Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1125534
`04/07/2021
`
`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
`
`Entity
`
`Address
`
`Peloton Interactive, Inc.
`
`Corporation
`
`Citizenship
`
`Delaware
`
`125 WEST 25TH STREET, 11TH FLOOR
`NEW YORK, NY 10001
`UNITED STATES
`
`Attorney informa-
`tion
`
`LEO KITTAY
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10001
`UNITED STATES
`Primary Email: lkittay@fzlz.com
`Secondary Email(s): ddonahue@fzlz.com, skipen@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
`
`Docket Number
`
`PELI 2011082
`
`Applicant Information
`
`Application No.
`
`90195094
`
`Publication date
`
`03/09/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`04/07/2021
`
`Opposition Peri-
`od Ends
`
`04/08/2021
`
`Zhang, Haijuan
`213-216, BLDG D, QINGNIAN CHUANGYE PARK,
`NO. 18 JIANSHE EAST ROAD, LONGHUA DIST,
`SHENZHEN, 518109
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 025. First Use: 2020/09/13 First Use In Commerce: 2020/09/13
`All goods and services in the class are opposed, namely: Coats; Jumpers; Panties; Pants; Pyjamas;
`Shirts; Shoes; Skirts; Sweaters; Swimwear; T-shirts; Trousers; Bodies being underclothing; Knitwear,
`namely, shirts, dresses, sweaters; Masquerade costumes; Sports jerseys; Sports shoes; Swimming
`trunks
`
`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.
`
`5200495
`
`Application Date
`
`04/03/2015
`
`

`

`Registration Date
`
`05/09/2017
`
`Word Mark
`
`Design Mark
`
`PELOTON
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 014. First use: First Use: 2016/12/00 First Use In Commerce: 2016/12/00
`Silicone wristbands in the nature of a bracelet
`Class 018. First use: First Use: 2014/04/22 First Use In Commerce: 2014/04/22
`All purpose sport bags
`Class 025. First use: First Use: 2014/04/22 First Use In Commerce: 2014/04/22
`Sports apparel, namely, shirts, leggings, sleeveless tops, t-shirts, tank
`tops,sports bras, pullovers; headwear, namely, beanies; Sports apparel, namely,
`shorts, exercise tights, tops, jackets; bandanas, shoes, hats
`
`U.S. Registration
`No.
`
`5202624
`
`Registration Date
`
`05/16/2017
`
`Word Mark
`
`Design Mark
`
`PELOTON
`
`Application Date
`
`09/02/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2013/08/06 First Use In Commerce: 2013/08/06
`Retail store services in the fields of sports apparel, fitness equipment, and fit-
`ness classes; On-line retail store services in the fields of fields of sports apparel,
`fitness equipment, and fitness classes
`
`U.S. Registration
`No.
`
`5810555
`
`Registration Date
`
`07/23/2019
`
`Application Date
`
`06/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`PELOTON
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 014. First use: First Use: 2015/05/00 First Use In Commerce: 2015/05/00
`Jewelry
`Class 016. First use: First Use: 2017/03/00 First Use In Commerce: 2017/03/00
`Decals
`Class 045. First use: First Use: 2012/08/00 First Use In Commerce: 2012/08/00
`Online social networking services
`
`U.S. Registration
`No.
`
`4580888
`
`Registration Date
`
`08/05/2014
`
`Word Mark
`
`Design Mark
`
`PELOTON
`
`Application Date
`
`11/09/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2014/04/25 First Use In Commerce: 2014/04/25
`Computers and downloadable software formonitoring and analyzing various
`parameters associated with the operation of a bicycle or exercise cycle and for
`fitness training; ear phones; digital media, namely, downloadable audio and au-
`diovisual recordings, all in the field of exercise, fitness, wellness and personal
`development; downloadable software in the nature of an application for use by
`individuals participating in exercise classes, physical training, and exercise in-
`struction for detecting, storing and reportingdaily human energy expenditure and
`physical activity level, for developing and monitoring personal activity and exer-
`cise plans, training goals and giving feedback on the achieved results
`Class 028. First use: First Use: 2014/01/22 First Use In Commerce: 2014/01/22
`Stationary exercise bicycles and component parts thereof, namely, bicycle seat-
`sand bicycle pedals; exercise weights; stationary bicycles equipped with inter-
`active computer systems, video players [, and body bars ]
`
`

