Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA748310
`05/24/2016
`
`ESTTA Tracking number:
`
`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
`
`Monster Energy Company
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`05/25/2016
`
`1 Monster Way
`Corona, CA 92879
`UNITED STATES
`
`Attorney informa-
`tion
`
`Diane M. Reed, Jonathan Menkes
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN ST., 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`efiling@knobbe.com, francie.leonguerrero@knobbe.com,
`doreen.buluran@knobbe.com Phone:949-760-0404
`
`Applicant Information
`
`Application No
`
`86566997
`
`Publication date
`
`01/26/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`05/24/2016
`
`Opposition Peri-
`od Ends
`
`05/25/2016
`
`MOTORCYCLE TIRES & ACCESSORIES LLC
`6947 Highway 33
`Choudrant, LA 71227
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 006. First Use: 2010/12/31 First Use In Commerce: 2010/12/31
`All goods and services in the class are opposed, namely: Winch accessories in the nature of metal
`hooks; non-electric wire cables of common metals; metal tie downs
`
`Class 007. First Use: 2010/12/31 First Use In Commerce: 2010/12/31
`All goods and services in the class are opposed, namely: Winches
`
`Class 011. First Use: 2010/12/31 First Use In Commerce: 2010/12/31
`All goods and services in the class are opposed, namely: Safety emblems in the nature of vehiclere-
`flectors; light bars for vehicles, namely, for utility terrain vehicles; lights kits for vehicles comprising
`high intensity discharge (hid) lights
`
`Class 012. First Use: 2010/12/31 First Use In Commerce: 2010/12/31
`All goods and services in the class are opposed, namely: All terrain vehicle tires, tubes and rims;
`parts for all terrain vehicles namely, grab handles; structural parts for all terrain vehicles, namely,
`roofs, cab enclosures, doors, bed covers, fender flares and compartments for stereos and speakers;
`land vehicle parts, namely, tire chains, drink holders, vehicle parts, namely front spacers, wheel bear-
`ings, axles and cardan shafts for motor vehicles, drive belts, universal joints, cv joints, cv boot kit
`boxes, suspension springs,suspension kits comprising suspension springs and struts, gear shifts,
`
`

`
`clutch kits comprising clutches and clutch linings; vehicle parts, namely tie rod ends; vehicle parts,
`namely, ball joints; antenna toppers, namely, attachments to the tips of automobile antennas
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Other
`
`Trademark Act Sections 2 and 43(c)
`
`common law rights as asserted in the Notice of
`Opposition
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4721432
`
`Registration Date
`
`04/14/2015
`
`Word Mark
`
`Design Mark
`
`M
`
`Application Date
`
`03/12/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letter "M" in the form of a claw.
`
`Class 035. First use: First Use: 2003/01/04 First Use In Commerce: 2003/01/04
`Promoting goods and services in the sports, motorsports, electronic sports,
`andmusic industries through the distribution of printed, audio and visual promo-
`tional materials; promoting sports and music events and competitions for others
`
`U.S. Registration
`No.
`
`4051650
`
`Registration Date
`
`11/08/2011
`
`Word Mark
`
`M
`
`Application Date
`
`07/28/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter M in the form of a claw.
`
`Class 025. First use: First Use: 2002/05/24 First Use In Commerce: 2002/06/30
`Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat
`shirts,jackets, pants, bandanas, sweat bands and gloves; headgear, namely
`hats and beanies
`
`U.S. Registration
`No.
`
`3908601
`
`Registration Date
`
`01/18/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" and stylized words "MONSTER EN-
`ERGY".
`
`Class 025. First use: First Use: 2002/05/24 First Use In Commerce: 2002/06/30
`Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat
`shirts,jackets, pants, bandanas, sweat bands and gloves; headgear, namely,
`hats and beanies
`
`U.S. Registration
`No.
`
`3914828
`
`Registration Date
`
`02/01/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" and the stylized words "MONSTER
`ENERGY".
`
`Class 009. First use: First Use: 2006/01/00 First Use In Commerce: 2006/01/00
`Sports helmets
`
`U.S. Registration
`No.
`
`4011301
`
`Registration Date
`
`08/16/2011
`
`Word Mark
`
`M
`
`Application Date
`
`07/27/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw.
