client privilege is outside the scope of permissible discovery and that attorney work

product and trial preparation material, absent an appropriate showing, fall outside the scope of

permissible discovery.

2. Global objects to Kona’s Requests to the extent they seek information that

constitutes confidential, highly confidential business, or trade/secret/commercially sensitive

information, but provide such information and documents in accordance with the terms of the

Stipulated Protective Order.

3. Global objects to Kona’s Requests to the extent they seek discovery from third

parties.

4. Global objects to Kona’s Requests to the extent they seek information that is not

within Global’s possession, custody, or control; to the extent that the information is in the public

domain and equally available to Kona; or to the extent that the information is already in Kona’s

possession.


Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


3

5. Global objects to Kona’s Requests to the extent they are unreasonably broad,

unduly burdensome, oppressive, vague or ambiguous.

6. Global objects to Kona’s Requests to the extent they seek information pertaining

to matters outside of the United States.

7. Global does not, by any response to any Request, admit to the validity of any

legal or factual contention asserted or assumed in the text of any Request.

8. Global objects to Kona’s Requests on the ground that its discovery and analysis

are ongoing and reserves the right to assert additional objections as appropriate, and to amend or

supplement these objections and responses as appropriate.

9. Global responds to Kona’s Requests as it understands and interprets them. To the

extent Kona asserts a differing interpretation, Global reserves the right to supplement its

responses and/or objections.

10. These General Objections are incorporated into each of the specific responses set

forth below, and the following responses are made without waiver of any of the General

Objections. Moreover, the production of any non-relevant information, whether or not in

response to any discovery requests, is not to be construed as a waiver of a claim of irrelevancy.

SECOND SET OF REQUESTS FOR PRODUCTION


Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


4

REQUEST NO. 29:

All documents You have used or intend to use in connection with the sale, advertising or

promotion of Applicant’s Goods under Applicant’s Mark in the United States that mention

bicycles, bikes, cycles, cycling, biking or cyclists, or clothing or apparel to worn while riding a

bicycle.

RESPONSE:

Global is not in possession of any such document.


Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


7

REQUEST NO. 37:

Documents sufficient to identify all categories of cycling apparel or equipment that You

have ever manufactured, resold or distributed anywhere in the world.

RESPONSE:

Global is currently not in possession of such document.

REQUEST NO. 38:


any clothing for athletic use, namely, padded pants under or in connection with Applicant’s

Mark.

RESPONSE:


REQUEST NO. 39:



clothing for athletic use, namely, padded pants under or in connection with Applicant’s Mark.

RESPONSE:


REQUEST NO. 40:



Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


8



pants.

RESPONSE:


REQUEST NO. 41:


any clothing for athletic use, namely, padded shirts under or in connection with Applicant’s

Mark.

RESPONSE:


REQUEST NO. 42:



clothing for athletic use, namely, padded shirts under or in connection with Applicant’s Mark.

RESPONSE:


REQUEST NO. 43:



Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


9



shirts.

RESPONSE:


REQUEST NO. 44:


any clothing for athletic use, namely, padded shorts under or in connection with Applicant’s

Mark.

RESPONSE:


REQUEST NO. 45:



clothing for athletic use, namely, padded shorts under or in connection with Applicant’s Mark.

RESPONSE:


REQUEST NO. 46:



Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


10



shorts.

RESPONSE:


REQUEST NO. 47:


any of cyclists’ jerseys under or in connection with Applicant’s Mark.

RESPONSE:


REQUEST NO. 48:



cyclists’ jerseys under or in connection with Applicant’s Mark.

RESPONSE:


REQUEST NO. 49:




Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


11

manufacturer, distributor, or wholesaler regarding cyclists’ jerseys.

RESPONSE:


REQUEST NO. 50:


any triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts,

triathlon suits under or in connection with Applicant’s Mark.

RESPONSE:

Global has produced documents related to swimwear as related to triathlon tights,

triathlon shorts, triathlon singlets, and triathlon suits, and is currently not in possession of any

additional document.


Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


12

REQUEST NO. 52:



manufacturer, distributor, or wholesaler regarding triathlon clothing, namely, triathlon tights,

triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits.

RESPONSE:

Global is not in possession of such document.


Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


14

BACON & THOMAS, PLLC


Alexandria, Virginia 22314-1176

Phone: 703-683-0500

Fax: 703-683-1080

Email: [email protected]

Respectfully,

/Thomas Lee/

Date: August 24, 2020

Thomas Lee

Attorney for Global Esprit, Inc.


