ESTTA Tracking number:
`
`ESTTA1307545
`
`Filing date:
`
`08/31/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91283724
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Utopban Limited
`
`NA ZHANG
`GLACIER LAW LLP
`506 SECOND AVENUE SUITE 1516
`SEATTLE, WA 98104
`UNITED STATES
`Primary email: queena.zhang@glacier.law
`Secondary email(s): tao.liu@glacier.law, wei.wang@glacier.law,
`mickey.yao@glacier.law, ruoting.men@glacier.law, iris.ju@glacier.law
`206-397-8633
`
`Answer
`
`Na Zhang
`
`queena.zhang@glacier.law, tao.liu@glacier.law, mickey.yao@glacier.law,
`wei.wang@glacier.law
`
`/Na Zhang/
`
`08/31/2023
`
`Attachments
`
`TTAB Vegega Amended Answer.pdf(469987 bytes )
`
`
`
`ESTTA1307545
`
`Filing date:
`
`08/31/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91283724
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Utopban Limited
`
`NA ZHANG
`GLACIER LAW LLP
`506 SECOND AVENUE SUITE 1516
`SEATTLE, WA 98104
`UNITED STATES
`Primary email: queena.zhang@glacier.law
`Secondary email(s): tao.liu@glacier.law, wei.wang@glacier.law,
`mickey.yao@glacier.law, ruoting.men@glacier.law, iris.ju@glacier.law
`206-397-8633
`
`Answer
`
`Na Zhang
`
`queena.zhang@glacier.law, tao.liu@glacier.law, mickey.yao@glacier.law,
`wei.wang@glacier.law
`
`/Na Zhang/
`
`08/31/2023
`
`Attachments
`
`TTAB Vegega Amended Answer.pdf(469987 bytes )
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`--------------------------------------------------------------X
`
`
`VEGO GARDEN INC.,
`
`
` -v-
`
`UTOPBAN LIMITED,
`
`
`
`
`
`
`
`Opposition No. 91283724
`Serial No. 97189569
`Opposer,
`
`
`
`
`
`
`
`Mark:
`
`
`
`Applicant.
`
`
`--------------------------------------------------------------X
`
`
`APPLICANT’S AMENDED ANSWER TO OPPOSER’S FIRST AMENDED NOTICE OF
`OPPOSITION
`
`
`
`The following is the Amended Answer of Applicant Utopban Limited (hereinafter
`
`“Utopban” or “Applicant”) to the First Amended Notice of Opposition filed by Vego Garden
`
`Inc. (hereinafter “Opposer”) filed on June 23, 2023 and assigned Opposition No.91283724.
`
`Applicant hereby answers solely for the purpose of this proceeding, to each of the grounds set
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`forth in the First Amended Notice of Opposition, as follows:
`
`
`
`1. Opposer Vego Garden, Inc. (“Vego”) has continuously used, since at least as early as
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`January 2020, the VEGO GARDEN mark to identify the source of its raised garden beds and
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`gardening-related products. For years, Vego has used—and continues to use—the trademarks
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`VEGO and VEGO GARDEN, alone and in combination with other terms and designs
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`(“Vego’s Marks”), in connection with an extensive range of goods and services, including:
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`raised garden beds, bags, trellises, seedling trays, nets, lights, knives, sifters, composters,
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`planters, mugs, and garden bed covers. Vego also provides educational programs under the
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`
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`1
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`
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`VEGO mark. The foregoing goods and services are collectively referred to as “Vego’s Goods
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`and Services.”
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 1 of the
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`Notice of Opposition and therefore denies the same.
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`2. Vego owns nationwide common law trademark rights in Vego’s Marks in connection
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`with Vego’s Goods and Services by virtue of the use of Vego’s Marks throughout the United
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`States. Vego established such common law rights in Vego’s Marks prior to any date of first
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`use or priority upon which Applicant can rely.
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 2 of the
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`Notice of Opposition and therefore denies the same.
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`3. Vego is the owner of the following federally registered trademarks that incorporate
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`Vego’s Marks:
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`(chart omitted)
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`The foregoing registrations are collectively referred to as “Vego’s Registrations.” Current
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`printouts of information from the electronic database of records of the United States Patent and
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`Trademark Office showing the current status and title of Vego’s Registrations are attached as
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`Exhibit 1 and are made record in this Opposition.
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 3 of the
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`Notice of Opposition and therefore denies the same.
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`4. All of Vego’s Registrations are valid, subsisting, and in full force and effect; all serve
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`as prima facie evidence of the validity of the marks shown and of Vego’s exclusive right to use
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`the marks on the goods identified, 15 U.S.C. § 1057(b); all establish that Vego’s rights in
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`Vego’s Marks is long-prior to any rights on which Applicant can rely; and all serve to place
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`
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`2
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`
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`Applicant on notice of Vego’s rights. In addition, all of Vego’s Registrations are incontestable
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`and are conclusive evidence of Vego’s exclusive right to use the mark identified on the goods
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`specified therein pursuant to Sections 7 and 33 of the Lanham Act, 15 U.S.C. §§ 1057, 1115(b).
