Opes, Inc.v.Aladin Communications Inc

Trademark Trial and Appeal Board

Sep 30, 2016

No. 91213184 (T.T.A.B. Sep. 30, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Opes, Inc.
v.
Aladin Communications Inc.
________

Opposition No. 91213184
_______

Chanmin Park of Law Office of Lee & Park,
for Opes, Inc.

Matthew L. Seror of Buchalter Nemer,
for Aladin Communications, Inc.
_____

Before Quinn, Zervas and Mermelstein,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Aladin Communications Inc. (“Applicant”) is the owner of application Serial No.
85732630, filed on September 19, 2012, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), for the mark for “auctioneering
services; providing consumer product information via the internet or other
Opposition No. 91213184
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communications networks; retail and wholesale online and offline bookstore services;
computerized on-line ordering services featuring a wide variety of consumer goods;
providing a searchable database in the field of business information available via a
global computer network; providing a searchable on-line advertising guide featuring
the goods and services of others” in International Class 35. A description of the mark
in the record states, “The mark consists of a lantern shaded with the colors gold, dark
blue, pink, gold and the handle being dark blue; to the right of the lantern is the word
‘ALADDIN’ written in dark blue.” The colors gold, dark blue, and pink are claimed as
a feature of the mark.
In its notice of opposition,1 Opes, Inc. (“Opposer”) alleges:
Opposer is a leader in online and offline, retail and
wholesale bookstores selling books, audio CD’s and DVD’s
(“Bookstore Services,” hereinafter), since at least as early
as 1999, throughout the United States under the
trademark Aladdin, (Korean transliteration of
“Aladdin”), and a design mark that resembles a lamp
(“Aladdin Marks” hereinafter). Since at least as early as
1999, Opposer has been using Aladdin Marks in connection
with Bookstore Services, and Opposer continues such use
of the mark. Opposer has spent a considerable amount of
money, time and energy in rendering, advertising,

1 1 TTABVUE.
Citations in this opinion will be to the TTABVUE docket entry number and the electronic
page number where the document or testimony appears. Because the Board primarily uses
TTABVUE in reviewing evidence, the Board prefers that citations to non-confidential parts
of the record include the TTABVUE docket entry number and the TTABVUE page number.
For material or testimony that has been designated confidential and which does not appear
on TTABVUE, the TTABVUE docket entry number where such material or testimony is
located should be included in any citation. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473,
1476 n.6 (TTAB 2014).
Opposition No. 91213184
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marketing and promoting Bookstore Services under its
Aladdin Marks … .”2
Opposer did not provide a depiction of the “design mark that resembles a lamp” in
the notice of opposition. However, in the online form accompanying the notice of
opposition filed through ESTTA, the Board’s electronic filing system, Opposer listed
the following mark for “online and offline, retail and wholesale bookstores selling
books, audio CD[ ]s and DVD[ ]s”:

We consider Opposer to have asserted this combination word and design mark,
identified in the online form. See Hunt Control Systems Inc. v. Koninklijke Philips
Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011) (“[The ESTTA] form, along
with any attached supplementary elaboration of the basis for the opposition, serves
as the complaint in the opposition proceeding”); Schott AG v. Scott, 88 USPQ2d 1862,
1863 n.3 (TTAB 2008) (“[T]he ESTTA generated filing form … is considered part of
the plaintiff’s initial pleading”). With regard to the “Korean word which transliterates
to Aladdin” mentioned in the ESTTA cover sheet as another of Opposer’s marks, we

2 ¶ 1, 1 TTABVUE.
Opposition No. 91213184
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construe that mark as the Korean transliteration identified in Paragraph 6 of the
notice of opposition, depicted above.3
In addition to alleging priority, Opposer alleges a likelihood of confusion among
the Aladdin Marks and Applicant’s applied-for mark pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d).4
Applicant denied Opposer’s salient allegations in its answer to the notice of
opposition, and the parties have fully briefed the case.
Evidentiary Issues
Opposer, during its initial trial period, filed three declarations, with exhibits.
Trademark Rule 2.123, 37 CFR § 2.123, provides that testimony of a witness may be
taken by deposition upon oral examination or by deposition upon written questions.
By written agreement of the parties, however, the testimony of any witness or
witnesses of any party may be submitted in the form of an affidavit or declaration by
such witness or witnesses. See TRADEMARK BOARD MANUAL OF PROCEDURE
§ 703.01(b). The Board has not been informed of any written agreement between the

