ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1336124
`01/25/2024
`
`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
`
`Audi AG
`
`aktiengesellschaft
`
`AUTO-UNION STR. 1
`INGOLSTADT, 85057
`GERMANY
`
`Incorporated or
`registered in
`
`Germany
`
`Attorney informa-
`tion
`
`WILLIAM C. WRIGHT
`EPSTEIN DRANGEL LLP
`60 EAST 42ND STREET, SUITE 1250
`NEW YORK, NY 10165
`UNITED STATES
`Primary email: mail@ipcounselors.com
`No phone number provided
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97832922
`
`Publication date
`
`12/26/2023
`
`Opposition period
`ends
`
`01/25/2024
`
`Opposition filing
`date
`
`Applicant
`
`01/25/2024
`
`NIO Co. Ltd.
`SUITE 115, 569 ANCHI ROAD
`ANTING TOWN, JIADING DISTRICT
`SHANGHAI, 201805
`CHINA
`
`Goods/services affected by opposition
`
`Class 012. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Sports cars; cars; engines for land vehicles;
`bicycles; tyres for vehicle wheels; water vehicles, namely, boats, submarines, catamarans; steering
`wheels for vehicles; electrically-powered motor vehicles; tram cars; motorcycles; apparatus for loco-
`motion on land, air or water, namely, motor vehicles, boats, airplanes; vehicles, namely, armored
`vehicles, all-terrain vehicles (ATVs), hot air balloons being vehicles; two-wheeled, four-wheeled,
`concept motor vehicles; land vehicles; motors, electric, for land vehicles; vehicle axles; bodies for
`electric vehicles; brake shoes and brake linings for vehicles; structural components for land vehicles,
`namely, brake calipers, brake systems, bumpers, couplings, differentials, drive wheels, drive shafts,
`engines, shift selectors, gearboxes, transmission shafts, hydraulic cylinders and engines, couplings,
`bearings; chassis for vehicles; structural components for vehicles, namely, manual and power steer-
`ing, safety belts, seats, sliding roofs, steering columns; hubs for vehicle wheels; vehicle wheels;
`structural components for vehicles, namely, deflectors, direction indicators, doors, hatches, uphol-
`stery, door handles, horns, mirrors, luggage racks, ski racks, wheel mudguards, snow chains or anti-
`skid chains, headrests, safety belts, child safety seats, mud flaps, roof racks, shock absorbers,
`springs, stabilizer, starters, steering wheels, steering linkages, wheel suspensions, torsion bars, bars,
`
`

`

`windows, window winders, wipers; arm rests for vehicles; lead weight being structural components for
`balancing vehicle wheels; protective covers, radiator grills, fluid reservoirs, storage boxes and boxes,
`spare wheel holders, all being structural parts of vehicles; moldings being structural parts for vehicle
`bodywork; structural and replacement parts and accessories for vehicles, in particular motor vehicles
`and electric vehicles
`
`Class 028. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Toy cars; toy vehicles; scale model
`vehicles; scale model kits for crafting; toy bicycles; toy scooters; jigsaw puzzles; toy drones; smart
`plush toys; smart robot toys; playing cards; sports equipment, namely, basketballs, skis, hockey
`sticks; skateboards; fairground amusement park ride apparatus; arcade video game machines; elec-
`tric amusement park rides in the nature of bumper cars; in-line roller skates; golf ball carriers in the
`nature of golf ball sleeves; body-building apparatus; machines for physical exercises
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`1917829
`
`Register
`
`Principal
`
`Registration date
`
`09/12/1995
`
`Application date
`
`09/21/1994
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`S6
`
`NONE
`
`Class 012. First use: First Use: Oct 1994 First Use In Commerce: Oct 1994
`automobiles and structural parts therefor
`
`U.S. registration
`no.
`
`2499526
`
`Register
`
`Principal
`
`Registration date
`
`10/23/2001
`
`Application date
`
`09/07/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`S4
`
`NONE
`
`Class 012. First use: First Use: Jul 1999 First Use In Commerce: Jul 1999
`Automobiles and structural parts therefore
`
`U.S. registration
`no.
`
`2534302
`
`Register
`
`Principal
`
`Registration date
`
`01/29/2002
`
`Word mark
`
`Design mark
`
`S8
`
`Description of
`
`NONE
`
`Application date
`
`05/18/2000
`
`Foreign priority
`date
`
`NONE
`
`

