throbber
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1293312
`
`Filing date:
`
`06/23/2023
`
`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
`
`Attachments
`
`Plaintiff
`Vego Garden Inc.
`
`H STRAAT TENNEY
`LOCKE LORD LLP
`200 VESEY STREET
`NEW YORK, NY 10281
`UNITED STATES
`Primary email: trademark@lockelord.com
`Secondary email(s): straat.tenney@lockelord.com, ziwen.zhu@lockelord.com,
`christina.london@lockelord.com, laura.campbell@lockelord.com
`212-912-2915
`
`Motion to Amend Pleading/Amended Pleading
`
`H. Straat Tenney
`
`trademark@lockelord.com, straat.tenney@lockelord.com, zi-
`wen.zhu@lockelord.com, laura.campbell@lockelord.com
`
`/HST/
`
`06/23/2023
`
`Vego Motion for Leave to File First Amended Notice of Opposition.pdf(502596
`bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`VEGO GARDEN INC.,
`
`
`-v-
`
`
`
`UTOPBAN LIMITED,
`
`
`Opposer,
`
`
`Applicant.
`
`
`
`
`Opposition No.
`
`: 91283724
`
`Serial No.
`Trademark
`
`: 97189569
`: VEGEGA. (stylized)
`
`VEGO’S MOTION FOR LEAVE TO FILE
`
`FIRST AMENDED NOTICE OF OPPOSITION
`
`
`
`Pursuant to Fed. R. Civ. P. 15(d), opposer Vego Garden, Inc. (“Vego”) moves for leave
`
`to file an Amended Notice of Opposition to add allegations and a claim concerning Applicant’s
`
`(i) use of the VEGO and VEGO GARDEN mark in online advertising, and (ii) misuse of the
`
`federal registration symbol with the intent to deceive.
`
`STATEMENT OF FACTS
`
`
`
`On March 1, 2023, Vego filed a Notice of Opposition against the VEGEGA. (stylized)
`
`application because Applicant’s mark has caused, and will continue to cause, consumer
`
`confusion in the marketplace. 1 TTABVUE. Vego’s complaint outlined Applicant’s attempt to
`
`mimic Vego’s use of its marks. Id. at ⁋ 10. Those attempts to copy succeeded in confusing
`
`consumers as Vego has received a number of consumer inquiries regarding the status of order
`
`from Applicant’s customers, believing that they purchased Vego’s products. Id. at ⁋ 11.
`
`Applicant has responded to the Notice of Opposition, and discovery will close in November
`
`2023.
`
`
`133598400v.1
`
`1
`
`

`

`
`
`
`
`On or about June 1, 2023, Vego became aware that Applicant was using the VEGO and
`
`VEGO GARDEN trademarks in sponsored advertisements on search results pages on Google’s
`
`search engine. In addition to using Vego’s marks, Applicant’s advertisements also misused the
`
`federal registration symbol next to its VEGEGA mark, even though Applicant owns no
`
`registered rights in the mark in the U.S., or anywhere else in the world. A screenshot of one of
`
`Applicant’s advertisements is shown below.
`
`
`
`
`
`On June 20, 2023, Vego sent Applicant a copy of the amended pleadings, specifically
`
`adding allegations concerning Applicant’s spurious use of Vego’s marks, and a claim for misuse
`
`of the federal registration symbol with the intent to deceive. A copy of Vego’s proposed
`
`Amended Notice of Opposition showing redline edits is attached as Exhibit 1. Applicant said that
`
`it plans to oppose this motion. This is Vego’s first request to amend the pleadings.
`
`REMARKS
`
`
`
`Vego wants to amend the Notice of Opposition to supplement its pleadings with events
`
`that took place after the proceeding was instituted. Fed. R. Civ. P. 15 “encourages the Board to
`
`look favorably on motions to amend, stating that the Board ‘should freely give leave when
`
`justice so requires.’” Topco Holdings, Inc. v. Hand 2 Hand Indus., LLC, 2022 USPQ2d 54, at *2
`
`(TTAB 2022). Moreover, “Fed. R. Civ. P. 15(d) expressly provides for supplementation of
`
`pleadings with events that took place after the proceeding was instituted.” Id. at *5 (permitting
`
`
`133598400v.1
`
`2
`
`

