ESTTA Tracking number: ESTTA1090553 10/22/2020
Transcript of 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 )
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”).
OPPOSER’S MOTION FOR 2 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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.
OPPOSER’S MOTION FOR 3 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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.
OPPOSER’S MOTION FOR 4 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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:
OPPOSER’S MOTION FOR 5 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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.
INTERROGATORY NO. 26: 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: 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 clothing for athletic use, namely padded pants
under or in connection with Applicant’s Mark.
OPPOSER’S MOTION FOR 6 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
INTERROGATORY NO. 27: Describe in detail all steps taken towards the
offering, providing, or sale of clothing for athletic use, namely, padded shirts
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 clothing for athletic use, namely, padded shirts
under or in connection with Applicant’s Mark.
INTERROGATORY NO. 28: Describe in detail all steps taken towards the
offering, providing, or sale of clothing for athletic use, namely, padded shorts
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 clothing for athletic use, namely, padded shorts
under or in connection with Applicant’s Mark.
INTERROGATORY NO. 29: Describe in detail all steps taken towards the
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,
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 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.
OPPOSER’S MOTION FOR 7 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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.
RESPONSE: Global is currently not in possession of such document.
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.
RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 41: Documents sufficient to show all steps taken towards the
offering, providing, and sale of any clothing for athletic use, namely, padded
shirts under or in connection with Applicant’s Mark.
RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 42: 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 shirts under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 43: For each manufacturer, distributor, and wholesaler identified
in response to Document Request No. 42, Documents sufficient to identify all
business arrangements with the manufacturer, distributor, or wholesaler regarding
clothing for athletic use, namely, padded shirts.
RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 44: Documents sufficient to show all steps taken towards the
offering, providing, and sale of any clothing for athletic use, namely, padded
shorts under or in connection with Applicant’s Mark.
RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 45: 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 shorts under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.
OPPOSER’S MOTION FOR 8 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
REQUEST NO. 46: For each manufacturer, distributor, and wholesaler identified
in response to Document Request No. 45, Documents sufficient to identify all
business arrangements with the manufacturer, distributor, or wholesaler regarding
clothing for athletic use, namely, padded shorts.
RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 47: Documents sufficient to show all steps taken towards the
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.
REQUEST NO. 48: 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 cyclists’ jerseys under or in connection with Applicant’s Mark. RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 49: For each manufacturer, distributor, and wholesaler identified
in response to Document Request No. 48, Documents sufficient to identify all
business arrangements with the manufacturer, distributor, or wholesaler regarding
cyclists’ jerseys. RESPONSE: Global is currently not in possession of such document.
REQUEST NO. 50: Documents sufficient to show all steps taken towards the
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.
REQUEST NO. 52: For each manufacturer, distributor, and wholesaler identified
in response to Document Request No. 51, Documents sufficient to identify all
business arrangements with the 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.
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
OPPOSER’S MOTION FOR 9 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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)).
OPPOSER’S MOTION FOR 10 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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).
OPPOSER’S MOTION FOR 11 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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);
OPPOSER’S MOTION FOR 12 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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.
OPPOSER’S MOTION FOR 13 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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
OPPOSER’S MOTION FOR 14 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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
Attorneys for Opposer Kona USA, Inc.
OPPOSER’S MOTION FOR 15 PARTIAL SUMMARY JUDGMENT 4812-8927-3807v.3 0114823-000005
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];
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
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
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.
8. Attached as Exhibit 7 is a true and correct copy of excerpts from Applicant’s
Responses to Opposer’s Second Set of Interrogatories, served on August 24, 2020.
9. Attached as Exhibit 8 is a true and correct copy of excerpts from Applicant’s
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 – 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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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
Legal Entity Type: CORPORATION State or CountryWhere Organized:
CANADA
Assignee
Name: KONA USA INC.
Legal Entity Type: CORPORATION State or CountryWhere Organized:
WASHINGTON
Address: 1122 FIR AVENUEBLAINE, WASHINGTON 98230
Correspondent
CorrespondentName:
SEED IP LAW GROUP LLP
CorrespondentAddress:
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.