`

`mark
`
`Goods/services
`
`Class 012. First use: First Use: Nov 30, 2000 First Use In Commerce: Nov 30,
`2000
`automobiles [ and structural parts therefore ]
`
`U.S. registration
`no.
`
`2889135
`
`Register
`
`Principal
`
`Registration date
`
`09/28/2004
`
`Application date
`
`07/03/2003
`
`Foreign priority
`date
`
`02/26/2003
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS4
`
`NONE
`
`Class 012. First use: First Use: None First Use In Commerce: None
`AUTOMOBILES AND STRUCTURAL PARTS THEREOF
`Class 018. First use: First Use: None First Use In Commerce: None
`LEATHER AND IMITATIONS OF LEATHER SOLD IN BULK; GOODS MADE
`OF LEATHER AND IMITATION LEATHER, NAMELY KEY CHAINS, PURSES,
`WALLETS, BRIEF CASES; ANIMAL SKINS, HIDES; TRAVELING TRUNKS
`AND TRAVELING BAGS; UMBRELLAS, PARASOLS AND WALKING STICKS;
`WHIPS, HARNESSES AND SADDLES
`
`U.S. registration
`no.
`
`3324676
`
`Register
`
`Principal
`
`Registration date
`
`10/30/2007
`
`Application date
`
`09/05/2006
`
`Foreign priority
`date
`
`05/03/2006
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`S5
`
`NONE
`
`Class 012. First use: First Use: None First Use In Commerce: None
`Vehicles, namely, apparatus for locomotion by land, [ air or water, ], namely,
`automobiles
`Class 025. First use: First Use: None First Use In Commerce: None
`[ Clothing, namely, t-shirts, polo shirts, footwear and ] headgear, namely, hats
`and caps
`Class 028. First use: First Use: None First Use In Commerce: None
`[ Games and playthings, namely, toy model cars ]
`
`U.S. registration
`no.
`
`3421582
`
`Register
`
`Principal
`
`Registration date
`
`05/06/2008
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`S7
`
`NONE
`
`Application date
`
`03/14/2007
`
`Foreign priority
`date
`
`NONE
`
`

`

`Goods/services
`
`Class 012. First use: First Use: None First Use In Commerce: None
`land vehicles, namely, automobiles and structural parts therefore, other than
`mini two-seater vehicles and their structurally defined parts
`
`U.S. registration
`no.
`
`3835128
`
`Register
`
`Principal
`
`Registration date
`
`08/17/2010
`
`Application date
`
`09/05/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`S3
`
`NONE
`
`Class 012. First use: First Use: None First Use In Commerce: None
`Vehicles, namely, automobiles, [ sport utility vehicles, ] sports cars, [ vans, pick-
`ups, estate cars, ] racing cars; engines for land vehicles
`Class 025. First use: First Use: None First Use In Commerce: None
`[ Clothing, namely, T-shirts, polo shirts, jackets [, sweaters ] ; headgear, namely,
`caps ]
`
`U.S. registration
`no.
`
`3860770
`
`Register
`
`Principal
`
`Registration date
`
`10/12/2010
`
`Application date
`
`09/05/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS5
`
`NONE
`
`Class 012. First use: First Use: None First Use In Commerce: None
`Vehicles, namely, automobiles, sport utility vehicles, sports cars, [ vans, pick-up
`trucks, estate cars, ] racing cars; engines for land vehicles
`
`U.S. registration
`no.
`
`3966469
`
`Register
`
`Principal
`
`Registration date
`
`05/24/2011
`
`Application date
`
`11/23/2010
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS 3
`
`NONE
`
`Class 012. First use: First Use: None First Use In Commerce: None
`Vehicles, namely, automobiles and structural parts therefor
`Class 025. First use: First Use: None First Use In Commerce: None
`[ Clothing, namely, t-shirts, jackets and caps ]
`Class 028. First use: First Use: None First Use In Commerce: None
`[ Games and playthings, namely, model cars, children's pedal cars and playing
`cards ]
`
`

