Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA661030
`ESTTA Tracking number:
`03/13/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Peak Performance Holdings, LLC
`05/13/2015
`
`54 West 21st Street
`New York, NY 10010
`UNITED STATES
`
`Attorney informa-
`tion
`
`Holly Pekowsky, Esq.
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
`UNITED STATES
`ptodocket@arelaw.com Phone:212=336-8000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86303627
`03/13/2015
`
`Publication date
`Opposition Peri-
`od Ends
`
`01/13/2015
`05/13/2015
`
`Robert J. Reisz
`4137 120th Street
`Urbandale, IA 50323
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 041. First Use: 1998/08/00 First Use In Commerce: 1998/08/00
`All goods and services in the class are opposed, namely: Coaching and training in the field of sports;
`sport camp services; Personal training services, namely, strength, conditioning, reconditioning and
`weight lifting training programs; Educational and training services, namely, conducting classes, sem-
`inars and workshops in the field of massage therapy and sports training; Workplace injury prevention
`services, namely, providing training and educationalclasses in the field of work-related injury preven-
`tion and the treatment of employees and others; Providing a website featuring sporting information;
`Providinga website featuring online sports training, training advice and non-downloadable video re-
`cordings featuring sports training and workouts; Educational services,namely, conducting classes,
`seminars and workshops in the field of sports nutrition
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`
`86299815
`
`Application Date
`
`06/04/2014
`
`

`

`No.
`Registration Date
`
`NONE
`
`Word Mark
`Design Mark
`
`PEAKPERFORMANCE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 1996/11/30 First Use In Commerce: 1996/11/30
`PHYSICAL FITNESS SERVICES, NAMELY, PERSONAL TRAINING, HEALTH
`AND FITNESS RELATED SERVICES
`
`U.S. Application/ Registra-
`tion No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`PEAKPERFORMANCE
`personal training and other health and fitness related services
`
`Attachments
`
`86299815#TMSN.png( bytes )
`Notice of Opposition - Peak Performance v. Robert Reisz.pdf(3955992 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Holly Pekowsky/
`Holly Pekowsky, Esq.
`03/13/2015
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`---------------- - - - - -x
`
`PEAK PERFORMANCE HOLDINGS, LLC,
`
`ROBERT J. REISZ,
`
`Opposer,
`
`v.
`
`Applicant.
`
`Application Serial No. 86/303,627
`Filing Date: June 9, 2014
`Publication Date: January 13, 2015
`Trademark: PEAK PERFORMANCE
`
`— — — — — — — — — — — — — — — — — — — — -x
`
`NOTICE OF OPPOSITION
`
`In the matter of U.S. Trademark Application Serial No. 86/303,627 filed by Robert J.
`
`Reisz ("Applicant") on June 9, 2014 and published for opposition in the January 13, 2015 issue
`
`of the Official Gazette of the United States Patent and Trademark Office for the tradennark
`
`PEAK PERFORMANCE (the "Objectionable Mark") as applied to coaching and training in the
`
`field of sports; sport camp services; personal training services, namely, strength, conditioning,
`
`reconditioning and weight lifting training programs; educational and training services, namely,
`
`conducting classes, seminars and workshops in the field of massage therapy and sports training;
`
`workplace injury prevention services, namely, providing training and educational classes in the
`
`field of work-related injury prevention and the treatment of employees and others; providing a
`
`website featuring sporting information; providing a website featuring online sports training,
`
`training advice and non-downloadable video recordings featuring sports training and workouts;
`
`educational services, namely, conducting classes, seminars and workshops in the field of sports
`
`nutrition (the "Objectionable Application").
`
`As grounds for opposition of the Objectionable Application, Opposer Peak Performance
`
`Holdings, LLC ("Opposer"), by and through its attorneys, alleges as follows:
`
`597898.1
`
`