CorrespondentAddress:
MICHAEL F SNYDERVOLPE AND KOENIG PC30 SOUTH 17TH STREET SUITE 1800PHILADELPHIA PA UNITED STATES , 19103
Correspondent e-mail:
[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.
CorrespondentAddress:
KEVIN COSTANZASEED IP LAW GROUP LLP701 FIFTH AVENUE, SUITE 5400SEATTLE WA UNITED STATES , 98104
Correspondent e-mail:
[email protected] , [email protected]
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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
Type of Proceeding: Opposition
ProceedingNumber:
91244876 Filing Date: Nov 20, 2018
Status: Suspended Status Date: Aug 07, 2019
InterlocutoryAttorney:
ASHLEY D HAYES
Defendant
Name: Global Esprit Inc.
CorrespondentAddress:
THOMAS LEEBACON & THOMAS PLLC625 SLATERS LANE, FOURTH FLOORALEXANDRIA VA UNITED STATES , 22314
Correspondent e-mail:
[email protected] , [email protected]
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA81 Opposition Pending 87934992
Plaintiff(s)
Name: Kona USA, Inc.
CorrespondentAddress:
STEVEN E KLEINDAVIS WRIGHT TREMAINE LLP1300 SW FIFTH AVENUE, SUITE 2400PORTLAND OR UNITED STATES , 97201
Correspondent e-mail:
[email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA REGISTERED AND RENEWED 73791929 1642717
Prosecution History
Entry Number History Text Date Due Date
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
5 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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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
Type of Proceeding: Opposition
ProceedingNumber:
91237547 Filing Date: Nov 01, 2017
Status: Terminated Status Date: Jun 29, 2019
InterlocutoryAttorney:
JILL M MCCORMACK
Defendant
Name: Hyundai Motor America
CorrespondentAddress:
ROBERT B GOLDENLACKENBACH SIEGEL LLP1 CHASE RD, LACKENBACH SIEGEL BUILDINGSCARSDALE NY UNITED STATES , 10583-4156
Correspondent e-mail:
[email protected] , [email protected] , [email protected]
Associated marks
Mark Application Status Serial NumberRegistrationNumber
KONA Registered 87171109 5897542
Plaintiff(s)
Name: Kona USA Inc.
CorrespondentAddress:
KEVIN S COSTANZASEED IP LAW GROUP LLP701 FIFTH AVENUE, SUITE 5400SEATTLE WA UNITED STATES , 98104
Correspondent e-mail:
[email protected] , [email protected] , [email protected] , [email protected]
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA REGISTERED AND RENEWED 73791929 1642717
Prosecution History
Entry Number History Text Date Due Date
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
5 ANSWER 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
10 P REPLY IN SUPPORT OF MOTION Jun 18, 2018
11 P REPLY IN SUPPORT OF MOTION Jun 18, 2018
12 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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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
Type of Proceeding: Opposition
ProceedingNumber:
91179493 Filing Date: Sep 13, 2007
Status: Terminated Status Date: Dec 22, 2007
InterlocutoryAttorney:
LINDA M SKORO
Defendant
Name: Darin Booton
CorrespondentAddress:
Darin Booton522 Cedar StreetSt Charles IL UNITED STATES , 60174-1837
Correspondent e-mail:
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA ENDURANCE Abandoned - After Inter-Partes Decision 77106777
Plaintiff(s)
Name: Kona USA, Inc.
CorrespondentAddress:
Kevin S. CostanzaSeed IP Law Group PLLC701 Fifth Avenue, Suite 5400Seattle WA UNITED STATES , 98104
Correspondent e-mail:
[email protected] , [email protected]
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA REGISTERED AND RENEWED 73791929 1642717
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 13, 2007
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 13, 2007 Oct 23, 2007
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
Type of Proceeding: Opposition
ProceedingNumber:
91166607 Filing Date: Sep 16, 2005
Status: Terminated Status Date: Sep 25, 2006
InterlocutoryAttorney:
ANGELA LYKOS
Defendant
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 1
Name: Stevens, Lynnette J.