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 4 of the
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`Notice of Opposition and therefore denies the same.
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`5. Vego sells its VEGO-branded products online on its website at www.vegogarden.com,
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`and through third-party retailers such as Lowe’s, Home Depot, Walmart, and online at
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`Amazon.com.
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 5 of the
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`Notice of Opposition and therefore denies the same.
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`6. Vego has gone to considerable expense and expended substantial amounts of time and
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`effort in advertising and promoting its goods and services offered under Vego’s Marks. Vego
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`uses a combination of traditional promotional efforts, direct advertising, word-of-mouth, and
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`unsolicited advertising as vehicles to promote its products. The goods and services offered
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`under Vego’s Marks have been recognized by consumers and the trade for excellence in the
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`United States. As a result of such promotional activities and unsolicited recognition, Vego’s
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`Marks have become well-known in the United States in connection with Vego’s Goods and
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`Services. The relevant public associates and identifies Vego’s Marks with Vego, and Vego
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`derives substantial goodwill from such identification by consumers.
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 6 of the
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`Notice of Opposition and therefore denies the same.
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`7. As the popularity of Vego’s Goods and Services has grown, so have the number of
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`incidents of unauthorized copying. Vego has implemented a worldwide program to deal with
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`
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`3
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`
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`counterfeits of its products and infringements of its famous Vego Marks. Vego goes to great
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`lengths to police the marketplace and enforce Vego’s Marks in order to protect the public from
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`deception and confusion, as well as to protect the core of the company, its employees,
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`customers, and all who manufacture, distribute, promote, and sell genuine VEGO- and VEGO
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`GARDEN-branded products.
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 7 of the
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`Notice of Opposition and therefore denies the same.
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`Applicant and the VEGEGA. (stylized) Application
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`8. Upon information and belief, applicant UTOPBAN LIMITED (“Applicant”) is a
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`limited company organized and existing under the laws of Hong Kong with an address of Unit
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`2 22/F Richmond Comm, Bldg. 109 Argyle Street, Mongkok KL Hong Kong 999077.
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`ANSWER: Admitted.
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`9. On December 24, 2021, Applicant filed a U.S. Trademark Application Serial No.
`
`97189569 VEGEGA. (stylized) (the “VEGEGA Mark”), under Section 1(a) of the Lanham Act,
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`covering “Flower and plant cultivation trays; Garden syringes; Holders for flowers and plants;
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`Plant baskets; Planter boxes for domestic gardening; Planters for flowers and plants; Plastic
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`lids for plant pots; Raised garden beds, namely, raised containers for planting contained
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`gardens; Raised garden planters; Self-watering planters for flowers and plants” in International
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`Class 21 (“Applicant’s Goods”), and claiming that it first used the VEGEGA Mark in United
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`States commerce in connection with Applicant’s Goods on December 23, 2021.
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`ANSWER: Admitted.
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`10. In support of his first use claim, Applicant submitted a screenshot showing use of the
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`VEGEGA Mark on its website at www.vegega.com, where the prefix element “VEGE” is
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`
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`4
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`
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`shown in green, and “GA.” element appears in red, screenshot below. Upon information and
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`belief, the “vege” element refers to “vegetable,” and the “ga” element refers to “garden.”
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`ANSWER: Applicant admitted that it submitted a drawing with its trademark
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`application as shown below. Applicant denied the remaining of the allegations in paragraph 10
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`as the “VEGEGA Mark” holds various meanings.
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`
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`11. Applicant is using the VEGO and VEGO GARDEN trademarks in sponsored
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`advertisements on search results pages, including on the Google search engine. A screenshot
`
`
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`of one of Applicant’s sponsored advertisements is shown below.
`
`(screenshot omitted)
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`ANSWER: Denied.
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`12. Upon information and belief, Applicant’s uses the VEGO and VEGO GARDEN mark
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`in its online advertisements to direct consumers who search for Vego’s products into believing
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`mistakenly that they are visiting Vego’s website.
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`ANSWER: Denied.
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`13. Vego has received a number of consumer inquiries regarding the status of orders from
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`customers who had placed orders for Applicant’s products bearing the VEGEGA Mark,
`
`believing that they were purchasing Vego’s VEGO-branded products.
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`ANSWER: Applicant is without knowledge as to the allegations in paragraph 13 of the
`
`Notice of Opposition and therefore denies the same.
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`14. On or about September 12, 2022, Vego requested that the United States International
`
`
`
`5
`
`
`
`
`
`Trade Commission commence an investigation into Applicant, and related companies,
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`pursuant to Section 337 of the Tariff Act of 1930, as amended 19 U.S.C. § 1337, to remedy
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`unlawful importation into the United States the sale raised garden beds and components that
`
`were manufactured using Vego’s trade secrets, marketed using Vego’s registered copyrighted
`
`works, and for unfair competition through false advertising and passing off (the “Section 337
`
`Action”). The Section 337 Action is pending.
