Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1136143
`05/25/2021
`
`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
`
`Attorney informa-
`tion
`
`Monster Energy Company
`05/26/2021
`
`1 MONSTER WAY
`CORONA, CA 92879
`UNITED STATES
`
`DAVID O'HAIR
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN ST, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`Primary Email: efiling@knobbe.com
`Secondary Email(s): MEC.TTAB@knobbe.com
`(949) 760-0404
`
`Docket Number
`
`HANB.12798M
`
`Applicant Information
`
`Application No.
`Opposition Filing
`Date
`Applicant
`
`90231269
`05/25/2021
`
`Publication date
`Opposition Peri-
`od Ends
`
`01/26/2021
`05/26/2021
`
`Blue Master Holdings Limited
`ROOM 3603, LEVEL 36, TOWER 1
`ENTERPRISE SQUARE 5, 38 WANG CHIU ROAD
`KOWLOON, HONG KONG, 00000
`HONG KONG
`
`Goods/Services Affected by Opposition
`
`Class 021. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Water bottles sold empty
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: T-shirts; Vests; Caps being headwear
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`Other
`
`Trademark Act Section 2(d)
`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.
`Registration Date
`
`5889011
`
`10/22/2019
`
`Word Mark
`Design Mark
`
`M
`
`Application Date
`
`01/16/2019
`
`Foreign Priority
`Date
`
`NONE
`
`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: 2002/06/30 First Use In Commerce: 2002/06/30
`Cameras; headphones; audio speakers; wireless speakers; sunglasses; eye-
`wear; cases for sunglasses and eyewear; smart watch; wearable activity track-
`ers; sports helmets; video recordings featuring sports, extreme sports, and mo-
`tor sports; downloadable software for mobile devices for playing games; down-
`loadable electronic game software for use on mobile devices; downloadable
`game software; downloadable interactive game programs; downloadable video
`game software and programs; sports gloves, namely, protective work gloves in
`the nature of mechanics' gloves
`Class 014. First use: First Use: 2006/12/00 First Use In Commerce: 2006/12/00
`Silicone wristbands in the nature of bracelets; silicone bracelets; jewelry; jew-
`elry, namely, bracelets and wristbands;lanyard necklace; watches
`Class 020. First use: First Use: 2017/12/02 First Use In Commerce: 2017/12/02
`Furniture; chairs; gaming chair
`Class 021. First use: First Use: 2005/01/00 First Use In Commerce: 2005/01/00
`Beverageware; insulated beverage containers for domestic use; heat-insulated
`containers for beverages; bottles, sold empty; drinking bottles for sports; water
`bottles sold empty; bottle openers; non-electric portable coolers; non-electric
`portable beverage coolers; shaker bottles sold empty; blender bottles sold
`empty; sports gloves, namely, work gloves in the nature of mechanics' gloves
`Class 024. First use: First Use: 2003/07/00 First Use In Commerce: 2003/07/00
`Towels; blankets for outdoor use
`Class 028. First use: First Use: 2011/12/08 First Use In Commerce: 2011/12/08
`
`