CorrespondentAddress:
Stevens, Lynnette J.73-4335 Holoholo StreetKailua-Kona HI UNITED STATES , 96740
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA BUILT LOCALFIED 808 Abandoned - After Inter-Partes Decision 78346736
Plaintiff(s)
Name: KONA USA INC.
CorrespondentAddress:
Kevin S. CostanzaSEED IP Law Group PLLC701 Fifth Avenue; Suite 6300Seattle WA UNITED STATES , 98104-7092
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA REGISTERED AND RENEWED 73791929 1642717
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 16, 2005
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 19, 2005 Oct 29, 2005
3 PENDING, INSTITUTED Sep 19, 2005
4 NOTICE OF DEFAULT Dec 16, 2005
5 Duplicate of #6 Dec 27, 2005
6 ANSWER 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
Type of Proceeding: Opposition
ProceedingNumber:
91166285 Filing Date: Aug 17, 2005
Status: Terminated Status Date: May 30, 2006
InterlocutoryAttorney:
CINDY B GREENBAUM
Defendant
Name: DKC Designs, Inc.
CorrespondentAddress:
KIT M. STETINA, ESQ.STETINA BRUNDA GARRED & BRUCKER75 ENTERPRISE, SUITE 250ALISO VIEJO CA UNITED STATES , 92656
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA CLAY Abandoned - After Inter-Partes Decision 78443274
Plaintiff(s)
Name: KONA USA INC.
CorrespondentAddress:
KEVIN S. COSTANZASEED IP LAW GROUP PLLC701 FIFTH AVENUE, SUITE 6300
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 1
SEATTLE WA UNITED STATES , 98104
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA REGISTERED AND RENEWED 73791929 1642717
Prosecution History
Entry Number History Text Date Due Date
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
InterlocutoryAttorney:
MARC BERGSMAN
Defendant
Name: TBG THE BICYCLE GROUP INC.
CorrespondentAddress:
D. BRUCE PROUTCHRISTIE, PARKER & HALEP.O. BOX 7068PASADENA CA UNITED STATES , 91109-7068
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
KONA REGISTERED AND RENEWED 73791929 1642717
Plaintiff(s)
Name: WORLD TRIATHLON CORPORATION
CorrespondentAddress:
WILLIAM T. RIFKINROCKEY AND RIFKIN30 NORTH LASALLE STREET, SUITE 2700CHICAGO IL UNITED STATES , 60602
Associated marks
Mark Application Status Serial NumberRegistrationNumber
Prosecution History
Entry Number History Text Date Due Date
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 3
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 4
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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 6
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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 7
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,
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 8
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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 9
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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 10
REQUEST NO. 22:
Documents sufficient to identify Applicant’s officers, directors and managerial
employees and their respective duties.
RESPONSE:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 11
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 2
OPPOSER’S FIRST SET OF REQUESTS FOR PRODUCTION TO APPLICANT 12
CERTIFICATE OF SERVICE
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
Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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Kona USA, Inc. v. Global Esprit Inc.,
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OPPOSER’S SECOND SET OF 1 INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 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 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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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.
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. “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.
8. “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.
9. “Person” means any natural person or any business, legal or governmental entity
or association.
10. “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.
11. “Including” means including without limitation.
12. 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.
13. Unless otherwise stated herein, all interrogatories apply to activities in or in
connection with the United States.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 5
OPPOSER’S SECOND SET OF 4
INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 0114823-000005
INTERROGATORY NO. 20:
Identify all brands of bicycles that You have ever manufactured, resold or distributed.
RESPONSE:
INTERROGATORY NO. 21:
Identify all plans You have to manufacture, resell or distribute bicycles.
RESPONSE:
INTERROGATORY NO. 22:
Identify all categories of cycling apparel or equipment that You have ever manufactured,
resold or distributed.