`
`Class 009. First use: First Use: 2002/05/24 First Use In Commerce: 2002/06/30
`sports helmets; video recordings featuring sports, extreme sports, and motor
`sports
`
`U.S. Registration
`No.
`
`3908600
`
`Registration Date
`
`01/18/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" and stylized words "MONSTER EN-
`ERGY".
`
`Class 016. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`Stickers; sticker kits comprising stickers and decals; decals
`
`U.S. Registration
`No.
`
`3923683
`
`Registration Date
`
`02/22/2011
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" and the stylized words "MONSTER
`ENERGY".
`
`Class 018. First use: First Use: 2004/05/00 First Use In Commerce: 2004/05/00
`All purpose sport bags; All-purpose carrying bags; Backpacks; Duffle bags
`
`U.S. Registration
`No.
`
`3963669
`
`Registration Date
`
`05/17/2011
`
`Word Mark
`
`M
`
`Application Date
`
`07/28/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw.
`
`Class 018. First use: First Use: 2002/05/24 First Use In Commerce: 2002/06/30
`All purpose sport bags; all-purpose carrying bags; backpacks; duffel bags
`
`U.S. Registration
`No.
`
`3963668
`
`Registration Date
`
`05/17/2011
`
`Word Mark
`
`Design Mark
`
`M
`
`Application Date
`
`07/28/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of a stylized letter "M" in the form of a claw.
`
`

`
`Mark
`
`Goods/Services
`
`Class 016. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`Stickers; sticker kits comprising stickers and decals; decals; posters
`
`U.S. Registration
`No.
`
`4332062
`
`Registration Date
`
`05/07/2013
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`10/05/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" to the left of the stylized words "MON-
`STER ENERGY".
`
`Class 014. First use: First Use: 2006/12/00 First Use In Commerce: 2006/12/00
`Silicone wrist bands; Silicone bracelets; Jewelry, namely, bracelets and wrist-
`bands
`
`U.S. Registration
`No.
`
`4822675
`
`Registration Date
`
`09/29/2015
`
`Word Mark
`
`M
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw.
`
`Class 022. First use: First Use: 2006/12/20 First Use In Commerce: 2006/12/20
`Lanyards; Lanyards for holding whistles, keys, eyeglasses, sunglasses, mobile
`telephones, badges, identification cards,event passes, media passes, photo-
`graphs, recording equipment, or similar conveniences
`
`U.S. Registration
`No.
`
`4660598
`
`Registration Date
`
`12/23/2014
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`08/26/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw to the left ofthe
`stylized words "MONSTER ENERGY". The word "MONSTER" appears above
`the word "ENERGY" and features a slash mark through the letter "O".
`
`Class 022. First use: First Use: 2006/12/20 First Use In Commerce: 2006/12/20
`Lanyards; Lanyards for holding whistles, keys, eyeglasses, sunglasses, mobile
`telephones, badges, identification cards,event passes, media passes, photo-
`
`

`
`graphs, recording equipment, or similar conveniences
`
`U.S. Registration
`No.
`
`2903214
`
`Registration Date
`
`11/16/2004
`
`Word Mark
`
`Design Mark
`
`M
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Drinks, namely, carbonated soft drinks,carbonated drinks enhanced with vitam-
`ins, minerals, nutrients, amino acids and/or herbs, carbonated and non-
`carbonated energy or sports drinks, fruit juice drinks having a juice content of
`50% or less by volume that are shelf stable, [ andwater; ]*but excluding perish-
`able beverage products that contain fruit juice orsoy, whether such products are
`pasteurized or not.*
`
`U.S. Registration
`No.
`
`3434821
`
`Registration Date
`
`05/27/2008
`
`Word Mark
`
`M
`
`Application Date
`
`09/07/2007
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the letter "m" in the form of a claw.
`
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Nutritional supplements
`
`U.S. Registration
`No.
`
`3434822
`
`Registration Date
`
`05/27/2008
`
`Word Mark
`
`Design Mark
`
`M
`
`Application Date
`
`09/07/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of the letter "m" in the form of a claw.
`
`Goods/Services
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`
`

`
`Non-alcoholic beverages, namely, energydrinks, excluding perishable beverage
`products that contain fruit juice or soy
`
`U.S. Registration
`No.
