Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1015121
`11/12/2019
`
`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
`
`Beyond Meat, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`11/10/2019
`
`1325 E. EL SEGUNDO
`EL SEGUNDO, CA 90245
`UNITED STATES
`
`THOMAS H. ZELLERBACH & KRISTIN S. CORNUELLE
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`2050 MAIN ST., SUITE 1100
`IRVINE, CA 92614
`UNITED STATES
`ipprosecution@orrick.com, tzellerbach@orrick.com, kcornuelle@orrick.com,
`mweddington@orrick.com
`5039434828
`
`Applicant Information
`
`Application No
`
`88189921
`
`Publication date
`
`05/14/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`11/12/2019
`
`Opposition Peri-
`od Ends
`
`11/10/2019
`
`Del Taco LLC
`25521 Comercentre Drive
`Lake Forest, CA 92630
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 030. First Use: 2018/09/20 First Use In Commerce: 2018/09/20
`All goods and services in the class are opposed, namely: Tacos
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4314689
`
`Registration Date
`
`04/02/2013
`
`Word Mark
`
`BEYOND MEAT
`
`Application Date
`
`04/24/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2012/05/29 First Use In Commerce: 2012/05/29
`Meat substitutes; vegetarian meat products; plant-based meat substitutes
`
`U.S. Registration
`No.
`
`4654351
`
`Registration Date
`
`12/09/2014
`
`Word Mark
`
`Design Mark
`
`BEYOND CHICKEN
`
`Application Date
`
`02/24/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2014/08/19 First Use In Commerce: 2014/08/19
`Meat substitutes; vegetarian meat products; plant-based meat substitutes
`
`U.S. Registration
`No.
`
`4654352
`
`Registration Date
`
`12/09/2014
`
`Word Mark
`
`Design Mark
`
`BEYOND BEEF
`
`Application Date
`
`02/24/2014
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2014/08/19 First Use In Commerce: 2014/08/19
`Meat substitutes; vegetarian meat products; plant-based meat substitutes
`
`U.S. Registration
`No.
`
`5101972
`
`Registration Date
`
`12/13/2016
`
`Word Mark
`
`Design Mark
`
`THE BEYOND BURGER
`
`Application Date
`
`02/24/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 029. First use: First Use: 2016/05/23 First Use In Commerce: 2016/05/23
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`U.S. Registration
`No.
`
`5499242
`
`Registration Date
`
`06/19/2018
`
`Application Date
`
`05/24/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`THE FUTURE OF PROTEIN BEYOND MEAT
`
`Description of
`Mark
`
`The mark consists of the words "THE FUTURE OF PROTEIN" directly above of
`a lineof dots which is directly above the word "BEYOND" with an image of a fork
`tinespointing upwards inside the "O" of "BEYOND" with the word "MEAT" and 10
`
`