RESPONSE:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 5
OPPOSER’S SECOND SET OF 5
INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 0114823-000005
INTERROGATORY NO. 23:
Identify all plans You have to manufacture, resell or distribute cycling apparel or
equipment.
RESPONSE:
INTERROGATORY NO. 24:
Identify all categories of cycling apparel or equipment that You have ever manufactured,
resold or distributed.
RESPONSE:
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:
INTERROGATORY NO. 26:
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:
Kona USA, Inc. v. Global Esprit Inc.,
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Declaration of Steven E. Klein
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OPPOSER’S SECOND SET OF 6
INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 0114823-000005
INTERROGATORY NO. 27:
Describe in detail all steps taken towards the offering, providing, or sale of clothing for
athletic use, namely, padded shirts under or in connection with Applicant’s Mark.
RESPONSE:
INTERROGATORY NO. 28:
Describe in detail all steps taken towards the offering, providing, or sale of clothing for
athletic use, namely, padded shorts under or in connection with Applicant’s Mark.
RESPONSE:
INTERROGATORY NO. 29:
Describe in detail all steps taken towards the offering, providing, or sale of cyclists’
jerseys under or in connection with Applicant’s Mark.
RESPONSE:
Kona USA, Inc. v. Global Esprit Inc.,
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Declaration of Steven E. Klein
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OPPOSER’S SECOND SET OF 8
INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 0114823-000005
DATED May 11, 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
Attorneys for Opposer Kona USA, Inc.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 5
OPPOSER’S SECOND SET OF 9
INTERROGATORIES TO APPLICANT 4847-8031-4811v.2 0114823-000005
CERTIFICATE OF SERVICE
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
625 Slaters Lane, Fourth Floor
Alexandria, VA 22314
[email protected]; [email protected];
Counsel for Global Esprit Inc.
DAVIS WRIGHT TREMAINE LLP
/s Steven E. Klein /
Steven E. Klein
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 5
OPPOSER’S SECOND SET OF REQUESTS 1
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.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 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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 2
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 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.
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. “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.
8. “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.
9. “Person” means any natural person or any business, legal or governmental entity
or association.
10. “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.
11. “Including” means including without limitation.
12. 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.
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)):
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 3
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 4
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 6
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 7
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
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:
Documents sufficient to show all steps taken towards the offering, providing, and sale of
any clothing for athletic use, namely, padded shirts under or in connection with Applicant’s
Mark.
RESPONSE:
REQUEST NO. 42:
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 shirts under or in connection with Applicant’s Mark.
RESPONSE:
REQUEST NO. 43:
For each manufacturer, distributor, and wholesaler identified in response to Document
Request No. 42, Documents sufficient to identify all business arrangements with the
manufacturer, distributor, or wholesaler regarding clothing for athletic use, namely, padded
shirts.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 8
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
RESPONSE:
REQUEST NO. 44:
Documents sufficient to show all steps taken towards the offering, providing, and sale of
any clothing for athletic use, namely, padded shorts under or in connection with Applicant’s
Mark.
RESPONSE:
REQUEST NO. 45:
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 shorts under or in connection with Applicant’s Mark.
RESPONSE:
REQUEST NO. 46:
For each manufacturer, distributor, and wholesaler identified in response to Document
Request No. 45, Documents sufficient to identify all business arrangements with the
manufacturer, distributor, or wholesaler regarding clothing for athletic use, namely, padded
shorts.
RESPONSE:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 9
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
REQUEST NO. 47:
Documents sufficient to show all steps taken towards the offering, providing, and sale of
any of cyclists’ jerseys under or in connection with Applicant’s Mark.
RESPONSE:
REQUEST NO. 48:
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
cyclists’ jerseys under or in connection with Applicant’s Mark.
RESPONSE:
REQUEST NO. 49:
For each manufacturer, distributor, and wholesaler identified in response to Document
Request No. 48, Documents sufficient to identify all business arrangements with the
manufacturer, distributor, or wholesaler regarding cyclists’ jerseys.