`

`Class 038. First use: First Use: 2014/05/13 First Use In Commerce: 2014/05/13
`Streaming of audio and video materials on the Internet featuring physical fitness
`classes, training, and instruction
`Class 041. First use: First Use: 2014/05/01 First Use In Commerce: 2014/05/01
`Providing classes, workshops and seminars in the fields of fitness and exercise;
`providing fitness and exercise facilities; physical fitness instruction and consulta-
`tion; physical fitness conditioning classes; physical fitness training services
`providing a website featuring information on exercise and physical fitnessac-
`cessible through a global computer network and mobile devices
`
`U.S. Registration
`No.
`
`5997798
`
`Registration Date
`
`02/25/2020
`
`Word Mark
`
`Design Mark
`
`PELOTON
`
`Application Date
`
`06/18/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2018/10/00 First Use In Commerce: 2018/10/00
`Heart rate monitors
`Class 021. First use: First Use: 2019/12/00 First Use In Commerce: 2019/12/00
`Water bottles sold empty
`
`Attachments
`
`86586930#TMSN.png( bytes )
`86745691#TMSN.png( bytes )
`88003867#TMSN.png( bytes )
`85775447#TMSN.png( bytes )
`88004649#TMSN.png( bytes )
`Notice of Opposition - PELOLION.pdf(34069 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Leo Kittay/
`
`Leo Kittay
`
`04/07/2021
`
`

`

`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PELOTON INTERACTIVE, INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`-against-
`
`
`
`
`
`
`
`
`HAIJUAN ZHANG,
`
`
`
`
`
`
`
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Peloton Interactive, Inc. (“Opposer”) believes that it will be damaged by the issuance of a
`
`registration for the mark PELOLION to an individual named Haijuan Zhang (“Applicant”) in
`
`International Class 25 as applied for in Application Serial No. 90195094 (the “Application”) and
`
`therefore opposes the same pursuant to Section 13(a) of the Lanham Trademark Act of 1946, 15
`
`U.S.C. § 1063(a).
`
`
`
`As grounds therefore, Opposer alleges as follows:
`
`1.
`
`Opposer offers and sells innovative fitness equipment, clothing, streaming
`
`instructional content and an interactive community experience under the PELOTON mark
`
`(collectively, the “PELOTON Mark”) to bring studio-style workouts to its members at home.
`
`Opposer has enjoyed remarkable success. With more than one hundred showrooms across the
`
`country, over 4.4 million members, and many millions of dollars in annual sales, Opposer and its
`
`PELOTON Mark have captured the attention of the fitness industry and achieved widespread
`
`renown.
`
`2.
`
`Opposer has extensively used and promoted its PELOTON Mark in connection
`
`{F3965004.2 }
`
`
`
`

`

`with a variety of goods and services, including clothing, fitness equipment and classes, water
`
`bottles and other fitness-related goods and services.
`
`3.
`
`Opposer also offers an innovative downloadable software application (the
`
`PELOTON App) for use on mobile devices, including without limitation smartphones, which
`
`allows users to stream fitness classes and purchase PELOTON products. Since 2018, the
`
`PELOTON App has been downloaded by users more than 10 million times in the U.S. and more
`
`than 11 million times worldwide and has earned impressive ratings from users.
`
`4.
`
`Through its extensive promotion and use, and the success of Opposer’s offerings,
`
`Opposer has developed strong trademark rights and enormous goodwill in the PELOTON Mark
`
`in connection with the above-referenced goods and services.
`
`5.
`
`Long before any date upon which Applicant can rely, Opposer’s PELOTON Mark
`
`became uniquely identified with Opposer and came to identify the goods and services of Opposer
`
`exclusively.
`
`6.
`
`Opposer owns numerous U.S. trademark registrations for the PELOTON Mark
`
`for a wide variety of goods and services including but not limited to the following:
`
` U.S. Reg. No. 5200495 for “Silicone wristbands in the nature of a bracelet” in
`International Class 14; “All purpose sport bags” in International Class 18; and
`“Sports apparel, namely, shirts, leggings, sleeveless tops, t-shirts, tank tops,
`sports bras, pullovers; headwear, namely, beanies; Sports apparel, namely,
`shorts, exercise tights, tops, jackets; bandanas, shoes, hats” in International
`Class 25;
`
` U.S. Reg. No. 5202624 for “Retail store services in the fields of sports apparel,
`fitness equipment, and fitness classes; On-line retail store services in the fields
`of fields of sports apparel, fitness equipment, and fitness classes” in
`International Class 35;
`
` U.S. Reg. No. 5810555 for “Jewelry” in International Class 14; “Decals” in
`International Class 16; and “Online social networking services” in International
`Class 41;
`
`
`
`
`
`{F3965004.2 }
`
`2
`
`