`

`Goods/Services
`
`dots oneach side of "MEAT" below and centered of "BEYOND", all of which is
`contained within a geometric shape representing a sales tag.
`
`Class 029. First use: First Use: 2016/05/23 First Use In Commerce: 2016/05/25
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`U.S. Registration
`No.
`
`5504568
`
`Registration Date
`
`06/26/2018
`
`Word Mark
`
`Design Mark
`
`BEYOND SAUSAGE
`
`Application Date
`
`06/07/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 2017/12/18 First Use In Commerce: 2017/12/18
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512291
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BEYOND TURKEY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512293
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`BEYOND PORK
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512298
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BEYOND HAM
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512304
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`BEYOND CRAB
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512309
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BEYOND FISH
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512310
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`BEYOND SHRIMP
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512314
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BEYOND TUNA
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512318
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Word Mark
`
`BEYOND LAMB
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512323
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BEYOND GROUND
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87512332
`
`Application Date
`
`06/30/2017
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`BEYOND HOT DOGS
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`87960109
`
`Application Date
`
`06/13/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BEYOND NUGGETS
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Meat substitutes; vegan and vegetarian meat substitutes; plant-based meat sub-
`stitutes
`
`88164538
`
`Application Date
`
`10/22/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`GO BEYOND
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 029. First use: First Use: 2016/00/00 First Use In Commerce: 2019/02/00
`Meat substitutes; vegan and vegetarian meat products; plant-based meat substi-
`tutes
`
`85606344#TMSN.png( bytes )
`86202491#TMSN.png( bytes )
`86202495#TMSN.png( bytes )
`86918080#TMSN.png( bytes )
`87463132#TMSN.png( bytes )
`87479168#TMSN.png( bytes )
`87512291#TMSN.png( bytes )
`87512293#TMSN.png( bytes )
`87512298#TMSN.png( bytes )
`87512304#TMSN.png( bytes )
`87512309#TMSN.png( bytes )
`87512310#TMSN.png( bytes )
`87512314#TMSN.png( bytes )
`87512318#TMSN.png( bytes )
`87512323#TMSN.png( bytes )
`87512332#TMSN.png( bytes )
`87960109#TMSN.png( bytes )
`88164538#TMSN.png( bytes )
`Notice of Opposition BEYOND TACO.pdf(22358 bytes )
`
`Signature
`
`/Kristin S. Cornuelle/
`
`Name
`
`Date
`
`Kristin S. Cornuelle
`
`11/12/2019
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`
`v.
`
`
`
`
`
`
`
`
`In the Matter of Application Serial No. 88/189,921
`Published in the Official Gazette on May 14, 2019
`Designation: BEYOND TACO
`
`Beyond Meat, Inc.,
`
`
`
`
`
`Del Taco LLC,
`
`
`
`
`
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`Beyond Meat, Inc., (“Opposer”), a Delaware corporation having an address at 1325 E. El
`
`Segundo Boulevard, El Segundo, California, 90245, believes it will be damaged by registration
`
`of the designation BEYOND TACO as shown in Serial No. 88/189,921 in International Class 30
`
`and hereby opposes the same.
`
`As grounds for opposition, Opposer alleges:
`
`1.
`
`Del Taco LLC, (“Applicant”), has filed an application to register the designation
`
`BEYOND TACO as evidenced by the publication of such designation in the Official Gazette on
`
`May 14, 2019. Applicant is seeking to register the designation BEYOND TACO in connection
`
`with “tacos.”
`
`2.
`
`Applicant is, upon information and belief, a California limited company with an
`
`address at 25521 Commercentre Drive, Lake Forest, California, 92630.
`
`3.
`
`On information and belief, Applicant intends to use the designation BEYOND
`
`TACO in connection with tacos featuring vegetarian meat substitutes.
`
` 4139-4841-3472
`
`
`1
`
`

`

`
`
`4.
`
`Applicant’s application for the designation BEYOND TACO was published in the
`
`Official Gazette on May 14, 2019. Opposer has sought and has subsequently been granted
`
`Extensions of Time to Oppose Applicant’s application up to and including November 10, 2019.
`
`As November 10, 2019 was a Sunday, and November 11, 2019 was a federal holiday, Opposer’s
`
`Notice of Opposition is timely.
`
`5.
`
`Opposer is a leading provider of vegan and vegetarian meat substitutes in
`
`connection with its BEYOND family of marks. Opposer is the owner of the BEYOND MEAT
`
`mark and the BEYOND family of trademarks – BEYOND MEAT, BEYOND CHICKEN,
`
`BEYOND BEEF, THE BEYOND BURGER, BEYOND SAUSAGE and THE FUTURE OF
`
`PROTEIN BEYOND MEAT and Design (the “BEYOND family of marks”), which it has used in
`
`interstate commerce in connection with meat substitutes, vegan and vegetarian meat products and
`
`plant-based meat substitutes, since at least as early as 2012. Opposer has invested considerable
`
`resources in advertising and promoting its goods and has acquired substantial goodwill under the
`
`BEYOND MEAT trademark and the BEYOND family of marks.
`
`6.
`
`Opposer is the owner of U.S. Trademark Registration No. 4,314,689 for the
`
`trademark BEYOND MEAT for “Meat substitutes; vegan and vegetarian meat products; plant-
`
`based meat substitutes” in International Class 29. Opposer’s Registration 4,314,689 was filed on
`
`April 24, 2012 based on an intent to use and registered on April 2, 2013.
`
`7.
`
`Opposer is also the owner of U.S. Trademark Registration No. 4,654,351 for the
`
`trademark BEYOND CHICKEN for “Meat substitutes; vegan and vegetarian meat products;
`
`plant-based meat substitutes” in International Class 29. Opposer’s Registration No. 4,654,351
`
`was filed on February 24, 2014 based on an intent to use and registered on December 9, 2014.
`
`8.
`
`Opposer is also the owner of U.S. Trademark Registration No. 4,654,352 for the
`
`trademark BEYOND BEEF for “Meat substitutes; vegan and vegetarian meat products; plant-
`
`based meat substitutes” in International Class 29. Opposer’s Registration No. 4,654,352 was
`
`filed on February 24, 2014 based on an intent to use and registered on December 9, 2014.
`
` 4139-4841-3472
`
`
`2
`
`