RESPONSE:
REQUEST NO. 50:
Documents sufficient to show all steps taken towards the 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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 10
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
REQUEST NO. 52:
For each manufacturer, distributor, and wholesaler identified in response to Document
Request No. 51, Documents sufficient to identify all business arrangements with the
manufacturer, distributor, or wholesaler regarding triathlon clothing, namely, triathlon tights,
triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits.
RESPONSE:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 11
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
DATED May 11, 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
Attorneys for Opposer Kona USA, Inc.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
OPPOSER’S SECOND SET OF REQUESTS 12
FOR PRODUCTION TO APPLICANT 4825-5621-8811v.3 0114823-000005
CERTIFICATE OF SERVICE
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
625 Slaters Lane, Fourth Floor
Alexandria, VA 22314
[email protected]; [email protected]
DAVIS WRIGHT TREMAINE LLP
/s Steven E. Klein/
Steven E. Klein
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 6
Attorney Ref: GLOB7001/TL
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
6
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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
7
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 has 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:
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
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.
INTERROGATORY NO. 26:
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:
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 clothing for athletic use, namely
padded pants under or in connection with Applicant’s Mark.
INTERROGATORY NO. 27:
Describe in detail all steps taken towards the offering, providing, or sale of clothing for
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
9
athletic use, namely, padded shirts 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 clothing for athletic use, namely,
padded shirts under or in connection with Applicant’s Mark.
INTERROGATORY NO. 28:
Describe in detail all steps taken towards the offering, providing, or sale of clothing for
athletic use, namely, padded shorts 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 clothing for athletic use, namely,
padded shorts under or in connection with Applicant’s Mark.
INTERROGATORY NO. 29:
Describe in detail all steps taken towards the offering, providing, or sale of cyclists’
jerseys under or in connection with Applicant’s Mark.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
10
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 cyclists’ jerseys under or in connection
with Applicant’s Mark.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
14
BACON & THOMAS, PLLC
625 Slaters Lane, Fourth Floor
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
ANSWER TO SECOND SET OF INTERROGATORIES
OPPOSITION
Opposition No. 91244876
15
CERTIFICATE OF SERVICE
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
1300 S.W. Fifth Avenue, Suite 2400
Portland, OR 97201-5610
Date: August 24, 2020 /Thomas Lee/
____________________________
Thomas Lee
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 7
Attorney Ref: GLOB7001/TL
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
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:
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:
Global is currently not in possession of such document.
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
8
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:
Global is currently not in possession of such document.
REQUEST NO. 41:
Documents sufficient to show all steps taken towards the offering, providing, and sale of
any clothing for athletic use, namely, padded shirts under or in connection with Applicant’s
Mark.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 42:
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 shirts under or in connection with Applicant’s Mark.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 43:
For each manufacturer, distributor, and wholesaler identified in response to Document
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
9
Request No. 42, Documents sufficient to identify all business arrangements with the
manufacturer, distributor, or wholesaler regarding clothing for athletic use, namely, padded
shirts.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 44:
Documents sufficient to show all steps taken towards the offering, providing, and sale of
any clothing for athletic use, namely, padded shorts under or in connection with Applicant’s
Mark.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 45:
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 shorts under or in connection with Applicant’s Mark.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 46:
For each manufacturer, distributor, and wholesaler identified in response to Document
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
10
Request No. 45, Documents sufficient to identify all business arrangements with the
manufacturer, distributor, or wholesaler regarding clothing for athletic use, namely, padded
shorts.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 47:
Documents sufficient to show all steps taken towards the 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.
REQUEST NO. 48:
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
cyclists’ jerseys under or in connection with Applicant’s Mark.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 49:
For each manufacturer, distributor, and wholesaler identified in response to Document
Request No. 48, Documents sufficient to identify all business arrangements with the
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
11
manufacturer, distributor, or wholesaler regarding cyclists’ jerseys.