`
`3134841
`
`Registration Date
`
`08/29/2006
`
`Word Mark
`
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/04/18
`Beverages, namely, carbonated soft drinks, carbonated soft drinks enhanced
`withvitamins, minerals, nutrients, amino acids and/or herbs, carbonated [ and
`non-carbonated ] energy and sports drinks, fruit juice drinks having a juice con-
`tent of 50% or less by volume that are shelf stable, [ and aerated water, soda
`water and seltzer water, ] but excluding perishable beverage products that con-
`tain fruit juice or soy, whether such products are pasteurized or not
`
`U.S. Registration
`No.
`
`4625118
`
`Registration Date
`
`10/21/2014
`
`Word Mark
`
`M
`
`Application Date
`
`06/04/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`The mark consists of the letter "M" in the form of a claw.
`
`Class 029. First use: First Use: 2013/03/18 First Use In Commerce: 2013/03/18
`Dairy-based beverages; dairy-based energy shakes; energy shakes; coffee en-
`ergy shakes; chocolate energy shakes
`Class 030. First use: First Use: 2007/04/27 First Use In Commerce: 2007/04/27
`Ready to drink tea and tea based beverages; ready to drink flavored tea, tea
`based beverages; ready to drink coffee andcoffee based beverages; ready to
`drink flavored coffee and coffee based beverages; ready to drink chocolate-
`based beverages
`
`86219319#TMSN.png( bytes )
`85094362#TMSN.png( bytes )
`77705822#TMSN.png( bytes )
`77705362#TMSN.png( bytes )
`85094340#TMSN.png( bytes )
`77705747#TMSN.png( bytes )
`77705810#TMSN.png( bytes )
`85094364#TMSN.png( bytes )
`85094343#TMSN.png( bytes )
`85747244#TMSN.png( bytes )
`86048362#TMSN.png( bytes )
`86048359#TMSN.png( bytes )
`78246564#TMSN.png( bytes )
`77274643#TMSN.png( bytes )
`77274662#TMSN.png( bytes )
`78246567#TMSN.png( bytes )
`86300585#TMSN.png( bytes )
`2016-05-24 FINAL NOTICE OF OPPOSITION-
`86566997-HANBEV.4323M.pdf(392517 bytes )
`Exhibit 01 Reg No. 4721432-HANBEV.4323M.pdf(1213115 bytes )
`Exhibit 02 Reg No. 4051650-HANBEV.4323M.pdf(1155313 bytes )
`Exhibit 03 Reg No. 3908601-HANBEV.4323M.pdf(1073789 bytes )
`
`

`
`Exhibit 04 Reg No. 3914828-HANBEV.4323M.pdf(1032132 bytes )
`Exhibit 05 Reg No. 4011301-HANBEV.4323M.pdf(1124132 bytes )
`Exhibit 06 Reg No. 3908600-HANBEV.4323M.pdf(1045770 bytes )
`Exhibit 07 Reg No. 3923683-HANBEV.4323M.pdf(1048189 bytes )
`Exhibit 08 Reg No. 3963669-HANBEV.4323M.pdf(996001 bytes )
`Exhibit 09 Reg No. 3963668-HANBEV.4323M.pdf(994573 bytes )
`Exhibit 10 Reg No. 4332062-HANBEV.4323M.pdf(1138637 bytes )
`Exhibit 11 Reg No. 4822675-HANBEV.4323M.pdf(1209338 bytes )
`Exhibit 12 Reg No. 4660598-HANBEV.4323M.pdf(1278951 bytes )
`Exhibit 13 Reg No. 2903214-HANBEV.4323M.pdf(581922 bytes )
`Exhibit 14 Reg No. 3434821-HANBEV.4323M.pdf(590952 bytes )
`Exhibit 15 Reg No. 3434822-HANBEV.4323M.pdf(1140216 bytes )
`Exhibit 16 Reg No. 3134841-HANBEV.4323M.pdf(586752 bytes )
`Exhibit 17 Reg No. 4625118-HANBEV.4323M.pdf(1276700 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`
`/Jonathan Menkes/
`
`Name
`
`Date
`
`Diane M. Reed, Jonathan Menkes
`
`05/24/2016
`
`

`
`HANBEV.4323M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Opposition No.: ___________
`
`
`
`Serial No.: 86/566997
`
`Mark:
`
`) ) ) ) ) ) ) ) ) )
`
`
`)
`)
`
`
`MONSTER ENERGY COMPANY,
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`MOTORCYCLE TIRES & ACCESSORIES LLC ,
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Dear Sir:
`
`
`
`Monster Energy Company, a Delaware corporation, located and doing business at 1
`
`Monster Way, Corona, California 92879, (“Opposer”) believes that it will be damaged by the
`
`registration of U.S. Trademark Application Serial No. 86/566997 (“Application”) for the mark
`
` (“Applicant’s Mark”) filed by Motorcycle Tires & Accessories LLC,
`
`(“Applicant”) and therefore oppose the same.