`

`Toy cars; remote control toys, namely, cars; cornhole game sets; cornhole game
`boards; cornhole bags; surf boards; skate boards; snowboards; boxing gloves;
`mixed martial arts gloves; golf bags; punching bags; resistance bands for exer-
`cise;video game interactive remote control units; video game controller joystick,
`thumbstick and control-pad extensions
`Class 041. First use: First Use: 2003/08/19 First Use In Commerce: 2003/08/19
`Entertainment services, namely, providing online video games and providing
`temporary use of non-downloadable video games, computer games, electronic
`games, andinteractive games; sponsoring tournaments and arranging contests
`featuring online gaming; providing a web-based system and on-line portal for
`customers to participate in online gaming operation, and coordination of game
`tournaments, leagues, and tours for recreational computer game playing pur-
`poses; entertainment services, namely, providing a website for online gaming;
`providing a website featuring information about online gaming and online gam-
`ing professionals; entertainment services in the nature of sporting events, per-
`formances and competitions, electronic sporting events and competitions,and
`music performances and events; providing a web site featuring entertainmentin-
`formation and news on athletes; organizing and conducting educational pro-
`grams and activities in the nature of classes, workshops, and sports competi-
`tions for athletes in the field of athlete development; athlete development pro-
`gram, namely, athlete training and mentoring in the field of wake, ski, surf, snow-
`board, motocross, mountain bike, BMX, and skate
`Class 043. First use: First Use: 2013/03/00 First Use In Commerce: 2013/03/00
`Bar services; café services; coffee bars; mobile restaurant services; restaurant
`services; mobile café services for providing food and drink
`
`U.S. Registration
`No.
`Registration Date
`
`4051650
`
`11/08/2011
`
`Word Mark
`Design Mark
`
`M
`
`Application Date
`
`07/28/2010
`
`Foreign Priority
`Date
`
`NONE
`
`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.
`Registration Date
`
`5580962
`
`10/09/2018
`
`Word Mark
`Design Mark
`
`M
`
`Application Date
`
`05/17/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a green letter "M"in the form of a claw on a black back-
`ground.
`Class 005. First use: First Use: 2002/03/27 First Use In Commerce: 2002/03/27
`Nutritional supplements; nutritional supplements for purposes of boosting en-
`ergy; dietary supplemental drinks in the nature of vitamin beverages
`Class 009. First use: First Use: 2002/06/30 First Use In Commerce: 2002/06/30
`Sport helmets; video recordings featuring sports, extreme sports and motor
`sports
`Class 014. First use: First Use: 2010/01/14 First Use In Commerce: 2010/01/14
`Silicone wristbands in the nature of bracelets; silicone bracelets; jewelry,
`namely, bracelets and wristbands; lanyard necklace; watches
`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; calendars
`Class 018. First use: First Use: 2002/05/24 First Use In Commerce: 2002/05/24
`All-purpose sport bags; all-purpose carrying bags; backpacks; duffel bags
`Class 025. First use: First Use: 2002/05/24 First Use In Commerce: 2002/05/24
`Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts; sweat
`shirts,jackets, pants, bandanas, sweat bands, gloves and motorcycle gloves;
`headgear, namely, hats and beanies
`Class 032. First use: First Use: 2002/03/27 First Use In Commerce: 2002/03/27
`Non-alcoholic beverages, namely, energydrinks, sports drinks, and sports and/or
`energy drinks enhanced with vitamins, minerals, nutrients, amino acids and/or
`
`