`

`
`
`amendment to allege application filed after proceeding was instituted) (citation omitted); see also
`
`Intrepid v. Pollock, 907 F.2d 1125, 1129 (Fed. Cir. 1990) (“Rule 15(d) unequivocally allows
`
`supplementing a complaint with a count based on later events.”)). “In deciding whether to grant
`
`leave to amend, the Board may consider undue delay, prejudice to the opposing party, bad faith
`
`or dilatory motive, futility of the amendment, and whether the party has previously amended its
`
`pleadings.” Topco, 2022 USPQ2d 54, at *2 (citations omitted).1
`
`
`
`Here, Vego became aware of Applicant’s spurious use of its VEGO and VEGO
`
`GARDEN mark about three months after this action commenced. Soon after discovering
`
`Applicant’s conduct, after communications with Applicant and an investigation, Vego now seeks
`
`leave to amend its complaint. Less than a month has passed since Vego became aware of
`
`Applicant’s conduct.
`
`
`
`Vego has not delayed in seeking leave to amend. Vego first learned of Applicant’s
`
`conduct on June 1, 2023. After investigating Applicant’s actions, Vego sent Applicant a copy of
`
`the proposed amended pleading on June 20, 2023. Vego files this motion only days after
`
`Applicant said that it opposes the motion. See, e.g., Topco, 2022 USPQ2d 54, at *5 (finding
`
`approximately three months does not constitute undue delay);
`
`
`
`Moreover, this motion should be granted because this action is still in initial stages, and
`
`the parties have time to conduct relevant discovery. Applicant will not be prejudiced by the
`
`amendment. See, e.g., Am. Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 USPQ2d 1294,
`
`1297 (TTAB 2010) (no undue prejudice where discovery was still open).
`
`
`1 “In determining whether to grant leave to supplement a pleading under Fed. R. Civ. P. 15(d), tribunals, including
`the Board, use the same analysis utilized in deciding whether to grant leave to amend under Fed. R. Civ. P. 15(a).”
`Topco, 2022 USPQ2d 54, at *6 (citations omitted).
`
`3
`
`
`133598400v.1
`
`

`

`
`
`
`
`Finally, “the interests of justice and judicial economy would be served by permitting all
`
`claims between the parties to be adjudicated.” Topco, 2022 USPQ2d 54, at *4 (allowing
`
`amendment filed in early stages of proceeding); Space Base Inc. v. Stadis Corp., 17 USPQ2d
`
`1216, at 1217 n. 1 (TTAB 1990) (allowing opposer to amend complaint to plead ownership of a
`
`newly-issued registration despite unreasonable delay because judicial economy would be served
`
`and any prejudice could be mitigated by reopening discovery).
`
`CONCLUSION
`
`For the reasons set forth above, Vego respectfully requests that it be granted leave to file
`
`its Amended Notice of Opposition.
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`LOCKE LORD, LLP
`
`Dated: June 23, 2023
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`/H. Straat Tenney/
`H. Straat Tenney
`Laura Campbell
`Brookfield Place
`200 Vesey Street, 20th Floor
`New York, NY 10281
`(212) 912-2915
`trademark@lockelord.com
`Attorneys for Opposer Vego Garden, Inc.
`
`
`133598400v.1
`
`4
`
`

`

`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`133598400v.1
`133598400v.1
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`VEGO GARDEN INC.,
`
`
`-v-
`
`
`
`UTOPBAN LIMITED,
`
`
`Opposer,
`
`
`Applicant.
`
`
`
`
`Opposition No.
`
`:
`
`____________
`91283724
`
`Serial No.
`Trademark
`
`: 97189569
`:
`
`
`
`
`
`
`
`FIRST AMENDED NOTICE OF OPPOSITION
`
`Opposer Vego Garden, Inc., a Delaware corporation, whose address is 1521 Greens Road,
`
`No. 100, Houston, Texas 77032, believes that it will be damaged by the issuance to applicant
`
`UTOPBAN LIMITED, of a registration for the trademark VEGEGA. (stylized) under U.S.
`
`Application Serial No. 97189569, and therefore opposes the same. As grounds for this Opposition,
`
`Vego Garden, Inc., by its attorneys, and relying upon rights developed by it, alleges on knowledge
`
`as to itself and otherwise upon information and belief, the following:
`
`Opposer and the Vego Marks
`
`1.
`
`Opposer Vego Garden, Inc. (“Vego”) has continuously used, since at least as early
`
`as January 2020, the VEGO GARDEN mark to identify the source of its raised garden beds and
`
`gardening-related products. For years, Vego has used—and continues to use—the trademarks
`
`VEGO and VEGO GARDEN, alone and in combination with other terms and designs (“Vego’s
`
`Marks”), in connection with an extensive range of goods and services, including: raised garden
`
`beds, bags, trellises, seedling trays, nets, lights, knives, sifters, composters, planters, mugs, and
`
`
`
`
`1
`
`