Opp. No. 91244876 (TTAB)


EXHIBIT 8


OPPOSITION


15


The undersigned hereby certifies that a copy of this document is being served on Opposer

by emailing it on the undersigned date addressed to the correspondence address of record in the

TTABVUE database at the website of the U.S. Patent and Trademark Office as follows:

Sheila Fox Morrison

Steven E. Klein

Davis Wright Tremaine LLP



[email protected]

[email protected]

[email protected]

Date: August 24, 2020 /Thomas Lee/

____________________________

Thomas Lee


Opp. No. 91244876 (TTAB)


EXHIBIT 8

8/6/2020 Kona81 - KONA81 has devoted all to offering innovative... | Facebook

https://business.facebook.com/510532679739785/photos/a.510532719739781/624908461635539/?type=1&theater 1/1

Kona81 updated their profile picture.

KONA81 has devoted all to offering innovative triathlon gear. Challenge yourlimits with KONA81 and let’s make the impossible possible together.

Shop at https://kona81.com/ Free standard shipping worldwide

#kona81 #kona #swimming #goggles #gear #triathlon #training #racing#recreation #comfortable #easy #fast #openwater

February 26, 2019 ·

11 1 Share

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See more of Kona81 on Facebook

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Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 Kona81 - Kona81 added a new photo. | Facebook

https://business.facebook.com/510532679739785/photos/a.510532719739781/510752676384452/?type=3&theater 1/1

Kona81 added a new photo.October 8, 2018 ·

Share

Privacy · Terms · Advertising · ·Cookies · MoreFacebook © 2020

English (US) · Español · Português (Brasil) · Français (France) · Deutsch

Ad Choices

Business Manager LOG IN CREATE ACCOUNT

See more of Kona81 on Facebook

orLog In Create New Account


Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81

https://kona81.com 1/16

FEATURED PRODUCTS

Due to the COVID-19 pandemic, order delivery times may be longer than usual, and delivery service has beentemporary suspended in some countries. Please contact us rst before placing an order, if you have any concerns.

Thank you!

Home

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Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81



Opp. No. 91244876 (TTAB)


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8/6/2020 KONA81


K514 MIRROR Swim Goggle#51410$ .00


Opp. No. 91244876 (TTAB)


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8/6/2020 KONA81


K514 Optical Swim Goggle #51495$ 9.90


Opp. No. 91244876 (TTAB)


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8/6/2020 KONA81


K91 Photochromic Swim Goggle #91 35$ 33.00


Opp. No. 91244876 (TTAB)


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8/6/2020 KONA81



Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81


K934 Swim Goggle #93410$ 38.00


Opp. No. 91244876 (TTAB)


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8/6/2020 KONA81


K945 Swim Goggle #94510$ 33.00


Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81


KONA81 PullkickSold out


Opp. No. 91244876 (TTAB)


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8/6/2020 KONA81



Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81


VANTAGE KickboardSold out


Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81


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KONA81 EAR PLUGS with Storage Case$ 4.00

KONA81KONA81


Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81


ABOUT KONA81

Kailua-Kona, Hawaii is the place where the rstIronman World Championship was held in 1 8. Everyyear, only hard-working athletes have chance tocompete at the iconic IRONMAN World Championshipat Kona. To us, Kona means an ultimate challengemaking those who want to try their best to go toe tremes. 8 and 1 represent the in nity and the bestrespectively. KONA81 devotes all to developing the best triathlongear in the industry. Challenge your limits withKONA81 and let’s make the impossible possibletogether.


Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81


About Us

KONA81 offers a variety of the triathlon speci c goggles and accessories. Featuring some of the mostcomfortable and innovative designs in triathlon.

Information & Help

About Us


Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 KONA81


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Opp. No. 91244876 (TTAB)


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8/6/2020 KONA81



Opp. No. 91244876 (TTAB)


EXHIBIT 9

8/6/2020 About Us – KONA81

https://kona81.com/pages/about-us 1/3

About Us


About Us

KONA81 offers a good variety of the triathlon speci c goggles and accessories. They all are among the best inthe industry. Great for open water swimming and training in your neighborhood pool. Featuring some of themost comfortable and innovative designs in triathlon. Many professionals choose KONA81 because of thequality and functionality of these great goggles and accessories.