`

`herbs
`
`5664586
`
`01/29/2019
`
`M MONSTER ENERGY
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Application Date
`
`12/04/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw above the words
`"MONSTER ENERGY".
`Class 021. First use: First Use: 2010/01/00 First Use In Commerce: 2010/01/00
`Beverageware; insulated beverage containers for domestic use; drinking bottles
`for sports; water bottles sold empty
`
`U.S. Registration
`No.
`Registration Date
`
`3908601
`
`01/18/2011
`
`Word Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`04/02/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`Registration Date
`
`5570782
`
`09/25/2018
`
`Word Mark
`Design Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`05/17/2018
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a stylized letter "M" in the form of a claw displayed in green
`above the stylized word "MONSTER" which appears in the color white with a sil-
`ver outline, which is above the word "ENERGY" which appears in the color
`green, all on a black background.
`Class 009. First use: First Use: 2002/06/30 First Use In Commerce: 2002/06/30
`Sport helmets; video recordings featuring sports, extreme sports and motor
`sports
`Class 014. First use: First Use: 2010/06/30 First Use In Commerce: 2010/06/30
`Watches
`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; calendars
`Class 018. First use: First Use: 2002/05/24 First Use In Commerce: 2002/05/24
`All-purpose sport bags; all-purpose carrying bags; backpacks; duffel bags
`Class 025. First use: First Use: 2002/05/24 First Use In Commerce: 2002/05/24
`Clothing, namely, t-shirts, hooded shirts and hooded sweatshirts; sweat
`shirts,jackets, pants, bandanas, sweat bands, gloves and motorcycle gloves;
`headgear, namely, hats and beanies
`
`U.S. Registration
`No.
`Registration Date
`
`4625118
`
`10/21/2014
`
`Word Mark
`Design Mark
`
`M
`
`Application Date
`
`06/04/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`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
`
`U.S. Registration
`No.
`Registration Date
`
`2903214
`
`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.
`Registration Date
`
`3134841
`
`08/29/2006
`
`Word Mark
`
`M MONSTER ENERGY
`
`Application Date
`
`05/07/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`Registration Date
`
`5944737
`
`12/24/2019
`
`Word Mark
`
`M HYDRO BLUE ICE
`
`Application Date
`
`11/08/2017
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a 3D drawing of a stylized letter "M" in the form of a claw
`with the word "HYDRO" on the right side and "BLUE ICE" underneath "HYDRO".
`Class 032. First use: First Use: 2018/02/00 First Use In Commerce: 2018/02/00
`non-alcoholic beverages, namely, non-carbonated sports drinks, non-
`carbonated flavored waters, and non-carbonated energy drinks, excluding beer
`
`U.S. Registration
`No.
`Registration Date
`
`6111996
`
`07/28/2020
`
`Word Mark
`Design Mark
`
`M
`
`Application Date
`
`11/25/2019
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`Goods/Services
`
`The mark consists of a dragon design and stylized letter "M" in the form of claw.
`
`Class 016. First use: First Use: 2019/08/29 First Use In Commerce: 2019/08/29
`Stickers
`Class 025. First use: First Use: 2019/05/01 First Use In Commerce: 2019/05/01
`tops as clothing; shirts
`Class 030. First use: First Use: 2019/02/00 First Use In Commerce: 2019/02/00
`Tea; iced tea; tea based beverages; ready to drink tea; ready to drink
`flavoredtea
`Class 032. First use: First Use: 2019/02/00 First Use In Commerce: 2019/02/00
`Non-alcoholic beverages, namely, soft drinks, energy drinks, sports drinks, and-
`beverages flavored with tea
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`5813698
`
`07/23/2019
`
`M HYDRO
`
`Application Date
`
`01/16/2019
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a 3D drawing of a stylized letter "M" in the form of a claw to
`the left of the word "HYDRO".
`Class 025. First use: First Use: 2017/12/15 First Use In Commerce: 2017/12/15
`Tops being clothing; shirts; t-shirts
`
`U.S. Registration
`No.
`Registration Date
`
`5551230
`
`08/28/2018
`
`Word Mark
`
`M MONSTER ARMY
`
`Application Date
`
`02/12/2016
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`The mark consists of a bird with outspread wings with a shield over its chest
`bearing a stylized letter "M" with the word "MONSTER ARMY" written between
`two five-pointed stars on a ribbon below the shield. The bottom of the bird and
`three five-pointed starts appear below the ribbon.
`Class 025. First use: First Use: 2010/05/00 First Use In Commerce: 2010/05/00
`Clothing, namely, tops, shirts, T-shirts, hooded shirts, sweat shirts, and jackets
`Class 041. First use: First Use: 2005/05/00 First Use In Commerce: 2005/05/00
`Providing a web site featuring entertainment information and news on athletes;
`organizing and conducting educational programs and activities in the nature of
`classes, workshops, and sports competitions for athletes in the field of athlete
`development; athlete development program, namely, athlete training and ment-
`oringin the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX,
`and skate
`
`88264393#TMSN.png( bytes )
`85094362#TMSN.png( bytes )
`87926413#TMSN.png( bytes )
`87707552#TMSN.png( bytes )
`77705822#TMSN.png( bytes )
`87926415#TMSN.png( bytes )
`86300585#TMSN.png( bytes )
`78246564#TMSN.png( bytes )
`78246567#TMSN.png( bytes )
`87676857#TMSN.png( bytes )
`88706270#TMSN.png( bytes )
`88264727#TMSN.png( bytes )
`86906378#TMSN.png( bytes )
`2021-05-25 Final Notice of Opposition - 90231269 - HANB.12798M.pdf(597094
`bytes )
`NOP Exhibits 1-13 - HANB.12798M.pdf(4046702 bytes )
`
`Signature
`Name
`
`/David O'Hair/
`David O'Hair
`
`

`

`Date
`
`05/25/2021
`05/25/2021
`
`

`

`HANB.12798M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Opposition No.: ___________
`
`Serial No: 90/231269
`
`Mark:
`
`
`
`) ) ) ) ) ) ) )
`
`
`)
`
`) ) ) )
`
`
`
`Opposer,
`
`
`
`v.
`
`
`MONSTER ENERGY COMPANY,
`
`
`
`
`
`BLUE MASTER HOLDINGS LIMITED,
`
`
`
`
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`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. 90/231269 (the “Application”) for the
`
`mark
`
` (“Applicant’s Mark”) filed by Blue Master Holdings Limited (“Applicant”)
`
`and therefore opposes the same.
`
`As grounds for opposition, it is alleged:
`
`- 1 -
`
`

