estta tracking number: estta918450 08/27/2018
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA918450
Filing date: 08/27/2018
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91227730
Party PlaintiffOne Styling, LLC
CorrespondenceAddress
GAIL TULER FRIEDMANFRIEDMAN & FRIEDMAN LTD780 SOUTH FEDERAL ST STE 710CHICAGO, IL 60605UNITED [email protected],[email protected]
Submission Opposition/Response to Motion
Filer's Name Gail Tuler Friedman
Filer's email [email protected]
Signature /gail tuler friedman/
Date 08/27/2018
Attachments F31ERMD.TTAB.pdf(182222 bytes )F31- investo agreementr.pdf(1136442 bytes )F31 email.txt(851 bytes )F31tina personal loan agreement.pdf(865759 bytes )
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
One Styling, L.L.C, )
)
Opposer, ) Opposition No. 91227730
v. )
One Styling, Inc. ) Opposition No. 91227734
)
Applicant. )
MOTION FOR LEAVE TO FILE ADDITIONAL RESPONSE TO ONE
STYLING, INC’S REPLY
Applicant, One Styling, Inc., (“Applicant”) has filed a Motion to Dismiss to
Opposition Nos. 91227730 and 91227734 based upon the fact that One Styling, L.L.C
(“Opposer”).voluntarily filed a Certificate of Dissolution of Limited Liability Company
on January 11, 2017, is no longer a legal entity able to transact business, and therefore
supposedly has no standing to proceed with these Oppositions.
Opposer filed a response to Applicant’s Motion to Dismiss the Oppositions and
Applicant. filed a reply. In that reply Applicant. argues new facts alleging that Opposer’s
response to Applicant’s Motion to Dismiss is based entirely on fraud and fraudulent
statements. Applicant’s assertions are patently false and are intended to intentionally
mislead the Trademark Trial and Appeal Board (the”Board”). Opposer. moves for leave
to file the attached additional response to Applicant’s reply to provide the Board with
documents, which disprove the obviously false asserts by Applicant.
In conclusion, Opposer requests that the Board dismiss Applicant’s Motions to
Dismiss Opposition Nos. 91227730 and 91227734 instanter and substitute FMK as the
Opposer or in the alternative substitute David Kim as the Opposer in these oppositions.
Respectfully submitted,
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Dated August 27, 2018 /gail tuler friedman/
Gail Tuler Friedman
Member of the Illinois bar
Friedman & Friedman, Ltd.
Printers Square – Suite 710
780 South Federal Street
Chicago, Illinois 60605
(312) 922-8882
Attorney for Opposer
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
One Styling, L.L.C, )
)
Opposer, ) Opposition No. 91227730
vi. )
One Styling, Inc. ) Opposition No. 91227734
)
Applicant. )
SUR RESPONSE TO APPLICANT ONE STYLING, INC.’S REPLY
In response to Applicant One Styling, Inc.’s (“Applicant”) reply in favor of its
Motion to Dismiss, Opposer One Styling, L.L.C.(“Opposer”) states as follows:
On July 14, 2011, Salon Styling Concepts, Ltd. (“Salon Styling”) d/b/a One
Styling was incorporated in the State of Illinois, and on August 22, 2011, it was
registered as a foreign corporation in the State of Ohio. Eun Joo Park a/k/aTina Kim was
named as president on the incorporation documents. Applicant alleges that not only did
Tina Kim have a one hundred percent (100%) ownership in Salon Styling, but that David
Kim was merely an employee of Salon Styling and did not have any ownership in the
company. This is entirely false. On December 23, 2011, just four months after Salon
Styling was registered as a foreign corporation in Ohio, an Investment Agreement was
made between Zora Gill, an investor of Salon Styling and Salon Styling. Under the
Agreement, Zora Gill was to become twenty-five percent (25%) owner of Salon Styling,
subject to specific terms, and entitled to one seat on Salon Styling’s four (4) member
board of directors. Tina Kim, David Kim and Joseph Kim were each to own 25% of the
shares of Salon Styling and were each entitled to one seat on Salon Styling’s board of
directors. The document was signed by David Kim, Joseph Kim, Tina Kim, and Zora
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Gill. (A copy of the Investment Agreement is attached as Exhibit A.) Even if Tina Kim
had been a 100% shareholder of Salon Styling when the company was incorporated, less
than four months later, she only held a 25% share in the company. Tina Kim’s share in
the company never changed after the Agreement was signed. The other three members of
the board each held a 25% share in Salon Styling, a share equal to Tina Kim’s share.
Applicant’s allegation that David Kim was merely an employee is also false.
David Kim was president and CEO from the inception of Salon Styling. At least as early
as June 27, 2014, Tina Kim acknowledged that David Kim was president. On that day,
Tina Kim sent David Kim an email requesting that he sign a Repayment Agreement
between Salon Styling and herself. David Kim was to sign in his individual capacity and
as president of Salon Styling. Paragraph 5 of the document states that in the event Salon
Styling failed to pay credit card debt to Tina Kim when due, that “DK, the president of
the Company, agrees to become personally liable for the Credit Card Debt….” In this
document prepared by Tina Kim acknowledges that David Kim was president of Salon
Styling. (A copy of the June 27, 2014, email and Repayment Agreement are attached as
Group Exhibit B.) David Kim was president and CEO of Salon Styling from its inception
and all the investors and shareholders in Salon Styling knew that fact.