`
`As grounds for opposition, it is alleged:
`
`
`
`
`
`- 1 -
`
`

`
`1.
`
`By the Application filed on March 17, 2015, Applicant seeks to obtain registration
`
`on the Principal Register of the trademark
`
` for “all terrain vehicle tires, tubes
`
`and rims; parts for all terrain vehicles namely, grab handles; structural parts for all terrain
`
`vehicles, namely, roofs, cab enclosures, doors, bed covers, fender flares and compartments for
`
`stereos and speakers; land vehicle parts, namely, tire chains, drink holders, vehicle parts, namely
`
`front spacers, wheel bearings, axles and cardan shafts for motor vehicles, drive belts, universal
`
`joints, cv joints, cv boot kit boxes, suspension springs, suspension kits comprising suspension
`
`springs and struts, gear shifts, clutch kits comprising clutches and clutch linings; vehicle parts,
`
`namely tie rod ends; vehicle parts, namely, ball joints; antenna toppers, namely, attachments to
`
`the tips of automobile antennas” in International Class 12, “Safety emblems in the nature of
`
`vehicle reflectors; light bars for vehicles, namely, for utility terrain vehicles; lights kits for
`
`vehicles comprising high intensity discharge (hid) lights” in Class 11, “Winches” in Class 7, and
`
`“Winch accessories in the nature of metal hooks; non-electric wire cables of common metals;
`
`metal tie downs” in Class 6, based on Applicant’s alleged use of the mark in interstate commerce
`
`since December 31, 2010.
`
`2.
`
`Since at least 2002, long before the filing date of the Application, Opposer has
`
`been, and still is, engaged in the development, licensing, marketing, and sale of energy drinks
`
`and other products bearing Opposer’s
`
` mark. Each can of Opposer’s energy drinks bears
`
`Opposer’s
`
` mark.
`
`
`
`- 2 -
`
`

`
`3.
`
`Opposer has also used and continues to use its famous
`
` mark extensively in
`
`connection with clothing, clothing accessories, stickers and decals, bags, sporting equipment,
`
`headgear, helmets, jewelry, wristbands, entertainment services, audio and video recordings, as well
`
`as many other goods and services, since well before the filing date and alleged first use date of the
`
`Application. Examples of some of Opposer’s products bearing Opposer’s
`
` mark are shown
`
`below:
`
`
`
`
`
`4.
`
`Since at least 2003, Opposer has and continues to extensively promote its
`
`
`
`mark in connection with motorsports events, including, but not limited to, stunt driving, Formula
`
`1 Racing, NASCAR, Motocross, MotoGP, Supercross, and desert racing, as shown below:
`
`- 3 -
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`- 4 -
`
`
`
`

`
`
`
`5.
`
`In addition, Opposer has and continues to widely market and promote its
`
` mark
`
`in the industry and to consumers by, for example, displaying the
`
` mark extensively on
`
`billions of cans; on apparel, merchandise, and on product samplings; on promotional and point of
`
`sale materials; through the sponsorship of music festivals, athletes, and sports events that are
`
`televised nationwide and internationally; in magazines and other industry publications; on the
`
`monsterenergy.com website, monsterarmy.com website and other Internet websites and social
`
`media sites; and at trade shows, concert tours and live events.
`
`6.
`
`Opposer’s famous
`
` mark is a global brand that has appeared on billions of
`
`products and in extensive nationwide promotions. As a result, Opposer has built up, at great expense
`
`and effort, valuable goodwill in its
`
` mark and has developed strong common law rights in
`
`Opposer’s
`
` mark. Opposer’s common law rights in its
`
` mark predate the filing date and
`
`alleged first use date of the Application, and Opposer relies on its common law trademark rights.
`
`
`
`- 5 -
`
`

`
`7.