`

`
`
`9.
`
`Opposer is also the owner of U.S. Trademark Registration No. 5,101,972 for the
`
`trademark THE BEYOND BURGER for “Meat substitutes; vegan and vegetarian meat products;
`
`plant-based meat substitutes” in International Class 29. Opposer’s Registration No. 5,101,972
`
`was filed on February 24, 2016 based on an intent to use and registered on December 13, 2016.
`
`10.
`
`Opposer is also the owner of U.S. Trademark Registration No. 5,499,242 for the
`
`trademark THE FUTURE OF PROTEIN BEYOND MEAT and Design for “Meat substitutes;
`
`vegan and vegetarian meat products; plant-based meat substitutes” in International Class 29.
`
`Opposer’s Registration No. 5,499,242 was filed on May 24, 2017 based on an intent to use and
`
`registered on June 19, 2018.
`
`11.
`
`Opposer is also the owner of U.S. Trademark Registration No. 5,504,568 for the
`
`trademark BEYOND SAUSAGE for “Meat substitutes; vegan and vegetarian meat products;
`
`plant-based meat substitutes” in International Class 29. Opposer’s Registration No. 5,504,568
`
`was filed on June 7, 2017 based on an intent to use and registered on June 26, 2018.
`
`12.
`
`Opposer’s Registration Nos. 4,314,689, 4,654,351, 4,654,352, 5,101,972,
`
`5,499,242 and 5,504,568 are valid and subsisting, and are prima facie evidence of the validity of
`
`the registered marks set forth therein, and of Opposer’s exclusive right to use the registered
`
`marks set forth therein.
`
`13.
`
`Opposer is also the owner of multiple U.S. trademark applications that pre-date
`
`Applicant’s filing date, including the following: BEYOND TURKEY, Serial No. 87/512,291,
`
`BEYOND PORK, Serial No. 87/512,293, BEYOND HAM, Serial No. 87/512,298, BEYOND
`
`CRAB, Serial No. 87/512,304, BEYOND FISH, Serial No. 87/512,309, BEYOND SHRIMP,
`
`Serial No. 87/512,310, BEYOND TUNA, Serial No. 87/512,314, BEYOND LAMB, Serial No.
`
`87/512,318, BEYOND GROUND, Serial No. 87/512,323, BEYOND HOT DOGS, Serial No.
`
`87/512,332, BEYOND NUGGETS, Serial No. 87/960,109 and GO BEYOND, Serial No.
`
`88/164,538.
`
` 4139-4841-3472
`
`
`3
`
`