We do our utmost and take all necessary steps to ensure that you can order from us con dently. Please readInformation & Help to learn more. Thank you!

We appreciate your business and trust you have received your order in perfect condition. If there is aproblem with your order, please contact us so that we may correct this issue as soon as possible.

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8/6/2020 Swimwear & Clothing – KONA81

https://kona81.com/collections/swimwear 1/13

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Opp. No. 91244876 (TTAB)


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Women’ s One-piece Swimwear GLBT W 09$ 45.00


Opp. No. 91244876 (TTAB)


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Women’ s One-piece Swimwear GLBT W 10


Opp. No. 91244876 (TTAB)


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$ 45.00


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Women's One-piece Swimwear GLBT W 11$ 45.00


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FITNESS 0 -18 Women's Swimwear Asian Fit$ 4.50


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EXHIBIT 9

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Opp. No. 91244876 (TTAB)


EXHIBIT 9

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EXHIBIT 9

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Opp. No. 91244876 (TTAB)


EXHIBIT 9

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EXHIBIT 9

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EXHIBIT 9

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EXHIBIT 9

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EXHIBIT 9

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Opp. No. 91244876 (TTAB)


EXHIBIT 9

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Opp. No. 91244876 (TTAB)


EXHIBIT 9

DECLARATION OF JACOB HEILBRON 1 4832-9540-2191v.1 0114823-000005




For the Mark:


KONA USA, INC.,

Opposer,

v.

GLOBAL ESPRIT INC.,

Applicant.


DECLARATION OF JACOB HEILBRON

IN SUPPORT OF MOTION FOR PARTIAL SUMMARY JUDGMENT

I, JACOB HEILBRON, declare as follows:

1. I am over the age of 18 and have personal knowledge of the facts set forth in this

declaration.

2. I am co-owner and Vice President of Opposer Kona USA Inc. (“Kona”).

3. Kona is the owner of U.S. Registration No. 1642717 for the word mark KONA in

International Class 12 for “Bicycles.” Registration No. 1642717 originally issued on April 30,

1991 to TBG The Bicycle Group Inc. (“TBG”), which I co-founded with Dan Gerhard in 1988.

In June 1994, TBG transferred the KONA mark and registration, together with all associated

goodwill, to Kona by written assignment.

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Opp. No. 91244876 (TTAB)

Declaration of Jacob Heilbron

EXHIBIT 1

https://the.konarideonline.com/2021-major-jake.html

https://the.konarideonline.com/customer/account/login/referer/aHR0cHM6Ly90aGUua29uYXJpZGVvbmxpbmUuY29tLzIwMjEtbWFqb3ItamFrZS5odG1s/

https://the.konarideonline.com/contact

https://the.konarideonline.com/customer/account/create/

https://the.konarideonline.com/

https://the.konarideonline.com/mountain-bikes

https://the.konarideonline.com/road-gravel-bikes

https://the.konarideonline.com/electric-bikes

https://the.konarideonline.com/checkout/cart/

https://the.konarideonline.com/bike-sizing-selection/

https://the.konarideonline.com/bike-sizing-form/

https://the.konarideonline.com/contact/

https://the.konarideonline.com/shipping-handling/

https://the.konarideonline.com/

https://konaworld.com/dealers.cfm

https://the.konarideonline.com/2021-major-jake.html#description

https://the.konarideonline.com/2021-major-jake.html#custom-1

https://the.konarideonline.com/2021-major-jake.html#custom-2

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Opp. No. 91244876 (TTAB)


EXHIBIT 1

https://the.konarideonline.com/2021-major-jake.html

https://the.konarideonline.com/contact/


https://konaworld.com/



https://the.konarideonline.com/bike-sizing-form/

https://the.konarideonline.com/terms-conditions/

mailto:[email protected]

https://the.konarideonline.com/privacy-policy/

http://www.facebook.com/pages/The-Kona-Bicycle-Co/9236275325?ref=ts

http://twitter.com/konaworld

http://www.instagram.com/konabikes

https://konaworld.com/dealers.cfm


0

Apparel Accessories Parts Sale

Home / Apparel / KnSBirts / ye-ks KsBirts / Fo-a yoto Fartel C $o-2slee9e

Fo-a yoto Fartel C

$o-2slee9e . Idh00

Siwes

Auu to vart

KBe Fo-a yoto $o-2slee9e is Beref b,st i- time gor tBose soo- to arri9e 3all uaDsh