As early as the beginning of 2015, Salon Styling ceased doing business. In
fighting among Tina Kim and David Kim and some of the investors precipitated the filing
of an involuntary bankruptcy Chapter 7 petition in the U.S. Bankruptcy Court, Northern
District of Illinois, Case No. 15 bk 14770 against Salon Styling on April 23, 2015. The
petition was filed by Salon Styling’s creditors, one of which was Tina Kim. Having been
warned that the involuntary bankruptcy petition was to be filed, on April 22, 2015, Lester
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Haverty, one of Salon Styling’s investors registered One Styling, L.L.C. as a limited
liability company in Ohio and named David Kim as its president and CEO. Lester
Haverty was trying to recoup some of the money he had lost with Salon Styling. Prior to
the bankruptcy petition being filed, Salon Styling had ceased doing business and was no
longer using the marks, “ONE STYLING,” “ONE,” “EPIC,” “LEGACY,” and
“VERGE.” David Kim as president and CEO of Salon Styling and now president and
CEO of Applicant. knew that these marks had been abandoned and began using the
marks. The marks were never owned by Tina Kim. Tina Kim was not 100% owner of
Salon Styling as evidenced by Exhibit A. Even prior to the involuntary bankruptcy
petition being filed, Salon Styling stopped doing business and ceased using the mark,
allowing David Kim to begin using the marks.
Even if it could not be said that the marks could not be transferred to David Kim
by Salon Styling prior to the bankruptcy petition being filed. Those marks were then
abandoned by Salon Styling. There was nothing fraudulent about David Kim using the
marks as president and CEO of Applicant. Once David Kim, as president and CEO of
One Styling, L.L.C, began using the marks, he could assign his rights to the marks to
FMK.
In a subterfuge to distance herself from the Opposer, Tina Kim had her mother,
Yuk Bin Park, file the incorporation papers for Applicant on September 11, 2015, in the
State of Illinois, with the same name as the company started by Lester Haverty in Ohio.
In truth, Tina Kim’s mother has nothing to do with the new company or the marks. Tina
Kim, as manager of Applicant, has control over the company and is now using. the same
marks, “EPIC,” “LEGACY,” and “LEGACY” as Lester Haverty’s company. Those
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marks as well as “ONE” and “ONE STYLING” became available when Salon Styling
abandoned them prior to the bankruptcy. Tina Kim copied the name of the company from
Opposer and started using some of the same marks as Opposer on her products. It is quite
clear that Tina Kim was capitalizing on Opposer’s good name and reputation. Her
applications for the marks “EPIC” and “LEGACY” show a first date of use as September
15, 2015, and for “VERGE” as October 1, 2015, for “EPIC” Both “ONE” and “ONE
STYLING” were filed under 1(b) and at the time of the filing of the application for
trademark had never been used on any of Applicant’s goods. Opposer began using the
marks April 22, 2015, before Applicant.
Opposer had every right to use the abandoned marks, and after using the marks
for over a year, to assign those marks to Dongguan Fumeikang Electrical Technology
CO., LTD. (“FMK”) on September 30, 2016. Applicant accuses Opposer of fraudulent
transfers because Opposer began using the marks prior to the conclusion of the
bankruptcy in April, 2016. Yet, Applicant admits to having the mother of Tina Kim file
incorporation papers for a company using the same name Salon Styling was using to do
business, managing Applicant company, and using the marks “VERGE,” “EPIC,” and
“LEGACY”, the same marks used by Salon Styling. All this was done prior to the
bankruptcy of Salon Styling being finalized in April, 2016. Somehow Applicant believes
in a double standard. It is perfectly alright for Applicant to use the marks prior to the
bankruptcy of Salon Styling being finalized, but fraudulent for Opposer to use the marks.
Applicant has tried to deceive this Board with complete falsehoods. Opposer had
a right to use the abandoned marks and to assign those marks to FMK. Opposer
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legitimately used the marks prior to Applicant, and the Oppositions filed by Opposer
should not be dismissed.
Respectfully submitted,
Dated August 27, 2018 /gail tuler friedman/
Gail Tuler Friedman
Member of the Illinois bar
Friedman & Friedman, Ltd.
Printers Square – Suite 710
780 South Federal Street
Chicago, Illinois 60605
(312) 922-8882
Attorney for Opposer
CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing documents were
transmitted via the Electronic System for Trademark Trials and Appeals (“ESTTA”) on
August 27, 2018, via electronic mail to Richard S. Finkelstein, counsel for Applicant,
at the following email address: [email protected].
/gail tuler friedman/
Gail Tuler Friedman
Attorney for Opposer