`

`1.
`
`Opposer, a New York limited liability company maintaining a principal place of
`
`business at 54 West 21St Street, New York, NY 10010, believes that it will be damaged by the
`
`registration of the Objectionable Application and hereby apposes the same.
`
`2.
`
`Opposer has used PEAKPEFORMANCE and/or PEAK PERFORMANCE in
`
`connection with personal training and other health and fitness related services (collectively,
`
`"Opposer's PEAKPERFORMANCE Mark") since approximately November 6, 1996. That is
`
`the day Opposer's predecessor-in-interest, its principal Joe Dowdell, filed a fictitious business
`
`name certificate for PEAK PERFORMANCE SPORTS AND FITNESS CLINIC.
`
`3.
`
`A copy of the cover and related pages of the December, 1997 issue of
`
`Cosmopolitan magazine which features Applicant's Peak Performance Sports and Fitness Center
`
`is annexed hereto as Exhibit A.
`
`4.
`
`Over the years, Opposer has extensively provided a wide variety of personal
`
`training and other health and fitness related services, including without limitation, providing
`
`instruction and equipment in the field of physical exercise, fitness conditioning classes,
`
`instruction, consultation, providing a website featuring information on exercise and fitness;
`
`providing assistance, personal training and physical fitness consultation to individuals to help
`
`them make physical fitness, strength, conditioning, and exercise improvement in their daily
`
`living; providing a full service gym; providing training services, providing nutritional
`
`counseling, physical therapy and soft tissue therapy; providing online/distance coaching relating
`
`to fitness; providing yoga and other fitness classes, and has promoted the same in commerce
`
`under Opposer's PEAKPERFORMANCE Mark.
`
`5.
`
`Personal training and other health and fitness related services provided under
`
`Opposer's PEAKPERFORMANCE Mark have been widely advertised to the trade and
`
`597898.1
`
`-~-
`
`

`

`purchasing public and have been the subject of significant unsolicited media attention, including,
`
`for example, in Men's Health, Self; Shape, Fitness, ESPN, Huffington Post Healthy Living,
`
`Glamour, In Style, Elle, Bride's Magazine, Oprah Magazine, More, Esquire, GQ, Details, Town
`
`& Country, US Weekly, Vogue, and Allure. Such services have also been promoted on numerous
`
`television shows, including E! News, Access Hollywood, ABC News, Fox News, Dr. Oz, and The
`
`View under Opposer's PEAKPERFORMANCE Mark.
`
`6.
`
`Opposer's PEAKPERFORMANCE Mark, by reason of the high quality of
`
`personal training and other health and fitness related services provided under the Mark, has come
`
`to be known to the purchasing public as representing personal training and other health and
`
`fitness related services of the highest quality.
`
`As a result thereof, Opposer's
`
`PEAKPERFORMANCE Mark and the goodwill associated therewith are of inestimable value to
`
`Opposer.
`
`7.
`
`By virtue of the renown acquired by Opposer's PEAK PERFORMANCE Mark,
`
`coupled with Opposer's reputation for high quality personal training and other health and fitness
`
`related services, Opposer's PEAK PERFORMANCE Mark has acquired secondary meaning and
`
`has developed an enviable reputation in the minds of the purchasing public.
`
`8.
`
`On or about June 4, 2014, Opposer filed Applications for its
`
`PEAKPERFORMANCE Mark (one as a word mark, the other with a design element), which
`
`Applications were subsequently assigned Application Serial Nos. 86/299,815 and 86/299,840
`
`("Opposer's Applications").
`
`9.
`
`On or about September 27, 2014, the Trademark Office issued Office Actions
`
`initially refusing registration of 4pposer's Applications based on a perceived likelihood of
`
`confusion with a Registration owned by Applicant. for a stylized version of the mark at issue in
`
`597$98.1
`
`-3-
`
`