3 Opposer also asserted on the ESTTA form its application Serial No. 85786966 for the mark
for retail store services featuring “books text-books, used books; Wholesale
store services featuring books, text-books, used books” in International Class 35. Opposer
filed this application on November 26, 2012, over a month after Applicant filed its application.
Because of its later filing date, Opposer’s application Serial No. 85786966 is not a valid basis
for opposing the registration of Applicant’s mark.
4 In Opposer’s reply brief, Opposer raises and discusses, for the first time, a claim of no bona
fide intent to use the mark in commerce. Because this claim was not pleaded, was not tried
by the implied consent of the parties, and was not raised in Opposer’s main brief, we give this
claim no further consideration. See TRADEMARK BOARD MANUAL OF PROCEDURE (“TBMP”)
§ 314 (2016) and cases cited therein.
Opposition No. 91213184
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parties allowing testimony through a declaration. Applicant did not object to
Opposer’s submission of testimony by declaration, and Applicant questioned two of
the witnesses who submitted declarations during its testimony period. Applicant
therefore has waived any objection it had to the submission of testimony by
declaration by Opposer, and we have considered the three declarations submitted by
Opposer during its initial trial period. See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423, 1425 n.8 (TTAB 1993) (objection waived
where although there was no such agreement, plaintiff did not object to declarations
with exhibits submitted by defendant and moreover treated the evidence as if
properly of record).
In addition, it appears that Opposer has maintained in its main brief its objection
to certain business records submitted during the testimonial deposition of Mr. Myeng
Gug Song, general manager of Applicant, and former technical officer and chief
technical officer of Opposer from August 17, 1999 to October 31, 2010.5 Without
specifically identifying what it is referring to, Opposer states at p. 2 of its main brief:

5 An objection seasonably raised at trial may be waived if a party fails to preserve an objection
in its brief on the case, or in an appendix to the brief on the case or in a separate statement
of objections filed with the brief on the case. See, e.g., 7-Eleven, Inc. v. Wechsler, 83 USPQ2d
1715, 1718 n.25 (TTAB 2007) (objection to deposition exhibit waived because not renewed in
trial brief); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1632 (TTAB 2007)
(objection to testimony waived when not renewed in brief); Duramax Marine LLC v. R.W.
Fernstrum & Co., 80 USPQ2d 1780, 1785 (TTAB 2006) (objection that witness was not a
trademark expert not maintained in brief and thus waived); First Niagara Insurance Brokers
Inc. v. First Niagara Financial Group Inc., 77 USPQ2d 1334, 1340 n.14 (TTAB 2005)
(objection made in deposition but not renewed in brief deemed waived), rev’d on other
grounds, 476 F.3d867, 81 USPQ2d 1375 (Fed. Cir. 2007); Hard Rock Café International (USA)
Inc. v. Elsea, 56 USPQ2d1504, 1507 n.5 (TTAB 2000) (objection to exhibit raised during
deposition but not maintained in brief deemed waived); Reflange Inc. v. R-Con International,
17 USPQ2d 1125, 1126 n.4 (TTAB 1990) (objections to testimony and exhibits made during
Opposition No. 91213184
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As a try to prove its use for common law trademark,
Applicant submitted sales records from its business records
during 1999 and 2012. The sales records are far short in
proving elements of use in commerce, at least in that the
records were submitted though an [sic] witness’
testimonial deposition, who has not personal knowledge for
the records, and the Applicant’s witness’ testimonies
mostly includes mere conclusions.6
We give Opposer the benefit of any doubt as to whether it is preserving an
objection and construe the quoted paragraph as repeating Opposer’s objection to
Exhibit T Mr. Song’s testimonial deposition. Exhibit T is a computer printout of
Applicant’s sales to U.S. purchasers made through Applicant’s Korean website from
1999 until 2012. The printout was created pursuant to Mr. Song’s request of
Applicant’s technical staff in Korea and included the addresses of such purchasers
and shipping information for their orders. Applicant introduced the exhibit on August
20, 2015 during its direct examination of Mr. Song. Opposer’s attorney immediately
objected to the introduction of Exhibit T, identifying his objection as “undue prejudice.
Unfair surprise. This document was not submitted during the discovery period.”7
Opposer’s attorney cross-examined Mr. Song at length about the document during
the continuation of Mr. Song’s testimony deposition, on October 23, 2015, two months
after Applicant introduced Exhibit T.8