`

`U.S. registration
`no.
`
`4405143
`
`Register
`
`Principal
`
`Registration date
`
`09/24/2013
`
`Application date
`
`03/13/2012
`
`Foreign priority
`date
`
`11/22/2011
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`S
`
`The mark consists of a stylized "S" which partially overlaps with a slanted rect-
`angle on the left. Both the "S" and the border of the rectangle are shaded to in-
`dicate a metallic sheen.
`
`Class 004. First use: First Use: None First Use In Commerce: None
`[ Industrial oils and greases; industrial lubricants; dust absorbing, wetting, and
`binding compositions; fuels, namely, motor spirit; illuminants; candles and wicks
`for lighting ]
`Class 009. First use: First Use: None First Use In Commerce: None
`[ Interactive, computerized automotive control system for integrating, managing
`and providing driver access to functions of automobile navigation system, enter-
`tainment features, namely, CD players, DVD players, MP3 players, tape players
`and radio, communications equipment, namely, telephones, vehicle environ-
`mental information and controls regarding heating and cooling and automobile
`control systems, all incorporated into a motor vehicle; keyless entry system and
`keyless ignition switch system for automotive vehicles comprised of a micropro-
`cessor, electronic signal receiver, and keyfob with electronic signal transponder;
`digital switching systems comprised of interconnected electromechanical and
`solid-state power management enclosures with standard and custom keypads
`for user remote control, the foregoing for use on automotive vehicle dashboards;
`dashboard cruise controls and tachometers for motor vehicles ]
`Class 012. First use: First Use: None First Use In Commerce: None
`Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and
`structural parts therefor
`Class 014. First use: First Use: None First Use In Commerce: None
`[ Watches, wristwatches, mechanical watches, chronometers ]
`Class 016. First use: First Use: None First Use In Commerce: None
`[ Wall calendars and printed instructional and teaching material in the field of
`automotive maintenance, repair and servicing and vehicle operation ]
`Class 018. First use: First Use: None First Use In Commerce: None
`[ Leather and imitations of leather, and goods made of these materials, namely,
`key chains, key cases, garment bags, sports bags, general purpose trolley bags;
`animal skins and hides; trunks and travelling bags; umbrellas; parasols and
`walking sticks; whips; harnesses and saddlery ]
`Class 025. First use: First Use: None First Use In Commerce: None
`[ Clothing, namely, t-shirts, shirts, polo shirts, jackets, caps and hats and foot-
`wear ]
`Class 027. First use: First Use: None First Use In Commerce: None
`[ automobile floor mats ]
`Class 028. First use: First Use: None First Use In Commerce: None
`[ model cars and toy cars ]
`
`U.S. registration
`no.
`
`4440628
`
`Register
`
`Principal
`
`Application date
`
`05/23/2011
`
`

`

`Registration date
`
`11/26/2013
`
`Foreign priority
`date
`
`11/29/2010
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS 7
`
`NONE
`
`Class 012. First use: First Use: Mar 21, 2013 First Use In Commerce: Mar 21,
`2013
`Vehicles, namely, automobiles, [ sport utility vehicles, sports cars, vans, pick-up
`trucks, estate cars, racing cars ] and structural parts therefore [ ; engines for
`land vehicles ]
`
`U.S. registration
`no.
`
`4883873
`
`Register
`
`Principal
`
`Registration date
`
`01/12/2016
`
`Application date
`
`06/18/2014
`
`Foreign priority
`date
`
`12/18/2013
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS 5
`
`NONE
`
`Class 009. First use: First Use: None First Use In Commerce: None
`Scientific, surveying, photographic, filming, optical, weighing, signal and monitor-
`ing devices and instruments, in particular automatic control devices for vehicles;
`measuring devices and measuring instruments, in particular speed-monitoring
`devices for vehicles, [ acidometers, ] fill-level displays; [ encoded key cards; ]
`electronic interface modules for wired and wireless interfaces for mobile phones,
`digital information systems and electrical systems for motor vehicles; advanced
`driver assistance systems and piloted driving, namely, adaptive cruise control
`with stop and go function, active lane assist, side assist, night vision assistant,
`park assist, camera-based traffic sign recognition, pre sense, piloted driving in
`traffic jams, piloted driving for parking at curbside and garages; [ appliances and
`instruments for conducting, switching, converting, storing, regulating and monit-
`oring electricity, in particular electrical batteries; devices for recording, transmit-
`ting and playing back sound and images; electronic display boards; ] navigation
`devices for vehicles in the nature of on-board computers; [ antennae; devices for
`receiving sound and images, in particular radios, CD players, DVD players, tele-
`visions, telephones, video telephones, mobile phones; cases for mobile phones,
`magnetic-tape recording media, magnetic-tape storage media; Blank CDs,
`DVDs and other digital recording media; calculators; hardware for data pro-
`cessing; computers; on-board computers; ] computer software, in particular in-
`stalled and downloadable computer programs for interactive, computerized auto-
`motive control system for integrating, managing and providing driver access to
`functions of automobile navigation system, entertainment features, namely, CD
`players, DVD players. MP3 players, [ tape players ] and radio communication
`equipment, namely, [ telephones, ] vehicle environmental information and con-
`trols regarding heating and cooling and automobile control systems, all incorpor-
`ated into a motor vehicle; keyless entry system and keyless ignition switch sys-
`tem for automotive vehicles comprised of a microprocessor, electronic signal re-
`ceiver, and key fob with electronic signal transponder; [ digital switching systems
`comprised of interconnected electromechanical and solid-state power manage-
`ment enclosures with standard and custom keypads for user remote control, the
`foregoing for use in automotive vehicle dashboards; dashboard cruise controls
`and tachometers for motor vehicles and related operating software; eye glasses;
`eye glass cases; fire extinguishers, ] all the aforesaid being components, equip-
`
`