`

`this Opposition, i.e. PEAK PERFORMANCE, for the same services covered by the
`
`Objectionable Application ("the Objectionable Registration").
`
`10.
`
`Opposer has priority over the first use and first use in commerce dates recited in
`
`both the Objection Registration and the Objectionable Application.
`
`ll.
`
`In particular, the dates of first use and first use in commerce recited in the
`
`Objectionable Registration are January, 2006, and the dates of first use and first use in commerce
`
`recited in the Objectionable Application are August, 1998. As noted above, Opposer has used its
`
`PEAKPERFORMANCE Mark since approximately November 6, 1996, and the December, 1997
`
`issue of Cosmopolitan magazine features Opposer's PEAKPERFORMANCE Mark. Opposer
`
`believes it was interviewed for the magazine in June ar July of 1997. This date is based on
`
`Opposer's recollection that there was a four to five month lead time for print publications in
`
`1997. Opposer was already providing fitness services under Opposer's PEAKPERFORMANCE
`
`Mark at the time of the interview.
`
`12.
`
`Although Applicant's counsel subsequently represented to Opposer's counsel that
`
`Applicant's first use of the Objectionable Mark is earlier than the dates recited in the
`
`Objectionable Application, and that the first use and first use in commerce is in fact "late spring
`
`of 1996," upon information and belief, this information is not correct. In particular, despite
`
`Opposer's counsel's repeated requests that Applicant's counsel provide documentary evidence or
`
`specific information about the nature and extent of the services provided under the Objectionable
`
`Mark to support the earlier date, Applicant's counsel has failed to do so.
`
`13.
`
`Since Opposer's Applications have been refused registration based on Applicant's
`
`Objectionable Registration, Opposer has standing to petition to cancel the Objectionable
`
`Registration, and is simultaneously filing a Petition to Cancel. this Registration.
`
`597898.1
`
`-4-
`
`

`

`14.
`
`Since the Objectionable Application covers the word version of the word/design
`
`mark covered by the Objectionable Registration, and the Application and Registration cover the
`
`same goods, Applicant also has standing to oppose the Objectionable Application.
`
`15.
`
`The Objectionable Mark is
`
`confusingly
`
`similar
`
`to
`
`Opposer's
`
`PEAKPERFORMANCE Mark and used for the same/closely related services.
`
`16.
`
`Opposer has priority over Applicant.
`
`17.
`
`Based on the foregoing, the use and/or registration of the Objectionable Mark by
`
`Applicant is likely to cause confusion and mistake in the minds of the purchasing public, and, in
`
`particular, will, upon information and belief, tend to falsely create the impression that the
`
`services provided under the Objectionable Mark are authorized, sponsored, or approved by
`
`Opposer when, in fact, they are not.
`
`18.
`
`Accordingly, it is Opposer's belief that if Applicant is granted the registration
`
`opposed herein, Opposer will suffer irreparable harm and damage.
`
`WHEREFORE, Opposer respectfully requests that the mark shown in U.S. Trademark
`
`Application Serial No. 86/3Q3,627 be refused registration and that this Opposition be sustained.
`
`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`Attorneys for Opposer
`Peak Performance Holdings, LLC
`90 Park Avenue
`New York, New York 10016
`(212) 336-8000
`
`Dated: New Yark, New York
`March , 2015
`
`BY:
`
`Anthon F. L icero
`Holly Pekowsky
`
`597$98.1
`
`-5-
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF
`
`OPPOSITION has been served on Applicant Robert J. Reisz by delivering said copy via Federal
`
`Express, overnight delivery, prepaid to Applicant's attorney of record, as follows:
`
`Christine Lebron-Dykeman, Esq.
`Mckee, Voorhees & Sease, PLC
`801 Grand Ave Ste 3200
`Des Moines, Iowa 50309-8009
`
`By:
`
`Holly P kow y
`
`Dated:
`
`March ~,~,~, 201 S
`New York, New York
`
`597898.1
`
`-( -
`
`

`

`
`
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