depositions deemed waived where neither party raised any objection to specific evidence in
its brief). See also TBMP § 707.04.
6 29 TTABVUE 5.
7 Song Test. at 42, 25 TTABVUE 44. Testimony depositions are cited as “Test.” herein.
8 Mr. Song’s testimony deposition was continued pursuant to the Board’s October 8, 2015
order, when the Board granted Applicant’s motion to extend Applicant’s testimony period.
Evidently, Opposer and Applicant attempted to reach a stipulation addressing the
Opposition No. 91213184
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Opposer has not identified the document request to which Exhibit T is responsive
and we will not hunt through the record to locate that discovery request. In addition,
Applicant’s attorney took the opportunity to question Mr. Song about this document,
and in fact continued his questioning approximately two months after Applicant
introduced Exhibit T into evidence, leaving him ample time to prepare for his
questioning. We therefore overrule Opposer’s objection to Exhibit T on the ground of
“undue prejudice. Unfair surprise. … not submitted during the discovery period,” and
consider it for whatever probative value it may have.
We consider next whether Applicant has properly authenticated Exhibit T and
established that Exhibit T is a business record pursuant to Fed. R. Evid. 803(6),
particularly because Mr. Song testified that his employment with Applicant began in
January 2013.9 Clearly, he had no personal knowledge of the sales reflected in Exhibit
T in 1999. Mr. Song testified that he gave the direction to create Exhibit T from the
records of aladin.co.kr; that the server on which the data forming Exhibit T resides
contains data from 1999; that the customer order records were created when the
customers inputted their information into the aladin.co.kr website when ordering
their books; and that the sales records are kept in the ordinary course of Applicant’s
business.10 We find that Mr. Song’s testimony authenticates Exhibit T as having been
compiled from Applicant’s company records and that it qualifies as a business record

admissibility of Exhibit T. They were unable to agree on its admissibility, necessitating an
extension of Applicant’s testimony period.
9 Song Test. at 121, 26 TTABVUE 35.
10 Song Test. at 41-42, 67, 71, 96-100; 25 TTABVUE 43-44, 69, 73; 26 TTABVUE 10-14.
Opposition No. 91213184
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pursuant to Fed. R. Evid. 803(6). See United States v. Flom, 558 F.2d 1179 (5th Cir.
1977) (official familiar with record keeping system laid foundation; it is not necessary
that the person who kept the record or even had supervision over its preparation
testify).
In addition to Exhibit T, we construe Opposer’s quoted statement from its brief as
repeating an objection to Exhibit U to Mr. Song’s testimony deposition. Exhibit U,
introduced on the October 23, 2015 portion of Mr. Song’s testimony deposition,
comprises records of sales made through the aladin.co.kr website.11 The Board, on
October 8, 2015, ordered the continuation of Mr. Song’s testimony deposition, but only
insofar as to Exhibit T.12 Thus, Exhibit U exceeds the terms of the Board’s October 8,
2015 order and is excluded from evidence.13 Opposer’s objection to Exhibit U is
sustained, albeit on a different ground.
Opposer also states (but in its reply brief), that it objected to Exhibits Q, R and S
to Mr. Song’s testimony deposition on the grounds of undue prejudice and unfair
surprise because they were not produced during the discovery period. Inasmuch as
Opposer preserved its objection only to sales records in its main brief, and these three
exhibits are not sales records, Opposer has waived any objection to these exhibits.

11 Song Test. at 115, 26 TTABVUE 29.
12 The Board’s October 8, 2015 order stated, Applicant’s “motion to extend its testimony
period is hereby GRANTED for the sole purpose of concluding Mr. Song’s deposition as it
relates to Exhibit T. Opposer’s rebuttal period has also been reopened for this limited
purpose.” (emphasis in original.) 23 TTABVUE 3.
13 Because Exhibit T concerns sales made in the United States, Exhibit U merely is further
evidence of what is already in evidence; it is cumulative of Exhibit T. Thus, our decision on
the merits in this case would not be any different had we further considered Exhibit U.
Opposition No. 91213184
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The Record
In addition to the pleadings and Applicant’s opposed application which is
automatically of record, see Trademark Rule 2.122(b), the evidence of record consists
of:
For Opposer:
● Declaration of Hyuk Ho Kwon, a director of Opposer, and
exhibits;14
● Declaration of Kun Soo Chung, President of Opposer, and
exhibits;15
● Declaration of Chanmin Park, Opposer’s attorney of
record, and exhibits;16
● Opposer’s rebuttal Notice of Reliance which includes
excerpts from the discovery deposition of Mr. Chung;17 and
● Opposer’s rebuttal Notice of Reliance which includes
copies of publications, written discovery and official records
of the USPTO.18
For Applicant:
● Applicant’s Notice of Reliance which includes excerpts
from the discovery deposition of Mr. Chung, and Opposer’s
Supplemental Verified Responses to Applicant’s First Set
of Interrogatories.19

