Notice of Opposition Re: Serial No. 78/207394
`
`Certificate of Mailing
`I hereby certify that this correspondence is being deposited with the United States Postal Service
`with sufiicient postage as First Class mail in an envelope addressed to: BOX-TTAB - FEE
`Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514, on February
`5, 2004
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`
`
`Name ofP ficate: Thomas P. Philbrick
`Signature: 1 '
`
`Date ofSigning: 0 Z 4 0-S‘ 5 0%
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`
`
`
`
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 78/207,394
`For the Trademark NX RACING in International Class 27
`
`Published in the Official Gazette on January 6, 2004
`
`02-10-2004
`
`u.s. Patent & TMOfcITM Mail RcptDt. #76
`
`Opposition No.
`Application No.: 78/207,394
`
`)
`)
`
`) )
`
`)
`)
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`) )
`
`Nitrous Express, Inc.
`
`Opposer,
`
`v.
`
`Elegant USA, LLC
`
`)
`Applicant.
` )
`
`BOX-TTAB - FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-35 14
`
`02/24/2004 KSOHCHRN 00000054 73207394
`
`01 FC:6402
`
`300.00 0P
`
`NOTICE OF OPPOSITION
`
`Nitrous Express, Inc., a Texas corporation, located and doing business at 5411 Seymour
`
`Hwy, Wichita Falls, Texas. 76310 and owner of a family of “NX” marks, hereby believes that it
`
`will be damaged by registration of the intent to use application for NX RACING (“Applicant’s
`
`
`
`Certificate of Mailing
`I hereby certify that this correspondence is being deposited with the United States Postal Service
`with sufiicient postage as First Class mail in an envelope addressed to: BOX-TTAB - FEE
`Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514, on February
`5, 2004
`
`
`
`Name ofP ficate: Thomas P. Philbrick
`Signature: 1 '
`
`Date ofSigning: 0 Z 4 0-S‘ 5 0%
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 78/207,394
`For the Trademark NX RACING in International Class 27
`
`Published in the Official Gazette on January 6, 2004
`
`02-10-2004
`
`u.s. Patent & TMOfcITM Mail RcptDt. #76
`
`Opposition No.
`Application No.: 78/207,394
`
`)
`)
`
`) )
`
`)
`)
`
`) )
`
`Nitrous Express, Inc.
`
`Opposer,
`
`v.
`
`Elegant USA, LLC
`
`)
`Applicant.
` )
`
`BOX-TTAB - FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-35 14
`
`02/24/2004 KSOHCHRN 00000054 73207394
`
`01 FC:6402
`
`300.00 0P
`
`NOTICE OF OPPOSITION
`
`Nitrous Express, Inc., a Texas corporation, located and doing business at 5411 Seymour
`
`Hwy, Wichita Falls, Texas. 76310 and owner of a family of “NX” marks, hereby believes that it
`
`will be damaged by registration of the intent to use application for NX RACING (“Applicant’s
`
`
`
`
`
`Notice of Opposition Re: Serial No. 78/207,394
`
`Mark”), as applied for in Application Serial No. 78/207,394 filed on January 27, 2003 by
`
`‘Applicant Elegant USA, LLC (“Applicant”).
`
`As grounds for opposition, Nitrous Express, Inc. alleges:
`
`1.
`
`Opposer develops, manufactures, and sells goods in the automotive industry,
`
`including goods for the sale of specialized equipment known as nitrous systems which may be
`
`added to the internal combustion engines of cars, trucks and motorcycles, and in particular to
`
`specialized racing vehicles of many kinds and related services. Opposer is widely recognized as
`
`a leader in the automotive industry for its creation of safe, reliable nitrous systems. As a result of
`
`the notoriety of such systems, the NX mark, associated with Opposer, has become a popular
`
`“symbol” with which racing fans seek to associate all kinds of automobile products and
`
`accessories in connection with their automobiles. Accordingly, Opposer licenses its NX mark to
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`a very select group of third parties, including but not limited to certain wholesalers of automotive
`
`seat covers, steering wheel covers, and floor mats whose quality and reputation in the
`
`manufacture and sale of automotive, truck and motorcycle related products is well known.
`
`Opposer has expanded and developed its reputation, goodwill and brand association through
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`careful, calculated and managed license arrangements.
`
`2.