`

`1.
`
`By the Application filed on October 2, 2020, Applicant seeks to obtain a registration
`
`on the Principal Register of
`
`for the goods as set forth below (“Applicant’s Goods”),
`
`based on Applicant’s alleged intent to use Applicant’s Mark in interstate commerce in connection
`
`with Applicant’s Goods:
`
`Goods
`
`Class 21: Water bottles sold empty
`
`Class 25: T-shirts; Vests; Caps being headwear
`
`
`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, distribution, and/or sale of
`
`beverages, beverageware, bags, clothing, accessories and other goods under the marks
`
`MONSTER™ and MONSTER ENERGY®, and related marks, the “M Claw” design. Opposer’s
`
`family of Claw Marks includes, for example, the following:
`
`®,
`
`®,
`
`®,
`
`®,
`
`®,
`
`®, and
`
`®
`
`(hereinafter
`
`collectively the “Claw Marks”).
`
`3.
`
`Since long before the filing date of the Application, Opposer has used and continues
`
`to use its famous Claw Marks extensively in connection with beverage ware, water bottles, bags,
`
`- 2 -
`
`

`

`clothing, head ware, gloves, headwear, motorized vehicle parts and components, automotive tools,
`
`accessories, toy cars, stickers, decals, sunglasses, notebooks, posters, videogames, as well as many
`
`other goods and services. Examples of some of Opposer’s products bearing Opposer’s Claw Marks
`
`are shown below:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 3 -
`
`

`

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

`

`
`
`
`
`1'9. ITIL-IEH"
`
`‘z-NERG-
`
`
`M w 511“
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`- 5 -
`
`

`

`
`
`
`
`
`
`- 6 -
`
`

`

`4.
`
`There is a large demand for goods bearing Opposer’s Claw Marks. For example,
`
`Opposer has entered into license agreements with several manufacturers, giving them a license to
`
`produce and sell clothing, gloves, headwear, other clothing accessories, and other products that
`
`bear Opposer’s Claw Marks. In the United States, Opposer’s licensees have sold licensed goods
`
`bearing Opposer’s Claw Marks to consumers through their own websites and through nationwide
`
`retailers. Those nationwide retailers have also sold Opposer’s licensed goods bearing Opposer’s
`
`Claw Marks through their own websites.
`
`5.
`
`In addition, Opposer has and continues to widely market and promote its Claw
`
`Marks to consumers by, for example, displaying the marks prominently and extensively on
`
`billions of cans; on product samplings; on promotional and point of sale materials; in magazines
`
`and other industry publications; and on the monsterenergy.com website, monsterarmy.com
`
`website, and other Internet websites and social media sites.
`
`6.
`
`Opposer’s Claw Marks have appeared on billions of products and in extensive
`
`nationwide promotions. By virtue of Opposer’s continuous and substantial use, Opposer has built
`
`up, at great expense and effort, valuable goodwill in its family of Claw Marks and has developed
`
`strong common law rights in the marks. Opposer’s common law rights in its family of Claw Marks
`
`predate the filing date of the Application and Opposer relies on its common law trademark rights.
`
`7.
`
`In addition to Opposer’s common law rights, Opposer owns and relies on the
`
`following registrations:
`
`
`
`
`
`
`
`
`
`- 7 -
`
`

`

`Filing Date Registration
`Date
`
`1/16/2019
`
`10/22/2019
`
`Listed First
`Use in
`Commerce
`Date
`CL. 9
`6/30/2002
`
`CL. 14
`12/2006
`
`CL. 20
`12/02/2017
`
`CL. 21
`1/2005
`
`CL. 24
`7/2003
`
`CL. 28
`12/08/2011
`
`CL. 41
`8/19/2003
`
`CL. 43
`3/2013
`
`Registration
`No.
`
`5,889,011
`
`Mark
`
`Goods/Services
`
`®
`
`CL. 9 Cameras;
`headphones; audio
`speakers; wireless
`speakers; sunglasses;
`eyewear; cases for
`sunglasses and eyewear;
`smart watch; wearable
`activity trackers; sports
`helmets; video recordings
`featuring sports, extreme
`sports, and motor sports;
`downloadable software
`for mobile devices for
`playing games;
`downloadable electronic
`game software for use on
`mobile devices;
`downloadable game
`software; downloadable
`interactive game
`programs; downloadable
`video game software and
`programs; sports gloves,
`namely, protective work
`gloves in the nature of
`mechanics' gloves.
`CL. 14 Silicone
`wristbands in the nature
`of bracelets; silicone
`bracelets; jewelry;
`jewelry, namely,
`bracelets and wristbands;
`lanyard necklace;
`watches.
`CL. 20 Furniture; chairs;
`gaming chair.
`CL. 21 Beverageware;
`insulated beverage
`containers for domestic
`use; heat-insulated
`containers for beverages;
`bottles, sold empty;
`drinking bottles for
`sports; water bottles sold
`empty; bottle openers;
`non-electric portable
`coolers; non-electric
`portable beverage
`
`- 8 -
`
`