14 14 TTABVUE.
15 15 TTABVUE.
16 16 TTABVUE.
17 17 TTABVUE.
18 22 TTABVUE.
19 17 TTABVUE.
Opposition No. 91213184
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● Applicant’s cross-examination of Mr. Kwon (by
deposition), and exhibits;20
● Applicant’s cross-examination of Mr. Chung (by
deposition), and exhibits;21
● Testimony deposition of Yoo Sik Cho, founder and CEO
of Applicant, and exhibits, including Mr. Cho’s declaration
submitted previously with Applicant’s summary judgment
motion);22 and
● Testimony deposition of Mr. Song, and exhibits.23

Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The Court of Appeals
for the Federal Circuit has enunciated a liberal threshold for determining standing
in Board proceedings. Ritchie, 50 USPQ2d at 1030. Mr. Chung stated at Paragraph 2
of his declaration that Opposer has been using the “Aladdin Marks” on the website

20 27 TTABVUE.
21 28 TTABVUE.
22 24 TTABVUE.
23 25 and 26 TTABVUE.
Opposition No. 91213184
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www.aladdinus.com since December, 1999.24 This is sufficient to demonstrate that
Opposer has a real interest in this proceeding and, therefore, has standing.25
Opposer’s standing is also established by the reference by the Examining Attorney of
the opposed application as a possible basis for refusal in connection with an
application owned by Opposer, namely, application Serial Number 85786966.26 See
Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB
2010) (Office action suspending plaintiff’s pending application pending possible
refusal based on alleged likelihood of confusion with defendant’s registration made of
record); TBMP § 309.03(b).
Priority
To establish priority, an opposer must show proprietary rights in a mark that
produce a likelihood of confusion. Herbko International, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). See also, Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). These
proprietary rights may arise from prior trademark use. Id.
In November 1998, Applicant, a South Korean corporation, began development of
an online bookstore selling Korean language books.27 Applicant launched its online

24 15 TTABVUE 3.
25 In order for a plaintiff to prevail on a claim of likelihood of confusion based on its ownership
of common law rights in a mark, the mark must be distinctive, inherently or otherwise, and
plaintiff must show priority of use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d
1317, 209 USPQ 40 (CCPA 1981). There is no argument that the Aladdin Marks are not
distinctive, and we know of no reason why ALADDIN would not be distinctive for the involved
services.
26 Exh. 15 Park Decl., 16 TTABVUE 402.
27 Cho Test. at 8-10, 24 TTABVUE 9-11.
Opposition No. 91213184
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bookstore in Korea in July 1999 and used the URL www.aladin.co.kr.28 Applicant’s
website featured the term ALADDIN in English.29 Since that time, Applicant has
continuously offered for sale and sold its books through its website.30 The
www.aladin.co.kr website was and is operated in Korea, was and is in Korean (but
includes the English term Aladdin) and accepted and accepts only South Korean Won
as payment.31 In addition, beginning in early 1999, articles in Korean newspapers
about Applicant and its website appeared in Korean newspapers such as JoongAng
Daily and Chosun Daily, which are read and circulated in the United States.32