RESPONSE:
Global is currently not in possession of such document.
REQUEST NO. 50:
Documents sufficient to show all steps taken towards the 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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
12
REQUEST NO. 52:
For each manufacturer, distributor, and wholesaler identified in response to Document
Request No. 51, Documents sufficient to identify all business arrangements with the
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
14
BACON & THOMAS, PLLC
625 Slaters Lane, Fourth Floor
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 8
ANSWER TO SECOND SET OF REQUESTS FOR PRODUCTION
OPPOSITION
Opposition No. 91244876
15
CERTIFICATE OF SERVICE
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
1300 S.W. Fifth Avenue, Suite 2400
Portland, OR 97201-5610
Date: August 24, 2020 /Thomas Lee/
____________________________
Thomas Lee
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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 ·
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Kona81 - Kona81 added a new photo. | Facebook
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Kona81 added a new photo.October 8, 2018 ·
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Ad Choices
Business Manager LOG IN CREATE ACCOUNT
See more of Kona81 on Facebook
orLog In Create New Account
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
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!
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 2/16
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 3/16
K514 MIRROR Swim Goggle#51410$ .00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 4/16
K514 Optical Swim Goggle #51495$ 9.90
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 5/16
K91 Photochromic Swim Goggle #91 35$ 33.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 6/16
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 7/16
K934 Swim Goggle #93410$ 38.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 8/16
K945 Swim Goggle #94510$ 33.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 9/16
KONA81 PullkickSold out
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 10/16
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 11/16
VANTAGE KickboardSold out
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 12/16
VIEW ALL
KONA81 EAR PLUGS with Storage Case$ 4.00
KONA81KONA81
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 13/16
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.
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 14/16
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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 15/16
© 0 0, KONA81 Powered by Shopify
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 KONA81
https://kona81.com 16/16
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 About Us – KONA81
https://kona81.com/pages/about-us 1/3
About Us
KONA81 offers a variety of the triathlon speci c goggles and accessories. Featuring some of the mostcomfortable and innovative designs in triathlon.
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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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
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https://kona81.com/pages/about-us 2/3