`
`In addition to the protection afforded Opposer by its extensive common law rights,
`
`Opposer owns and relies on U.S. Trademark Registration 4,721,432 for the mark
`
` for
`
`“promoting goods and services in the sports, motorsports, electronic sports, and music industries
`
`through the distribution of printed, audio and visual promotional materials; promoting sports and
`
`music events and competitions for others” in International Class 35, which registration issued
`
`April 14, 2015 and is based on an application filed in the United States Patent and Trademark
`
`Office (“PTO”) on March 12, 2014. The filing date of Opposer’s ’432 Registration is prior to the
`
`filing date and alleged first use date of the Application. True and correct copies of the specifics
`
`of the ’432 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 1 and made of record.
`
`8.
`
`Opposer owns and relies on U.S. Trademark Registration 4,051,650 for the mark
`
` for “clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts, jackets,
`
`pants, bandanas, sweat bands and gloves; headgear, namely hats and beanies” in International
`
`Class 25, which registration issued November 8, 2011 and is based on an application filed in the
`
`PTO on July 28, 2010. The filing date of Opposer’s ’650 Registration is prior to the filing date
`
`and alleged first use date of the Application. True and correct copies of the specifics of the ’650
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 2 and made of record.
`
`9.
`
`Opposer owns and relies on the U.S. Trademark Registration 3,908,601 for the
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`mark
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` for “clothing, namely, t-shirts, hooded shirts and hooded sweatshirts, sweat shirts,
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`jackets, pants, bandanas, sweat bands and gloves; headgear, namely, hats and beanies” in
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`International Class 25, which registration issued January 18, 2011 and is based on an application
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`filed in the PTO on April 2, 2009. The filing date of Opposer’s ’601 Registration is prior to the
`
`filing date and alleged first use date of the Application. True and correct copies of the specifics
`
`of the ’601 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 3 and made of record.
`
`10.
`
`Opposer owns and relies on the U.S. Trademark Registration 3,914,828 for the
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`mark
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` for “sports helmets” in International Class 9, which registration issued February 1,
`
`2011 is based on an application filed in the PTO on April 2, 2009. The filing date of Opposer’s
`
`’828 Registration is prior to the filing date and alleged first use date of the Application. True
`
`and correct copies of the specifics of the ’828 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 4 and made of record.
`
`11.
`
`Opposer owns and relies on U.S. Trademark Registration 4,011,301 for the mark
`
` for “sports helmets; video recordings featuring sports, extreme sports, and motor sports” in
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`International Class 9, which registration issued August 16, 2011 and is based on an application
`
`filed in the PTO on July 27, 2010. The filing date of Opposer’s ’301 Registration is prior to the
`
`filing date and alleged first use date of the Application. True and correct copies of the specifics
`
`of the ’301 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 5 and made of record.
`
`12.
`
`Opposer owns and relies on U.S. Trademark Registration 3,908,600 for the mark
`
` for “stickers; sticker kits comprising stickers and decals; decals” in International Class 16,
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`which registration issued January 18, 2011 and is based on an application filed in the PTO on
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`April 2, 2009. The filing date of Opposer’s ’600 Registration is prior to the filing date and
`
`alleged first use date of the Application. True and correct copies of the specifics of the ’600
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 6 and made of record.
`
`13.
`
`Opposer owns and relies on U.S. Trademark Registration 3,923,683 for the mark
`
` for “all purpose sport bags; All-purpose carrying bags; Backpacks; Duffle bags” in
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`International Class 18, which registration issued February 22, 2011 and is based on an
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`application filed in the PTO on April 2, 2009. The filing date of Opposer’s ’683 Registration is
`
`prior to the filing date and alleged first use date of the Application. True and correct copies of
`
`the specifics of the ’683 Registration obtained from the PTO’s TESS and Assignment databases
`
`are attached hereto as Exhibit 7 and made of record.
`
`14.
`
`Opposer owns and relies on U.S. Trademark Registration 3,963,669 for the mark
`
` for “all purpose sport bags; all-purpose carrying bags; backpacks; duffel bags” in
`
`International Class 18, which registration issued May 17, 2011 and is based on an application
`
`filed in the PTO on July 28, 2010. The filing date of Opposer’s ’669 Registration is prior to the
`
`filing date and alleged first use date of the Application. True and correct copies of the specifics
`
`of the ’669 Registration obtained from the PTO’s TESS and Assignment databases are attached
`
`hereto as Exhibit 8 and made of record.