28 Id.
29 Mr. Cho testified at p. 34 of his testimony deposition, 24 TTABVUE 35:
Q. And the English word Aladin has appeared on this site from
the launch back in July of 1999 to the present; is that right?
A. Yes.
30 See also Song Test. 33, 46-47, 25 TTABVUE 35, 48-50; Exh. T, 24 TTABVUE 127.
31 Cho Test. 18, 24 TTABVUE 19.
32 Cho Test. 14-15, 24 TTABVUE 15-16, stating:
Q. In February of 1999, JoonAng Daily, one of the major Korean
newspapers had an article saying that Aladin was in preparation
to launch and it was like the Korean Amazon. And it was not
just a short article, but the reporter interviewed me and it was
long article. In July 1999, Chosun Daily, another Korean
newspaper published similar article and various TV and radio
programs reported about Aladin’s launching.
Q. These newspapers that you’re describing, are those
newspapers, do you know if they are available in the United
States?
A. Yes, these are accessible in the United States through the
Internet and also for the Korean Americans. They were being
distributed in the United States and those papers were Chosun
Daily and JoonAng Daily.
Opposition No. 91213184
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Applicant’s website was, of course, accessible in the United States in 1999. From
July 1999 to December 1999, Applicant made sixteen sales in the United States and
shipped products to California, South Carolina, New Jersey, Minnesota, Texas,
Illinois, Kentucky and Tennessee, among other states.33 Sales by Applicant to United
States consumers have continued through the present.34
On December 3, 1999, however, Applicant entered into a first distribution
agreement with Opposer.35 The first distribution agreement was intended to increase

Q. These are daily papers distributed to the United States to
Korean Americans?
A. Yes.
33 Cho Test. at 13, 24 TTABVUE 14; Cho Decl. ¶¶ 6 and 7, 24 TTABVUE 83-84; and Exhs. A
and B to Mr. Cho’s declaration, comprising what Mr. Cho identifies as business records of
Applicant showing orders placed from customers in the United Stated prior to December
1999. 24 TTABVUE 89-106.
34 Mr. Cho testified at p. 29 of his testimony deposition:
Q. Turning back to sales in the United States through the
aladin.co.kr, have sales through that Web site to the United
States been continuous from the July 1999 launch of that site
through the present time?
A. Yes.
Q. Do you have any estimate in terms of the number of sales that
occur on an annual basis through the aladin.co.kr website to the
United States?
A. In a low year about 260 sales, and in a high year about 1,110
sales, so on average about 600 sales per year.
Q. Was the sales to United States consumers; is that right?
A. Yes.
24 TTABVUE 30. See also Song Test. pp. 95-116, 26 TTABVUE 9-30; Exh. T, 24
TTABVUE 127.
35 Cho Test. 15-17, 24 TTABVUE 16-18.
Opposition No. 91213184
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Applicant’s presence in the United States by creating a new website
(www.aladinus.com), through which Applicant’s books would be offered for sale and
sold to more U.S.-based customers.36 The agreement provided that “Aladdin, aiming
at Korea, and Ores, aiming at North America region through Aladdin US, shall do
the marketing” and Opposer “shall have exclusive business rights for Online Book
Store North America market.”37 The agreement was silent on trademark rights to the
Aladdin Mark.
On December 2, 2001, after the first distribution agreement expired, the parties
entered into a second distribution agreement.38 The second distribution agreement
was also silent as to trademark rights and as to whether Opposer had any exclusivity,
and stated, “[m]atters not mentioned in this agreement shall be decided by mutual
discussion so that they could be helpful to enhance the value of both companies,” and
“[t]his agreement shall supersede the business agreement entered into on December
3, 1999, but the purpose of the initial agreement shall be succeeded.”39
Thus, Applicant maintains that it has priority based on its use of ALADDIN prior
to December 1999, and because Opposer never obtained any rights in the Aladdin
Marks, even though it served as Applicant’s United States distributor from December
1999 to January 2013 when the parties terminated their relationship.40

36 Cho Test. 15-17, 24 TTABVUE 16-18.
37 Park Decl. ¶6, 16 TTABVUE 3; Exh. 5, 16 TTABVUE 25.
38 Cho Test. 26, 24 TTABVUE 27.
39 Id.; Park Decl. Exh. 6, 16 TTABVUE 29-30.
40 Applicant’s brief at 11, 30 TTABVUE 15.
Opposition No. 91213184
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Opposer disagrees with Applicant’s contention that it has priority and argues,
inter alia, that:
As a try to prove its use for common law trademark,
Applicant submitted sales records from its business records
during 1999 and 2012. The sales records are far short in
proving elements of use in commerce, at least in that the
records were submitted though an [sic] witness’
testimonial deposition, who has not personal knowledge for
the records, and the Applicant’s witness’ testimonies
mostly includes mere conclusions.41
Opposer also argues that in Applicant’s response to various interrogatories
about first use, Applicant provided a different response, and identified December
1999 as a first use date. Applicant stated as its response:
Applicant’s operations began on or before November 23,
1998, and its online bookstore became operational in or
about July 1999. Since approximately December 1999,
Applicant has been using its marks in the United States
and targeting U.S. customers. Opposer’s use of the Aladin
Marks (as defined), was never its own unilateral use.
Rather, such use was done in conjunction with and in
furtherance of the joint venture it formed with Applicant
and was limited in scope for the purposes of marketing and
customer service. As a result, Opposer did not gain common
law rights in any marks. Even if such use could be seen as
Opposer’s use, that use did not occur until after Applicant’s
use. Newspaper articles and domain registration
documents support the foregoing.42
Upon careful consideration of the evidence of record, and the arguments of the
parties, we find that Applicant used the mark ALADDIN in English (without the
lantern design) in the United States in the period between July 1999 and December