`

`Registration
`No.
`
`Mark
`
`Goods/Services
`
`Filing Date Registration
`Date
`
`Listed First
`Use in
`Commerce
`Date
`
`coolers; shaker bottles
`sold empty; blender
`bottles sold empty; sports
`gloves, namely, work
`gloves in the nature of
`mechanics' gloves.
`CL. 24 Towels; blankets
`for outdoor use.
`CL. 28 Toy cars; remote
`control toys, namely,
`cars; cornhole game sets;
`cornhole game boards;
`cornhole bags; surf
`boards; skate boards;
`snowboards; boxing
`gloves; mixed martial arts
`gloves; golf bags;
`punching bags; resistance
`bands for exercise; video
`game interactive remote
`control units; video game
`controller joystick,
`thumbstick and control-
`pad extensions.
`CL. 41 Entertainment
`services, namely,
`providing online video
`games and providing
`temporary use of non-
`downloadable video
`games, computer games,
`electronic games, and
`interactive games;
`sponsoring tournaments
`and arranging contests
`featuring online gaming;
`providing a web-based
`system and on-line portal
`for customers to
`participate in online
`gaming operation, and
`coordination of game
`tournaments, leagues, and
`tours for recreational
`computer game playing
`purposes; entertainment
`services, namely,
`providing a website for
`
`- 9 -
`
`

`

`Registration
`No.
`
`Mark
`
`Goods/Services
`
`Filing Date Registration
`Date
`
`Listed First
`Use in
`Commerce
`Date
`
`online gaming; providing
`a website featuring
`information about online
`gaming and online
`gaming professionals;
`entertainment services in
`the nature of sporting
`events, performances and
`competitions, electronic
`sporting events and
`competitions, and music
`performances and events;
`providing a web site
`featuring entertainment
`information and news on
`athletes; organizing and
`conducting educational
`programs and activities in
`the nature of classes,
`workshops, and sports
`competitions for athletes
`in the field of athlete
`development; athlete
`development program,
`namely, athlete training
`and mentoring in the field
`of wake, ski, surf,
`snowboard, motocross,
`mountain bike, BMX, and
`skate
`CL. 43 Bar services; café
`services; coffee bars;
`mobile restaurant
`services; restaurant
`services; mobile café
`services for providing
`food and drink.
`CL. 25 Clothing, namely,
`t-shirts, hooded shirts and
`hooded sweatshirts, sweat
`shirts, jackets, pants,
`bandanas, sweat bands
`and gloves; headgear,
`namely hats and beanies.
`
`®
`
`- 10 -
`
`4,051,650
`
`6/30/2002
`
`7/28/2010
`
`11/8/2011
`
`

`

`Filing Date Registration
`Date
`
`5/17/2018
`
`10/9/2018
`
`Listed First
`Use in
`Commerce
`Date
`CL. 5
`3/27/2002
`
`CL. 9
`6/30/2002
`
`CL. 14
`1/14/2010
`
`CL. 16
`1/2004
`
`CL. 18
`5/24/2002
`
`CL. 25
`5/24/2002
`
`CL. 32
`3/27/2002
`
`Registration
`No.
`
`5,580,962
`
`Mark
`
`Goods/Services
`
`®
`
`CL. 5 Nutritional
`supplements; nutritional
`supplements for purposes
`of boosting energy;
`dietary supplemental
`drinks in the nature of
`vitamin beverages
`CL. 9 Sport helmets;
`video recordings
`featuring sports, extreme
`sports and motor sports
`CL. 14 Silicone
`wristbands in the nature
`of bracelets; silicone
`bracelets; jewelry,
`namely, bracelets and
`wristbands; lanyard
`necklace; watches
`CL. 16 Stickers, sticker
`kits comprising stickers
`and decals; decals;
`posters; calendars.
`CL. 18 All-purpose sport
`bags; all-purpose carrying
`bags; backpacks; duffel
`bags
`CL. 25 Clothing, namely,
`t-shirts, hooded shirts and
`hooded sweatshirts; sweat
`shirts, jackets, pants,
`bandanas, sweat bands,
`gloves and motorcycle
`gloves; headgear, namely,
`hats and beanies
`CL. 32 Non-alcoholic
`beverages, namely,
`energy drinks, sports
`drinks, and sports and/or
`energy drinks enhanced
`with vitamins, minerals,
`nutrients, amino acids
`and/or herbs
`
`- 11 -
`
`