`
`15.
`
`Opposer owns and relies on U.S. Trademark Registration 3,963,668 for the mark
`
` for “stickers; sticker kits comprising stickers and decals; decals; posters” in International
`
`Class 16, which registration issued May 17, 2011 and is based on an application filed in the PTO
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`on July 28, 2010. The filing date of Opposer’s ’668 Registration is prior to the filing date and
`
`alleged first use date of the Application. True and correct copies of the specifics of the ’668
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 9 and made of record.
`
`16.
`
`Opposer owns and relies on U.S. Trademark Registration 4,332,062 for the mark
`
`for “silicone wrist bands; silicone bracelets; jewelry, namely, bracelets and
`
`wristbands” in International Class 14, which registration issued May 7, 2013 and is based on an
`
`application filed in the PTO on October 5, 2012. The filing date of Opposer’s ’062 Registration is
`
`prior to the filing date of the Application. True and correct copies of the specifics of the ’062
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 10 and made of record.
`
`17.
`
`Opposer owns and relies on U.S. Trademark Registration 4,822,675 for the mark
`
` for “lanyards; lanyards for holding whistles, keys, eyeglasses, sunglasses, mobile
`
`telephones, badges, identification cards, event passes, media passes, photographs, recording
`
`equipment, or similar conveniences” in International Class 22 which registration issued
`
`September 29, 2015 and is based on an application filed in the PTO on August 26, 2013. The
`
`filing date of Opposer’s ’675 Registration is prior to the filing date of the Application. True and
`
`correct copies of the specifics of the ’675 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 11 and made of record.
`
`18.
`
`Opposer owns and relies on U.S. Trademark Registration 4,660,598 for the mark
`
`for “lanyards; lanyards for holding whistles, keys, eyeglasses, sunglasses, mobile
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`telephones, badges, identification cards, event passes, media passes, photographs, recording
`
`equipment, or similar conveniences” in International Class 22 which registration issued
`
`December 23, 2014 and is based on an application filed in the PTO on August 26, 2013. The
`
`filing date of Opposer’s ’598 Registration is prior to the filing date of the Application. True and
`
`correct copies of the specifics of the ’598 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 12 and made of record.
`
`19.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 2,903,214
`
`for the mark
`
` for “drinks, namely, carbonated soft drinks, carbonated drinks enhanced with
`
`vitamins, minerals, nutrients, amino acids and/or herbs, carbonated and non-carbonated energy
`
`or sports drinks, fruit juice drinks having a juice content of 50% or less by volume that are shelf
`
`stable, but excluding perishable beverage products that contain fruit juice or soy, whether such
`
`products are pasteurized or not” in International Class 32, which registration issued November 11,
`
`2004 and is based on an application filed in the PTO on May 7, 2003. The filing date of Opposer’s
`
`’214 Registration is prior to the filing date and alleged first use date of the Application. True and
`
`correct copies of the specifics of the ’214 Registration obtained from the PTO’s TESS and
`
`Assignment databases are attached hereto as Exhibit 13 and made of record.
`
`20.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,434,821
`
`for the mark
`
` for “nutritional supplements” in International Class 5, which registration issued
`
`May 27, 2008 and is based on an application filed in the PTO on September 7, 2007. The filing
`
`date of Opposer’s ’821 Registration is prior to the filing date and alleged first use date of the
`
`Application. True and correct copies of the specifics of the ’821 Registration obtained from the
`
`PTO’s TESS and Assignment databases are attached hereto as Exhibit 14 and made of record.
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`21.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,434,822
`
`for the mark
`
` for “non-alcoholic beverages, namely, energy drinks, excluding perishable
`
`beverage products that contain fruit juice or soy” in International Class 32, which registration
`
`issued May 27, 2008 and is based on an application filed in the PTO on September 7, 2007. The
`
`filing date of Opposer’s ’822 Registration is prior to the filing date and alleged first use date of the
`
`Application. True and correct copies of the specifics of the ’822 Registration obtained from the
`
`PTO’s TESS and Assignment databases are attached hereto as Exhibit 15 and made of record.
`
`22.