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 About Us – KONA81
https://kona81.com/pages/about-us 3/3
© 0 0, KONA81 Powered by Shopify
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 1/13
Swimwear & Clothing
FILTER BY SORT BY 30 productsAll products Featured
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 2/13
Women’ s One-piece Swimwear GLBT W 09$ 45.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 3/13
Women’ s One-piece Swimwear GLBT W 10
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 4/13
$ 45.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 5/13
Women's One-piece Swimwear GLBT W 11$ 45.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 6/13
Women’ s One-piece Swimwear GLBT W 13$ 45.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 7/13
Women’ s One-piece Swimwear GLBT W 14$ 45.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 8/13
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 9/13
Women's One-piece Swimwear GLBT W 15$ 39.50
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 10/13
Women's One-piece Swimwear GLBT W 1$ 45.00
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 11/13
FITNESS 0 -18 Women's Swimwear Asian Fit$ 4.50
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 12/13
Page 1 of 4
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
Shipping
Return Polcies
Terms of Service
Search
Contact Us
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
8/6/2020 Swimwear & Clothing – KONA81
https://kona81.com/collections/swimwear 13/13
© 0 0, KONA81 Powered by Shopify
Newsle er
SUBSCRIBE
Email address
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
���������������������� ��� �������������������������� ���������� ��������� !"�����!�#��� ��$�%��&'()*+(',-�.�&'()*+(',�/0*12'3451�6*('17�68-2*+�9&/66:��;<==�>?@�A?@B�CDE?BFE�GH�;CF�ICJ�K�LMNMONMM�<P;�MLML� � � � � � � � � �� � �QRSRTU�VWXYZX�WRSRTU�[\X]�RT�Y_X�R]X�UR�_XWXYZX�ZZUXa�_XZRT_bXZ�YWWRbYUX�cR_�RTdeUY_Uf5-2�g2h ij kTal 23�'*13')h j*13')�m�3n2�3o�m� � �p�qrs�tus�vwxyzv�{|tt}~�}��tus��~ts�~st�w�}�rs��t}��st|�~t}��������3')��(', ����������33)-�(4)6*'�51*- ������d��e��������d�����e��Z[�a�SRSSWXZ�Y]�Z���SRSSWXZd����e���e����� ����¡d����e���e���¢�£¤¤�������� ������(',�¥'(¦54§3)* ©�ª��«V������¬�¢�6*'5(0�n+®*' ��¡��°5054§�¥(2* �TSTZU��¡±����¡n''*42�²(-5- ��i'5§54(0�°5054§²(-5- ��³n®05-7*)�o3'i 3-52534 ¤Y�¡±����j*§5-2'(2534n+®*' �����j*§5-2'(2534¥(2* kTW���±����i¦4*' ©����e���¢�ª�eµ«Q�¢��¢£��¶¬�e���£�V£����£¢��£�V£����£¢�£���£¢��� ��££�¶�QQe�£���Q�µ��£e¬��£�£���£¢�� �¡©Q�e��Q�e����£¬¢��ª��Q£��Q��eV���±��¢�d��£�V£����£¢����¬�¢���¶��Q££�±�¢£d�·��±�«��¢e¶�¢��£����¶�¢��¶£����«±����V���¶e��¢����¬�¢g--5§4+*42j*13')*) �ee��¢¤�¢�����£����g223'4*8�3oj*13') ¤£��£¢�kd��£e�¢����³'53'j*§5-2'(2534- ���� ¡�&8*�3o��(', �����¤��µj*§5-2*' V��¢��V�Qgoo5)(�52�&*2 e�����·d�e������©�¹«�ªd�e����£¢��©��¹«�ª����� �¡dj*4*¦(0 �¢����¢�¬�Q����� �¡f5�*º¥*()»4)51(23' Q�¼�� � � � � � � � � �� � �Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
��������������� ������������������������������������������
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