`

`
`
`garden bed covers. Vego also provides educational programs under the VEGO mark. The
`
`foregoing goods and services are collectively referred to as “Vego’s Goods and Services.”
`
`2.
`
`Vego owns nationwide common law trademark rights in Vego’s Marks in
`
`connection with Vego’s Goods and Services by virtue of the use of Vego’s Marks throughout the
`
`United States. Vego established such common law rights in Vego’s Marks prior to any date of first
`
`use or priority upon which Applicant can rely.
`
`3.
`
`Vego is the owner of the following federally registered trademarks that incorporate
`
`Vego’s Marks:
`
`Mark
`VEGO
`VEGO GARDEN
`VEGO GARDEN
`VEGO GARDEN & Design
`
`Reg. No. Class(es)
`6872863
`6, 7, 18, 21, 22
`6870053
`18
`6243916
`21
`6884857
`18, 21
`
`The foregoing registrations are collectively referred to as “Vego’s Registrations.” Current
`
`print-outs of information from the electronic database of records of the United States Patent and
`
`Trademark Office showing the current status and title of Vego’s Registrations are attached as
`
`Exhibit 1 and are made record in this Opposition.
`
`4.
`
`All of Vego’s Registrations are valid, subsisting, and in full force and effect; all
`
`serve as prima facie evidence of the validity of the marks shown and of Vego’s exclusive right to
`
`use the marks on the goods identified, 15 U.S.C. § 1057(b); all establish that Vego’s rights in
`
`Vego’s Marks is long-prior to any rights on which Applicant can rely; and all serve to place
`
`Applicant on notice of Vego’s rights. In addition, all of Vego’s Registrations are incontestable and
`
`are conclusive evidence of Vego’s exclusive right to use the mark identified on the goods specified
`
`therein pursuant to Sections 7 and 33 of the Lanham Act, 15 U.S.C. §§ 1057, 1115(b).
`
`
`
`
`2
`
`

`

`
`
`5.
`
`Vego sells its VEGO-branded products online on its website at
`
`www.vegogarden.com, and through third-party retailers such as Lowe’s, Home Depot, Walmart,
`
`and online at Amazon.com.
`
`6.
`
`Vego has gone to considerable expense and expended substantial amounts of time
`
`and effort in advertising and promoting its goods and services offered under Vego’s Marks. Vego
`
`uses a combination of traditional promotional efforts, direct advertising, word-of-mouth, and
`
`unsolicited advertising as vehicles to promote its products. The goods and services offered under
`
`Vego’s Marks have been recognized by consumers and the trade for excellence in the United
`
`States. As a result of such promotional activities and unsolicited recognition, Vego’s Marks have
`
`become well-known in the United States in connection with Vego’s Goods and Services. The
`
`relevant public associates and identifies Vego’s Marks with Vego, and Vego derives substantial
`
`goodwill from such identification by consumers.
`
`7.
`
`As the popularity of Vego’s Goods and Services has grown, so have the number of
`
`incidents of unauthorized copying. Vego has implemented a worldwide program to deal with
`
`counterfeits of its products and infringements of its famous Vego Marks. Vego goes to great
`
`lengths to police the marketplace and enforce Vego’s Marks in order to protect the public from
`
`deception and confusion, as well as to protect the core of the company, its employees, customers,
`
`and all who manufacture, distribute, promote, and sell genuine VEGO- and VEGO
`
`GARDEN-branded products.
`
`Applicant and the VEGEGA. (stylized) Application
`
`8.
`
`Upon information and belief, applicant UTOPBAN LIMITED (“Applicant”) is a
`
`limited company organized and existing under the laws of Hong Kong with an address of Unit 2
`
`22/F Richmond Comm, Bldg. 109 Argyle Street, Mongkok KL Hong Kong 999077.
`
`
`
`
`3
`
`

`

`
`
`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,
`
`covering “Flower and plant cultivation trays; Garden syringes; Holders for flowers and plants;
`
`Plant baskets; Planter boxes for domestic gardening; Planters for flowers and plants; Plastic lids
`
`for plant pots; Raised garden beds, namely, raised containers for planting contained gardens;
`
`Raised garden planters; Self-watering planters for flowers and plants” in International Class 21
`
`(“Applicant’s Goods”), and claiming that it first used the VEGEGA Mark in United States
`
`commerce in connection with Applicant’s Goods on December 23, 2021.
`
`10.
`
`In support of his first use claim, Applicant submitted a screenshot showing use of
`
`the VEGEGA Mark on its website at www.vegega.com, where the prefix element “VEGE” is
`
`shown in green, and “GA.” element appears in red, screenshot below. Upon information and
`
`belief, the “vege” element refers to “vegetable,” and the “ga” element refers to “garden.”
`
`
`
`11.
`
`Applicant is using the VEGO and VEGO GARDEN trademarks in sponsored
`
`advertisements on search results pages, including on the Google search engine. A screenshot of
`
`one of Applicant’s sponsored advertisements is shown below.
`
`
`
`
`
`
`4
`
`