`

`
`
`14.
`
`Opposer has offered its goods for sale under the BEYOND trademark in interstate
`
`commerce since at least as early as May 29, 2012 and has developed valuable goodwill with
`
`respect to the BEYOND family of marks.
`
`15. Opposer has made a substantial investment in advertising and promoting its
`
`BEYOND family of marks. Opposer has extensively used, advertised, promoted, offered, and
`
`rendered Opposer’s goods under the BEYOND mark to the public through various channels of
`
`trade in commerce. By virtue of its efforts and the expenditure of considerable sums for
`
`promotional and advertising activities, and by virtue of the excellence of its products, Opposer
`
`has built extensive goodwill in its BEYOND family of marks and has created, in the minds of the
`
`general public, an exclusive association between the BEYOND trademark and Opposer’s goods.
`
`16.
`
`Opposer has priority over Applicant’s application as Opposer has made actual use
`
`of the trademark BEYOND since at least as early as May 2012, which predates Applicant’s filing
`
`date of November 12, 2018. Indeed, all of Applicant’s claimed use in commerce dates are earlier
`
`than Applicant’s filing date. Furthermore, each of Opposer’s trademark registrations for the
`
`BEYOND family of marks were filed and registered prior to Applicant’s filing date of November
`
`12, 2018, and Opposer also has priority over Applicant’s application on that basis.
`
`17.
`
`The designation proposed for registration by Applicant, namely, BEYOND
`
`TACO, is likely to be confused with Opposer’s trademark, BEYOND MEAT, and its family of
`
`BEYOND marks, because Applicant’s designation and Opposer’s trademark are highly similar in
`
`appearance, sound, meaning and overall commercial impression.
`
`18. Moreover, Applicant seeks to register BEYOND TACO in connection with goods
`
`that are similar to the goods of Opposer, and such use so nearly resembles Opposer’s use as to be
`
`likely to cause confusion, to cause mistake or to deceive consumers as to the origin, sponsorship
`
`and approval of Applicant’s products and services within the meaning of 15 U.S.C. § 1052(d).
`
`19.
`
`Applicant’s goods sold in connection with the BEYOND TACO designation will
`
`likely travel in the same channels of trade as Opposer’s goods sold under the BEYOND MEAT
`
`trademark and BEYOND family of marks; and said goods will likely be purchased by the same
`
` 4139-4841-3472
`
`
`4
`
`

`

`
`
`class of consumers, thus causing consumers and the trade to wrongly associate Applicant’s goods
`
`with Opposer, and causing the purchasing public to assume that goods bearing the designation
`
`BEYOND TACO emanate from, or are approved, licensed, or sponsored by Opposer, have the
`
`same source as Opposer’s products, or that Applicant is affiliated with Opposer.
`
`20.
`
`If Applicant is permitted to use and register the BEYOND TACO designation for
`
`its goods as specified in the opposed application, confusion in trade resulting in damage and
`
`injury to Opposer would be caused and would result by reason of the fact that Applicant’s
`
`designation is confusingly similar to Opposer’s registered trademarks. Persons familiar with
`
`Opposer’s BEYOND MEAT mark and the BEYOND family of marks would be likely to
`
`purchase Applicant’s BEYOND TACO goods as goods offered and sold by Opposer. Indeed,
`
`any defect, objection, or fault found with Applicant’s goods marketed under the BEYOND
`
`TACO designation would be likely to reflect upon and seriously injure the reputation that
`
`Opposer has established for the high-quality goods expected by consumers and offered under its
`
`BEYOND MEAT mark and the BEYOND family of marks.
`
`21.
`
`If Applicant is granted the registration herein opposed, such registration would be
`
`a source of damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that the opposition be sustained, and that the application
`
`be refused for registration.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`
`
`/Kristin S. Cornuelle/
`
`By:
`
`Thomas H. Zellerbach
`Kristin S. Cornuelle
`Orrick, Herrington & Sutcliffe LLP
`Attorneys for Beyond Meat, Inc.
`2050 Main Street, Suite 1100
`Irvine, California 92614
`
`5
`
`
`
`
`
`
`
`
`Dated: November 12, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 4139-4841-3472
`
`
`

`

`
`
`
`
`
`
`
`4139-4841-3472
` 4139-4841-3472
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`