`
`Opposer owns and relies on incontestable U.S. Trademark Registration 3,134,841
`
`for the mark
`
` for “beverages, namely, carbonated soft drinks, carbonated soft drinks
`
`enhanced with vitamins, minerals, nutrients, amino acids and/or herbs, carbonated energy and
`
`sports drinks, fruit juice drinks having a juice content of 50% or less by volume that are shelf
`
`stable, but excluding perishable beverage products that contain fruit juice or soy, whether such
`
`products are pasteurized or not” in International Class 32 which registration issued August 29,
`
`2006 and is based on an application filed in the PTO on May 7, 2003. The filing date of
`
`Opposer’s ’841 Registration is prior to the filing date and alleged first use date of the
`
`Application. True and correct copies of the specifics of the ’841 Registration obtained from the
`
`PTO’s TESS and Assignment databases are attached hereto as Exhibit 16 and made of record.
`
`23.
`
`Opposer owns and relies on U.S. Trademark Registration 4,625,118 for the mark
`
` for “dairy-based beverages; dairy-based energy shakes; energy shakes; coffee energy
`
`shakes; chocolate energy shakes” in International Class 29 and for “ready to drink tea and tea based
`
`beverages; ready to drink flavored tea, tea based beverages; ready to drink coffee and coffee based
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`- 11 -
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`beverages; ready to drink flavored coffee and coffee based beverages; ready to drink chocolate-
`
`based beverages” in International Class 30, which registration issued October 21, 2014 and is based
`
`on an application filed in the PTO on June 4, 2014. The filing date of Opposer’s ’118 Registration
`
`is prior to the filing date of the Application. True and correct copies of the specifics of the ’118
`
`Registration obtained from the PTO’s TESS and Assignment databases are attached hereto as
`
`Exhibit 17 and made of record.
`
`24.
`
`Opposer’s Registration Nos. 4,721,432, 4,051,650, 3,908,601, 3,914,828, 4,011,301,
`
`3,908,600,
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` 3,923,683, 3,963,669, 3,963,668, 4,332,062, 4,822,675, 4,660,598, 2,903,214,
`
`3,434,821, 3,434,822, 3,134,841, and 4,625,118 are valid, subsisting, unrevoked and uncancelled;
`
`as such they constitute prima facie evidence of the validity of the registered marks and of the
`
`registrations thereof, and of Opposer’s ownership of the marks shown therein. Opposer’s
`
`registrations also constitute notice to Applicant of Opposer’s claim of ownership of the marks
`
`shown therein as provided in Sections 7(b), 22 and 33(a) of the Trademark Act.
`
`25.
`
`Opposer’s Registration Nos. 2,903,214, 3,434,821, 3,434,822, and 3,134,841
`
`above are incontestable. As such, they constitute conclusive evidence of the validity of the
`
`registered marks and of the registration of the marks, of Opposer’s ownership of its marks, and of
`
`Opposer’s exclusive right to use the registered marks in commerce as provided in Section 33 of the
`
`Lanham Act, 15 U.S.C. § 1115.
`
`26.
`
`Since at least before the filing date of the Application, Opposer has continuously
`
`used and promoted the
`
` mark, including the marks shown in Registration Nos. 4,721,432,
`
`4,051,650, 3,908,601, 3,914,828, 4,011,301, 3,908,600, 3,923,683, 3,963,669, 3,963,668, 4,332,062,
`
`4,822,675, 4,660,598, 2,903,214, 3,434,821, 3,434,822, 3,134,841, and 4,625,118 in interstate
`
`commerce in connection with its goods and services, including the goods and services identified in
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`- 12 -
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`such Registrations. Opposer’s
`
` mark and related marks were well established and famous long
`
`before Applicant filed its Application for registration of Applicant’s Mark.
`
`27.
`
`Applicant seeks an unrestricted federal registration for
`
`
`
`covering the goods set forth in the Application in International Classes 6, 7, 11, and 12. As such, if
`
`a registration issues for the Application, such registration will constitute prima facie evidence of
`
`the Applicant’s exclusive right to use the registered mark in commerce on or in connection with
`
`these goods throughout the United States with no limitation thereon.
`
`28.
`
`Opposer will be damaged by registration of the Application in that the
`
` mark so resembles Opposer’s
`
` mark, including as registered in the United
`
`States Patent and Trademark Office, and in which Opposer owns common law trademark rights, as
`
`to be likely, when used on or in connection with the goods as they are identified in the Application,
`
`as to cause confusion, or to cause mistake or to deceive within the meaning of Section 2