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`ANSWER: Applicant admitted the Section 337 Action is pending but denied Vego’s
`
`allegations against Applicant with regard to unlawful importation into the United States the
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`sale raised garden beds and components that were manufactured using Vego’s trade secrets,
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`marketed using Vego’s registered copyrighted works, and for unfair competition through false
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`advertising and passing off in in paragraph 14 of the Notice of Opposition.
`
`COUNT I
`Likelihood Of Confusion
`
`15. Vego repeats and incorporates by reference the allegations contained in Paragraphs 1
`
`through 12, as if fully set forth herein.
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`ANSWER: Paragraph 15 contains allegations to which no response is required. To the
`
`extent a response is required, Applicant denies the allegations contained in the paragraph 15 of
`
`the Notice of Opposition.
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`16. Vego’s rights in Vego’s Marks are prior in time and superior in renown to any rights
`
`that Applicant may claim in the VEGEGA Mark, in any form or style.
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`ANSWER: Denied.
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`17. The VEGEGA Mark combines dominant VEG- element of each of Vego’s Marks with
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`the word “GA,” which suggests gardening products sold under the VEGEGA Mark belong to
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`or are associated with Vego. Consumers will therefore believe that any product bearing the
`
`
`
`6
`
`
`
`
`
`VEGEGA Mark originate with Vego
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`ANSWER: Denied.
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`18. Vego’s Goods and Services and Applicant’s Goods sell identical and garden related
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`products that travel in and are promoted through the same channels of trade for sale to, and use
`
`by, the same classes of consumers
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`ANSWER: Denied.
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`19. Accordingly, the registration of Applicant’s VEGEGA Mark is likely to cause
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`consumer confusion, mistake, or to deceive the public into believing that Applicant’s Goods
`
`originate with or are somehow affiliated or associated with, connected to or sponsored by
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`Vego, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
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`ANSWER: Denied.
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`20. If Applicant is permitted to register or use the mark herein opposed, there would likely
`
`be confusion as to the origin or sponsorship of the goods, resulting in damage and injury to
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`Vego. Persons familiar with Vego’s Marks will be likely to purchase Applicant’s Goods,
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`believing them to be affiliated or associated with, connected to or sponsored by Vego.
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`Likewise, persons exposed to Applicant’s VEGEGA Mark who subsequently become
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`acquainted with Vego’s Marks are likely to conclude that the goods offered by Vego under
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`Vego’s Marks are in some manner affiliated or associated with, connected to or sponsored by
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`Applicant. Any such confusion as to sponsorship inevitably would result in damage and injury
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`to Vego.
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`ANSWER: Denied.
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`21. Vego will be damaged by registration of Applicant’s VEGEGA Mark because such
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`registration would support and assist Applicant in the confusing and misleading use of
`
`
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`7
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`
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`Applicant’s mark, give color of legal right to Applicant in violation of Vego’s prior and
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`superior statutory and common law rights in Vego’s Marks.
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`ANSWER: Denied.
`
`COUNT II
`Misuse of Federal Registration Symbol with Intent to Deceive
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`22. Vego repeats and incorporates by reference the allegations contained in Paragraphs 1
`
`through 21, as if fully set forth herein.
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`ANSWER: Paragraph 22 contains allegations to which no response is required. To the
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`extent a response is required, Applicant denies the allegations contained in the paragraph 22 of
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`the Notice of Opposition.
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`23. Applicant has used and is currently using the federal registration symbol (®) with the
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`VEGEGA. (stylized) mark in connection with the advertising and sale of Applicant’s Products,
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`even though the mark is not registered in the U.S.
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`ANSWER: Denied.
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`24. Upon information and belief, Applicant has used the federal registration symbol (®)
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`with an intent to deceive the purchasing public and others in the trade into believing that
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`Applicant’s Mark is registered. Therefore, the application must be refused because of
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`fraudulent misuse of the federal registration symbol.
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`ANSWER: Denied.
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`
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`WHEREFORE, Applicant prays that the Notice of Opposition be dismissed with
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`prejudice.
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`8
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`
`
`Date: 8/31/2023
`
`
`
`
`
`
`/s/ Na Zhang
`Na Zhang, Esq
`GLACIER LAW LLP
`506 Second Ave., Ste 1516
`Seattle, WA 98104
`queena.zhang@glacier.law
`206-397-8633
`
`
`Attorney for Applicant
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`9
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`CERTIFICATE OF SERVICE
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`It is hereby certified that a true copy of the foregoing Applicant’s Amended Answer
`
`to Opposer’s First Amended Notice of Opposition was served upon Opposer by email, on this
`
`31st day of August 2023, at the following address:
`
`
`H. STRAAT TENNEY
`LOCKE LORD LLP
`200 VESEY STREET
`NEW YORK, NY 10281
`UNITED STATES
`trademark@lockelord.com, straat.tenney@lockelord.com, ziwen.zhu@lockelord.com,
`christina.london@lockelord.com, laura.campbell@lockelord.com
`Phone: 212-912-2915
`
`By: /s/Na Zhang
`Na Zhang, Esq
`
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`10
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` Dated: August 31, 2023
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