Siwi-2j 3its tr,e to siweh

volori-2j UreD Kee M/ DelloM/Tlac& letteri-2

A9ailaTle i- Smallf yeui,mf $ar2ef Xn$ar2ef a-u XXn$ar2eh

v,stomer Ser9ice vo-tact -s yD Acco,-t Kerms y vo-uitio-s


Opp. No. 91244876 (TTAB)


EXHIBIT 2

https://com.konaworld.com/product/apparel/kona-moto-kartel-longsleeve/

https://com.konaworld.com/

https://com.konaworld.com/cart/

https://com.konaworld.com/product-category/apparel/

https://com.konaworld.com/product-category/accessories/

https://com.konaworld.com/product-category/parts/

https://com.konaworld.com/product-category/apparel/sale/

https://com.konaworld.com/search/

https://com.konaworld.com/my-account/



https://com.konaworld.com/product-category/apparel/t-shirts/

https://com.konaworld.com/product-category/apparel/t-shirts/mens-tshirts/

https://com.konaworld.com/wp-content/uploads/2020/08/DSC06350.jpg



https://com.konaworld.com/contact-us/

https://com.konaworld.com/customer-service/


https://com.konaworld.com/terms-conditions/

0


Home / Apparel / Sale / Kine Bear / Syort Slee-e kerseF C $aroo2

Sale9

Syort Slee-e kerseF C

$aroo2 . Idhwu . ddh00

Sives

Ann to fart

bye per,ect syort slee-e gerseF tyat ta3es FoD ,rom tye trails to tye partFh $ane

,rom recFclen polFester jity annen Per,orma2ce UDic3 MrF tecy2oloTF& tyis gerseF

is sDiten ,or gDst aXoDt e-erF tFpe o, rini2Th SpeciallF nesiT2en ,aXric tra2s,ers

sjeat a2n yeat ajaF ,rom tye XonF& jity mesy sine pa2els ,or i2creasen air ,lojh

A co2-e2ie2t sine vip poc3et 3eeps FoDr esse2tials closeh

-2 collaXoratio2 jity Myarcoh

fDstomer Ser-ice fo2tact ys $F AccoD2t berms & fo2nitio2s


Opp. No. 91244876 (TTAB)


EXHIBIT 3

https://com.konaworld.com/product/apparel/short-sleeve-jersey-maroon/












https://com.konaworld.com/product-category/apparel/sale/sale-ridegear/

https://com.konaworld.com/wp-content/uploads/2019/07/IMG_0537-top.jpg

https://com.konaworld.com/wp-content/uploads/2019/07/IMG_0531.jpg












0


Home / Apparel / SocKs / noBa y-ke SocK F ClacK/$2ite

noBa y-ke SocK F

ClacK/$2ite 9 .Id00

Sihes

Aww to uart

Save f-r Soles socK bit2 ,g c-33

Dawe iB t2e jS

uolorU ClacK b/ $2ite

SihesU Availakle iB SmallM Dewi-mM Tar&e aBw X-Tar&e

SihiB& u2art

u-stomer Service uoBtact js Dy Acco-Bt yerms & uoBwitioBs


Opp. No. 91244876 (TTAB)


EXHIBIT 4

https://com.konaworld.com/product/apparel/kona-tube-sock-black-white/











https://com.konaworld.com/product-category/apparel/socks/

https://com.konaworld.com/wp-content/uploads/2020/08/DSC06338-scaled.jpg

https://com.konaworld.com/wp-content/uploads/2015/10/socks_saveoursoles.jpg





0


Home / Apparel / Hats / Kona Bicycles Snap-Back Flat Brim Cap

Kona Bicycles Snap- Back Flat Brim Cap $ 29.99

In stock

Add to Cart

Show your love of Kona with this flat-brim snapback baseball hat, featuring a 3D

embroidered Kona Bicycles logo on the front and an adjustable closure for a

perfect fit.

Customer Service Contact Us My Account Terms & Conditions


Opp. No. 91244876 (TTAB)


EXHIBIT 5

https://com.konaworld.com/product/apparel/hats/kona-bicycles-snap-back-flat-brim-cap/











https://com.konaworld.com/product-category/apparel/hats/




https://com.konaworld.com/wp-content/uploads/2019/06/untitled-0307.jpg





ESTTA Tracking number: ESTTA1090553 10/22/2020

Documents

Transcript of ESTTA Tracking number: ESTTA1090553 10/22/2020