41 Opposer’s brief at 2, 29 TTABVUE 5.
42 Resp. to Opposer’s Int. Nos. 1-5, Exh. 7 Park Decl., 16 TTABVUE 33-44.
Opposition No. 91213184
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1999 in connection with online retail sales of books. The evidence reflects that during
this period, once orders for books arrived through the www.aladin.co.kr website,
which displayed the ALLADIN mark in English and which Korean-speaking
consumers viewed in the United States, Applicant packaged the books and mailed
them to the United States from Korea. Sales by Applicant through its website to
consumers in the United States have continued through the present.43 Applicant
included the mark ALADDIN in English on boxes, packaging materials, invoices and
newsletters.44

43 Cho Test. 29, 24 TTABVUE 30; Song Test. 95-116, 26 TTABVUE 9-30; Exh. T, 24
TTABVUE 127.
44 Mr. Cho testified at p. 34 of his testimony deposition:
Q. In addition are there other documents or materials, or
anything else where the word “Aladin” appears in connection
with your business operations in the United States?
A. It would appear in quite a few things. Only the packaging box
and the newsletters and in various media also on the invoice.
Q. Just so I’m clear, we’re talking about invoices and packaging
and boxes of things of that nature, you’re referring to the English
word “Aladin”; correct?
A. We use both the English Aladin and Korean Aladin.
Q. In all the places you described, both are used?
A. They don’t always go in everything together. Sometimes it’s
in English, sometimes in Korean, sometimes they are all
alternatively used.
Q. Okay. But you are aware that in some instances the English
word “Aladin” is used on packaging invoices sent to the United
States to U.S. customers; correct? … And that has been
consistent from the July 1999 time frame to the present?
A. Yes.
Opposition No. 91213184
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Opposer’s arguments concerning Applicant’s evidence of first use do not persuade
us to discount this evidence. The sales records submitted as Exhibits A and B to Mr.
Cho’s declaration, and the sales records of Exhibit T, demonstrate sales to purchasers
residing in the United States. Further, Mr. Cho, who founded, and was involved with,
Applicant when Applicant made its first U.S. sales in 1999, is one of Applicant’s
witnesses; Opposer’s challenge regarding the lack of personal knowledge of
Applicant’s witnesses is without merit. In addition, as discussed above, Mr. Song
suitably authenticated Exhibit T and offered testimony establishing Exhibit T as a
business record which we may rely on.
In addition, we are not troubled by Applicant’s interrogatory response which
Opposer maintains is inconsistent with other statements by Applicant. Applicant
later responded to Opposer’s Interrogatory No. 4 (second set) that:
Applicant first used marks containing the word Aladin
(and variations thereof, in English and Korean) in
November 1998. Its website launched in July 1999, at
which point its sales commenced.45
Applicant’s answer to Interrogatory No. 4 is consistent with the testimony of two of
Applicant’s witnesses, as well as Applicant’s sales records. Additionally, Opposer,
when cross-examining Applicant’s witnesses at trial, did not question them regarding
the Applicant’s interrogatory response.
In view of the foregoing, and because Applicant established that it first used the
ALADDIN mark in English in the United States in the period July to December, 1999,

24 TTABVUE 35.
45 Park Decl, Exh. 8, 16 TTABVUE 53.
Opposition No. 91213184
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and Opposer has not alleged any earlier use of any trademark to which it may claim
rights, we find that Applicant has established priority of use in the United States.
Likelihood of Confusion
Because Opposer has not prevailed on the question of priority, we need not reach
the question of likelihood of confusion.

Decision: Opposer’s opposition to Applicant’s application Serial No. 85732630 is
dismissed.