`
`For more than seven years, Opposer alone, and through its licensees, has used NX
`
`brand as a trademark and service mark throughout the United States and the world to identify an
`
`entire line of automotive products and services. Opposer and its licensees have spent millions of
`
`dollars advertising their NX marks, and Opposer has extensively promoted and featured its NX
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`marks with automobile products and services. As a result of such efforts, the NX mark is
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`recognized as a designation of high quality goods and related services offered by Opposer, and
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`Opposer has developed considerable goodwill in the mark. Opposer’s NX marks are valuable
`
`
`
`
`
`Notice of Opposition Re: Serial No. 78/207,394
`
`and respected and have quickly become famous amongst automotive professionals, racing
`
`enthusiasts/fans and the automobile industry as a whole.
`
`3.
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`Opposer’s mark has achieved such a high degree of notoriety as to establish its
`
`brand as a symbol sold to enthusiasts in the form of “vehicle floor mats,” in interstate commerce
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`since at least as early as November 1, 2002.
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`4.
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`Opposer’s interest and brand identity is evidenced by the filing of its NX (word
`
`mark) application in Class 27 (Serial No. 78/273,149, filed on July 11, 2003.)
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`In addition,
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`Opposer’s interest and brand identity is further evidenced by the filing of its NX (words &
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`design mark) application in Class 27 (Serial No. 78/273,197, filed on July 11, 2003)
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`5.
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`Based on Opposer’s substantial interstate use of its mark in commerce and the
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`resulting goodwill, Opposer believes that it will be damaged by the registration of Serial No.
`
`78/207,394 as it
`
`is confusingly similar in sight, sound, meaning and overall commercial
`
`impression and as it is to be used in connection with related, if not, identical goods namely,
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`“AUTOMOBILE FLOOR MATS,” in International Class 27.
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`6.
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`Upon information and belief, Opposer alleges that Applicant filed an intent-to-use
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`application on January 27, 2003 for the mark NX RACING (and design) which seeks registration
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`of Opposer’s mark in connection with “AUTOMOBILE FLOOR MATS,” in International Class
`
`27.
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`7.
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`Upon information and belief, Opposer alleges that Applicant is well aware of
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`Opposer’s fame within the relevant industry and filed its application in an attempt to ride on and
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`profit from Opposer’s established goodwill.
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`8.
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`Applicant’s Mark is likely to be confused with and mistaken for Opposer’s NX
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`mark as Applicant’s Mark is, as filed, virtually identical to Opposer’s NX mark.
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`In addition,
`
`
`
`
`
`Notice of Opposition Re: Serial No. 78/207,394
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`since the term “RACING” is disclaimed in Applicant’s application, the claimed elements of
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`Applicant’s mark and Opposer’s mark are identical and thus confusingly similar.
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`9.
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`If Applicant is permitted to register Applicant’s Mark for the goods specified in
`
`the Application herein opposed, continued confusion resulting in damage and injury to Opposer
`
`will occur. Persons familiar with Opposer’s marks would be likely to perceive Applicant’s
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`goods as associated or affiliated with or sponsored by Opposer. Such confiision inevitably
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`would result in damage to Opposer.
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`10.
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`Registration of Applicant’s Mark would give Applicant prima facie evidence of
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`the validity and ownership of Applicant’s Mark and of Applicant’s exclusive right to use
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`Applicant’s Mark, all to the detriment of Opposer.
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`11. As a result of Applicant’s infringing activities, Opposer and Applicant are currently
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`involved in trademark infiingement litigation in the United States Federal District Court in the
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`Northern District of Texas. The aforementioned case is entitled Nitrous Express, Inc. v. Elegant
`
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`USA LLC, Civil Action #: 7:03-cv-00109. The ownership of the mark that is the subject of this
`
`Opposition is one of the issues to be decided by the federal district court litigation.
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`12. Wherefore, Opposer prays that this Opposition be sustained and that Application
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`Serial No. 78/207,394 be denied and refused.
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`A duplicate copy of this Notice of Opposition is enclosed.
`
`The filing fee of $300 for this opposition is covered by the enclosed check # 1304.
`
`DATEDthis 574 dayof Réruarg ,2oo4.
`
`Respectfully submitted,
`
`Nitrous Express, Inc.
`
`
`
`
`
`Notice of Opposition Re: Serial No. 78/207,394
`
`; fig
`
`Thomas P. Phjlbrick
`John E. Russell
`
`Attorneys for Opposer
`
`ALLMARK TRADEMARK
`
`4041 Sugar Maple Drive, Suite A
`Danville, CA 94506
`Telephone: (925)648-4839
`Facsimile: (925)648-4358
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