`

` U.S. Reg. No. 4580888 for “Computers and downloadable software for
`monitoring and analyzing various parameters associated with the operation of
`a bicycle or exercise cycle and for fitness training; ear phones; digital media,
`namely, downloadable audio and audiovisual recordings, all in the field of
`exercise, fitness, wellness and personal development; downloadable software
`in the nature of an application for use by individuals participating in exercise
`classes, physical training, and exercise instruction for detecting, storing and
`reporting daily human energy expenditure and physical activity level, for
`developing and monitoring personal activity and exercise plans, training goals
`and giving feedback on the achieved results” in International Class 9;
`“Stationary exercise bicycles and component parts thereof, namely, bicycle
`seats and bicycle pedals; exercise weights; stationary bicycles equipped with
`interactive computer systems, video players, and body bars” in International
`Class 28; “Streaming of audio and video materials on the Internet featuring
`physical fitness classes, training, and instruction” in International Class 38; and
`“Providing classes, workshops and seminars in the fields of fitness and exercise;
`providing fitness and exercise facilities; physical fitness instruction and
`consultation; physical fitness conditioning classes; physical fitness training
`services providing a website featuring information on exercise and physical
`fitness accessible through a global computer network and mobile devices” in
`International Class 41; and
`
` U.S. Reg. No. 5997798 for “Heart rate monitors” in International Class 10 and
`“Water bottles sold empty” in International Class 21.
`
`
`
`
`
`7.
`
`All of the registrations for the PELOTON Mark relied upon herein are valid,
`
`subsisting and in full effect and serve as prima facie evidence of the validity of the mark and of
`
`Opposer’s exclusive right to use the mark in connection with the goods and services identified
`
`therein, pursuant to Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(a).
`
`8.
`
`Upon information and belief, Applicant is an individual with Chinese citizenship
`
`with an address of 213-216, Bldg D, Qingnian Chuangye Park, No. 18 Jianshe East Road,
`
`Longhua Dist, Shenzhen China 518109.
`
`9.
`
`On September 20, 2020, Applicant filed the Application to register the mark
`
`PELOLION (“Applicant’s Mark”) for “Coats; Jumpers; Panties; Pants; Pyjamas; Shirts; Shoes;
`
`Skirts; Sweaters; Swimwear; T-shirts; Trousers; Bodies being underclothing; Knitwear, namely,
`
`shirts, dresses, sweaters; Masquerade costumes; Sports jerseys; Sports shoes; Swimming trunks”
`
`{F3965004.2 }
`
`3
`
`

`

`in International Class 25, pursuant to Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a) based
`
`on a claimed first use in commerce on September 13, 2020.
`
`10.
`
`Applicant is not associated with Opposer is any way and has not been authorized
`
`by Opposer to use Applicant’s Mark.
`
`11.
`
`Upon information and belief, Opposer’s rights in the PELOTON Mark in the
`
`United States pre-exist any date on which Applicant can rely for its claim of rights in Applicant’s
`
`Mark.
`
`12.
`
`Applicant’s Mark is highly similar to Opposer’s PELOTON Mark in sight, sound,
`
`and commercial impression.
`
`13.
`
`The goods identified in the Application are overlapping with and closely related
`
`to the goods and services offered by Opposer under the PELOTON Mark.
`
`14.
`
`Based on the similarity of the marks and the similarity of Applicant’s goods to
`
`Opposer’s goods and services, consumers are likely to be deceived into falsely believing that the
`
`goods offered by Applicant under Applicant’s Mark originate from or are otherwise associated
`
`with or endorsed by Opposer, or that there is some relationship between Applicant and Opposer
`
`or the goods of Applicant and the goods and services of Opposer, all to Opposer’s injury and
`
`harm.
`
`15.
`
`Thus, registration of Applicant’s Mark in connection with the goods set forth in
`
`the Application is likely to cause confusion, cause mistake, or to deceive the public into the false
`
`belief that the goods offered by Applicant under Applicant’s Mark come from or are otherwise
`
`sponsored by or connected with Opposer, in violation of Section 2(d) of the Lanham Act, 15
`
`U.S.C. § 1052(d).
`
`{F3965004.2 }
`
`4
`
`

`

`16.
`
`By reason of the foregoing, Applicant is not entitled to register Applicant’s Mark,
`
`and Opposer is likely to be harmed by the registration of the Application.
`
`THEREFORE, it is respectfully requested that this Opposition be sustained and that
`
`registration of the mark shown in the Application be refused in its entirety. Opposer authorizes
`
`the Board to withdraw from Opposer’s USPTO debit account no. 230825 any additional fees as
`
`may be required for this Opposition.
`
`Dated: New York, New York
`
`April 7, 2021
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`
`
`
`By:____ ____________________
` Leo Kittay
` David Donahue
` Sydney Kipen
`151 West 42nd, 17th Floor
`New York, New York 10036
`Tel: (212) 813-5900
`Email: lkittay@fzlz.com
` ddonahue@fzlz.com
`
`skipen@fzlz.com
`
`
`Attorneys for Opposer
`
`
`
`
`{F3965004.2 }
`
`5
`
`