`

`Registration
`No.
`
`5,664,586
`
`3,908,601
`
`5,570,782
`
`4,625,118
`
`Listed First
`Use in
`Commerce
`Date
`CL. 21
`1/2010
`
`Filing Date Registration
`Date
`
`12/4/2017
`
`1/29/2019
`
`CL. 25
`6/30/2002
`
`4/2/2009
`
`1/18/2011
`
`5/17/2018
`
`9/25/2018
`
`6/4/2014
`
`10/21/2014
`
`CL. 9
`6/30/2002
`
`CL. 14
`6/30/2010
`
`CL. 16
`1/2004
`
`CL. 18
`5/24/2002
`
`CL. 25
`5/24/2002
`
`CL. 29
`3/18/2013
`
`CL. 30
`4/27/2007
`
`
`Mark
`
`Goods/Services
`
`®
`
`®
`
`®
`
`®
`
`CL. 21 Beverageware;
`insulated beverage
`containers for domestic
`use; drinking bottles for
`sports; water bottles sold
`empty
`
`CL. 25 clothing, namely,
`t-shirts, hooded shirts and
`hooded sweatshirts, sweat
`shirts, jackets, pants,
`bandanas, sweat bands
`and gloves; headgear,
`namely, hats and beanies
`CL. 9 sport helmets;
`video recordings
`featuring sports, extreme
`sports and motor sports
`CL. 14 watches
`CL. 16 stickers, sticker
`kits comprising stickers
`and decals; decals;
`posters; calendars
`CL. 18 all-purpose sport
`bags; all-purpose carrying
`bags; backpacks; duffel
`bags
`CL. 25 clothing, namely,
`t-shirts, hooded shirts and
`hooded sweatshirts, sweat
`shirts, jackets, pants,
`bandanas, sweat bands
`and gloves; headgear,
`namely hats and beanies
`CL. 29. Dairy-based
`beverages; dairy-based
`energy shakes; energy
`shakes; coffee energy
`shakes; chocolate energy
`shakes.
`CL. 30. Ready to drink
`tea and tea based
`beverages; ready to drink
`flavored tea, tea based
`beverages; ready to drink
`coffee and coffee based
`beverages; ready to drink
`flavored coffee and
`
`- 12 -
`
`

`

`Filing Date Registration
`Date
`
`Listed First
`Use in
`Commerce
`Date
`
`CL. 32
`4/18/2002
`
`5/7/2003
`
`11/16/2004
`
`CL. 32
`4/18/2002
`
`5/7/2003
`
`8/29/2006
`
`CL. 32
`2/2018
`
`11/8/2017
`
`12/24/2019
`
`Registration
`No.
`
`Mark
`
`Goods/Services
`
`2,903,214
`
`3,134,841
`
`5,944,737
`
`®
`
`®
`
`coffee based beverages;
`ready to drink chocolate-
`based beverages.
`CL. 32 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.*.
`CL. 32 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.
`CL. 32 Non-alcoholic
`beverages, namely, non-
`carbonated sports drinks,
`non-carbonated flavored
`waters, and non-
`carbonated energy drinks,
`excluding beer.
`
`®
`
`- 13 -
`
`