���������������������� ��� �������������������������� ���������� ��������� !"�����!�#��� ��$�%��&'()*+(',-�.�&'()*+(',�/0*12'3451�6*('17�68-2*+�9&/66:��;<==�>?@�A?@B�CDE?BFE�GH�;CF�ICJ�K�LMNMONMM�<P;�MLML� � � � � � � � � �� � �QRSRTU�VWXYZX�WRSRTU�[\X]�RT�Y_X�R]X�UR�_XWXYZX�ZZUXa�_XZRT_bXZ�YWWRbYUX�cR_�RTdeUY_Uf5-2�g2h ij kTal 23�'*13')h j*13')�mm�3n2�3o�pqr� � �s�tuv�wxv�yz{|}y�~�ww������wxv���wv��vw�z���uv��w���vw���w���������3')��(', ����������33)-�(4)6*'�51*- ������d��e����������������d�����e��Z[�a�c�]Z��Y]���b� RY_Z�cR_�Z[�aa�]Sd�¡��e¢��e£��¤¥¥��¥��d¡��e¢��e£��¦��§ £��£��¤¥¥��¥���(',�©'(ª54«¬3)* ¤®�¢ V£�����°�¦�6*'5(0�±n+²*' ³¤µ¤³³¥¶5054«�©(2* �l_�W��¥��¤¥¥¤¬n''*42�·(-5- ¤�i'5«54(0�¶5054«·(-5- ¤�n²05-7*)�o3'i¹¹3-52534 §bUR X_��¥��¤¥¥¤j*«5-2'(2534±n+²*' �¤���¥¥j*«5-2'(2534©(2* kY]TY_��³��¤¥¥�iª4*' �£��e¢��¦¢®�eº Q�¦£�¦§�¢»°£e¢��§�V§��¢�§¦��§�V§��¢�§¦�§�£�§¦�¤¤³�¡§§¢»�QQe�§���Q�º£�§e°£�§�§�£�§¦�¥³��Q�e¢�Q�e¢£��§°¦£�®��Q§��Q�£eV��¢���¦�d��§�V§��¢�§¦�¢��°�¦��¢»�¡Q§§���¦§d���µ���£¦e»�¦��§����»�¦��»§���¢��¢��V£��»e�£¦�¢��°�¦g--5«4+*42j*13')*) �ee��¦ £¦¢��£�§��£�g223'4*8�3oj*13') kRX�bº�]]X�T]b&8¹*�3o��(', ¢���£ ��ºj*«5-2*' V��¦��V�Qgoo5)(�52�&*¼2 e£�¢�¤�d�e£�¢���µ½�®d�e£�¢�§¦��¤�½�®���¤�����dj*4*ª(0 �¦���£¦£°�Q���¤�����f5�*¾©*()¿4)51(23' Q�À£� � � � � � � � � �� � ��ÁÂi�/���6¿&/�¿±©/Ã��6/gj¬Â���v·Ä6¿±/66���Â/f ���j¿Åg¬Æ�if¿¬Æ�Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
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Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
���������������������� ��� �������������������������� ���������� ��������� !"�����!�#��� ��$�%��&'()*+(',-�.�&'()*+(',�/0*12'3451�6*('17�68-2*+�9&/66:��;<==�>?@�A?@B�CDE?BFE�GH�=CH�ICJ�K�LMNOKNPM�<Q;�PLPL� � � � � � � � � �� � �RSTSUV�WXYZ[Y�XSTSUV�\]Y�_SU�ZY�aSY�VS�YXYZ[Y�[_[VYb�Y[SUcY[�ZXXScZVYa�dS�_SUefVZVg5-2�h2i jk lUbm 23�'*13')i k*13')�n�3o2�3p�qr� � �s�tuv�wxv�yz{|}y�~�ww������wxv���wv��vw�z���uv��w���vw���w���������3')��(', �����33)-�(4)6*'�51*- ������e��f��������������������e�����f��� ¡ T�Y¢U mbYV£�ZbYX_£�mSVYcV ¡Y�a ¡ T�[]SY[¤�� ¡ TTXS¡Y[¤�� ¡ T�[U V[e�¥�¦f§��f �����©����e�¥�¦f§��f ������ªª ¦� �����©����62(4)(')«7('(12*'-«0(5+*)�(',�¬'(54®«3)* °±�f§����¦���²�¦��§ ¦�ª�¦�6*'5(0�³o+ *' ��°�°��©µ5054®�¬(2* �m X���£�����«o''*42�¶(-5- ��j'5®54(0�µ5054®¶(-5- ��·o05-7*)�p3'j 3-52534 �UTU[V��£�����k*®5-2'(2534³o+ *' ¹������k*®5-2'(2534¬(2* �cVSºY���£�����j4*' ¦ ��f§¦��§±�§Z T�¦YT [V_£�RR��R�ª�§ ��R��»�R�§¼���ªW��¼�¥R�¦���������W]SY ½��¡Y�Xa[bZ�¥R�¦�����°�©©&8*�3p��(', §¦�� ª�¦�k*®5-2*' W¦����W�Rg5�*¾¬*()¿4)51(23' R�À� � � � � � � � � �� � ��ÁÂj�/���6¿&/�¿³¬/Ã��6/hk«Â���v¶Ä6¿³/66���Â/g·���·k¿Åh«Æ�·jg¿«Æ�
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Steven E. Klein
EXHIBIT 9
DECLARATION OF JACOB HEILBRON 1 4832-9540-2191v.1 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
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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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Jacob Heilbron
EXHIBIT 1
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Jacob Heilbron
EXHIBIT 1
0
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Jacob Heilbron
EXHIBIT 2
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Jacob Heilbron
EXHIBIT 3
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Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Jacob Heilbron
EXHIBIT 4
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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
Kona USA, Inc. v. Global Esprit Inc.,
Opp. No. 91244876 (TTAB)
Declaration of Jacob Heilbron
EXHIBIT 5