`

`
`
`12.
`
`Upon information and belief, Applicant’s uses the VEGO and VEGO GARDEN
`
`mark in its online advertisements to direct consumers who search for Vego’s products into
`
`believing mistakenly that they are visiting Vego’s website.
`
`13.
`
`11. Vego has received a number of consumer inquiries regarding the status of
`
`orders from customers who had placed orders for Applicant’s products bearing the VEGEGA
`
`Mark, believing that they were purchasing Vego’s VEGO-branded products.
`
`14.
`
`12. On or about September 12, 2022, Vego requested that the United States
`
`International Trade Commission commence an investigation into Applicant, and related
`
`companies, pursuant to Section 337 of the Tariff Act of 1930, as amended 19 U.S.C. § 1337, to
`
`remedy 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.
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`Likelihood of Confusion
`
`15.
`
`13. Vego repeats and incorporates by reference the allegations contained in
`
`Paragraphs 1 through 12, as if fully set forth herein.
`
`16.
`
`14. 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.
`
`17.
`
`15. The VEGEGA Mark combines dominant VEG- element of each of Vego’s
`
`Marks with the word “GA,” which suggests gardening products sold under the VEGEGA Mark
`
`belong to or are associated with Vego. Consumers will therefore believe that any product bearing
`
`the VEGEGA Mark originate with Vego.
`
`5
`
`
`
`
`

`

`
`
`18.
`
`16. Vego’s Goods and Services and Applicant’s Goods sell identical and
`
`garden-related products that travel in and are promoted through the same channels of trade for sale
`
`to, and use by, the same classes of consumers.
`
`19.
`
`17. Accordingly, the registration of Applicant’s VEGEGA Mark is likely to cause
`
`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 Vego, in
`
`violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`20.
`
`18. 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
`
`Vego. Persons familiar with Vego’s Marks will be likely to purchase Applicant’s Goods, believing
`
`them to be affiliated or associated with, connected to or sponsored by Vego. Likewise, persons
`
`exposed to Applicant’s VEGEGA Mark who subsequently become acquainted with Vego’s Marks
`
`are likely to conclude that the goods offered by Vego under Vego’s Marks are in some manner
`
`affiliated or associated with, connected to or sponsored by Applicant. Any such confusion as to
`
`sponsorship inevitably would result in damage and injury to Vego.
`
`21.
`
`19. Vego will be damaged by registration of Applicant’s VEGEGA Mark because
`
`such registration would support and assist Applicant in the confusing and misleading use of
`
`Applicant’s mark, give color of legal right to Applicant in violation of Vego’s prior and superior
`
`statutory and common law rights in Vego’s Marks.
`
`COUNT II
`Misuse of Federal Registration Symbol with Intent to Deceive
`
`22.
`
`Vego repeats and incorporates by reference the allegations contained in Paragraphs
`
`1 through 21, as if fully set forth herein.
`
`
`
`
`6
`
`

`

`
`
`23.
`
`Applicant has used and is currently using the federal registration symbol (®) with
`
`the VEGEGA. (stylized) mark in connection with the advertising and sale of Applicant’s Products,
`
`even though the mark is not registered in the U.S.
`
`24.
`
`Upon information and belief, Applicant has used the federal registration symbol
`
`(®) with an intent to deceive the purchasing public and others in the trade into believing that
`
`Applicant’s Mark is registered. Therefore, the application must be refused because of fraudulent
`
`misuse of the federal registration symbol.
`
`WHEREFORE, Vego prays that this Opposition be sustained and that U.S. Application
`
`Serial No. 97189569 be in all respects denied.
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`LOCKE LORD, LLP
`
`Dated: March 1June 23, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`/H. Straat Tenney/
`H. Straat Tenney
`Laura Campbell
`Brookfield Place
`200 Vesey Street, 20th Floor
`New York, NY 10281
`(212) 912-2915
`trademark@lockelord.com
`Attorneys for Opposer Vego Garden, Inc.
`
`7
`
`

`

`
`
`
`
`
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing VEGO’S MOTION FOR
`
`LEAVE TO FILE FIRST AMENDED NOTICE OF OPPOSITION was served on June 23, 2023
`
`via email on the attorney for Applicant:
`
`QUEENA ZHANG
`
`GLACIER LAW LLP
`
`506 SECOND AVENUE SUITE 1516
`
`SEATTLE, WA 98104
`
`UNITED STATES
`
`queena.zhang@glacier.law, tao.liu@glacier.law, wei.wang@glacier.law,
`mickey.yao@glacier.law, ruoting.men@glacier.law, iris.ju@glacier.law
`
`
`
`
`By:
`
`
`/H. Straat Tenney/
`H. Straat Tenney
`
`
`
`
`
`
`
`
`
`
`
`
`133598400v.1
`
`

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