`

`Filing Date Registration
`Date
`
`11/25/2019
`
`7/28/2020
`
`1/16/2019
`
`7/23/2019
`
`2/12/2016
`
`8/28/2018
`
`Listed First
`Use in
`Commerce
`Date
`CL. 16
`8/29/2019
`
`CL. 25
`5/1/2019
`
`CL. 30
`2/2019
`
`CL. 32
`2/2019
`
`CL. 25
`12/15/2017
`
`CL. 25
`5/2010
`
`CL. 41
`5/2005
`
`Registration
`No.
`
`6,111,996
`
`5,813,698
`
`5,551,230
`
`Mark
`
`Goods/Services
`
`®
`
`®
`
`®
`
`CL. 16. stickers
`CL. 25. tops as clothing;
`shirts.
`CL. 30. Tea; iced tea; tea
`based beverages; ready to
`drink tea; ready to drink
`flavored tea.
`CL. 32 Non-alcoholic
`beverages, namely, soft
`drinks, energy drinks,
`sports drinks, and
`beverages flavored with
`tea.
`CL. 25 Tops being
`clothing; shirts; t-shirts.
`
`CL. 25 clothing, namely,
`tops, shirts, t-shirts,
`hooded shirts, sweat
`shirts, and jackets
`CL. 41 providing a web
`site featuring
`entertainment information
`and news on athletes;
`organizing and
`conducting educational
`programs and activities in
`the nature of classes,
`workshops, and sports
`competitions for athletes
`in the field of athlete
`development; athlete
`development program,
`namely, athlete training
`and mentoring in the field
`of wake, ski, surf,
`snowboard, motocross,
`martial arts, auto racing,
`mountain bike, BMX, and
`skate
`
`8.
`
`Opposer owns and relies on U.S. Trademark Registration No. 5,889,011 (the
`
`“’011 Registration”) for the mark
`
`® for “cameras; headphones; audio speakers; wireless
`
`- 14 -
`
`

`

`speakers; sunglasses; eyewear; cases for sunglasses and eyewear; smart watch; wearable activity
`
`trackers; sports helmets; video recordings featuring sports, extreme sports, and motor sports;
`
`downloadable software for mobile devices for playing games; downloadable electronic game
`
`software for use on mobile devices; downloadable game software; downloadable interactive
`
`game programs; downloadable video game software and programs; sports gloves, namely,
`
`protective work gloves in the nature of mechanics' gloves” in International Class 9, “silicone
`
`wristbands in the nature of bracelets; silicone bracelets; jewelry; jewelry, namely, bracelets and
`
`wristbands; lanyard necklace; watches” in International Class 14, “furniture; chairs; gaming
`
`chair” in International Class 20, “beverageware; insulated beverage containers for domestic use;
`
`heat-insulated containers for beverages; bottles, sold empty; drinking bottles for sports; water
`
`bottles sold empty; bottle openers; non-electric portable coolers; non-electric portable beverage
`
`coolers; shaker bottles sold empty; blender bottles sold empty; sports gloves, namely, work
`
`gloves in the nature of mechanics' gloves” in International Class 21, “towels; blankets for
`
`outdoor use” in International Class 24, “toy cars; remote control toys, namely, cars; cornhole
`
`game sets; cornhole game boards; cornhole bags; surf boards; skate boards; snowboards; boxing
`
`gloves; mixed martial arts gloves; golf bags; punching bags; resistance bands for exercise; video
`
`game interactive remote control units; video game controller joystick, thumbstick and control-
`
`pad extensions” in International Class 28, “Entertainment services, namely, providing online
`
`video games and providing temporary use of non-downloadable video games, computer games,
`
`electronic games, and interactive games; sponsoring tournaments and arranging contests
`
`featuring online gaming; providing a web-based system and on-line portal for customers to
`
`participate in online gaming operation, and coordination of game tournaments, leagues, and tours
`
`for recreational computer game playing purposes; entertainment services, namely, providing a
`
`website for online gaming; providing a website featuring information about online gaming and
`
`- 15 -
`
`

`

`online gaming professionals; entertainment services in the nature of sporting events,
`
`performances and competitions, electronic sporting events and competitions, and music
`
`performances and events; providing a web site featuring entertainment information and news on
`
`athletes; organizing and conducting educational programs and activities in the nature of classes,
`
`workshops, and sports competitions for athletes in the field of athlete development; athlete
`
`development program, namely, athlete training and mentoring in the field of wake, ski, surf,
`
`snowboard, motocross, mountain bike, BMX, and skate” in International Class 41, “bar services;
`
`café services; coffee bars; mobile restaurant services; restaurant services; mobile café services
`
`for providing food and drink” in International Class 43, which registration issued October 22,
`
`2019 and is based on an application filed in the United States Patent and Trademark Office
`
`(“PTO”) on January 16, 2019. The filing date and registration date of Opposer’s ’011
`
`Registration are prior to the filing date of the Application. True and correct copies of the
`
`specif