`

`ment or goods for use in or in relation to automobiles
`Class 027. First use: First Use: None First Use In Commerce: None
`floor mats, plastic carpets and cargo mats for automobiles
`
`U.S. registration
`no.
`
`5367990
`
`Register
`
`Principal
`
`Registration date
`
`01/02/2018
`
`Application date
`
`12/16/2016
`
`Foreign priority
`date
`
`07/04/2016
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS 7
`
`The mark consists of the letters "R" and "S" and the number "7" in block capital-
`ized letters, outlined, with the letter "R" interposed over a rectangular block,
`double-outlined.
`
`Class 012. First use: First Use: None First Use In Commerce: None
`Emblems, not of metal, for vehicles, namely, badges for vehicles
`Class 016. First use: First Use: None First Use In Commerce: None
`emblems, not of metal, for vehicles, namely, paper stickers
`
`U.S. registration
`no.
`
`5457305
`
`Register
`
`Principal
`
`Registration date
`
`05/01/2018
`
`Application date
`
`06/28/2017
`
`Foreign priority
`date
`
`02/13/2017
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS
`
`The mark consists of the letters "R" and "S" in block capitalized letters, outlined,
`with the letter "R" interposed over a rectangular block, double-outlined.
`
`Class 006. First use: First Use: None First Use In Commerce: None
`Goods of metal, namely, badges for vehicles
`Class 012. First use: First Use: None First Use In Commerce: None
`Land vehicles, namely, automobiles and their structural parts; radiator grilles;
`non-metal emblems for vehicles, namely, automotive hood ornaments, insignia
`for vehicles and automotive exterior metal decorative trim
`
`U.S. registration
`no.
`
`5479356
`
`Register
`
`Principal
`
`Registration date
`
`05/29/2018
`
`Application date
`
`08/03/2017
`
`Foreign priority
`date
`
`02/13/2017
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS Q8
`
`NONE
`
`Class 009. First use: First Use: None First Use In Commerce: None
`Interactive, computerized automotive control system for integrating, managing
`and providing driver access to functions of automobile navigation system, enter-
`tainment features, namely, CD players, DVD players, MP3 players, tape players
`and radio, communications equipment, namely, telephones, vehicle environ-
`mental information and controls regarding heating and cooling and automobile
`
`

`

`control systems, all incorporated into a motor vehicle; keyless entry system and
`keyless ignition switch system for automotive vehicles comprised of a micropro-
`cessor, electronic signal receiver, and keyfob with electronic signal transponder;
`digital switching systems comprised of interconnected electromechanical and
`solid-state power management enclosures with standard and custom keypads
`for user remote control, the foregoing for use on automotive vehicle dashboards;
`dashboard cruise controls and tachometers for motor vehicles
`Class 012. First use: First Use: None First Use In Commerce: None
`land vehicles and their structural parts
`Class 028. First use: First Use: None First Use In Commerce: None
`Model cars and toy cars
`
`U.S. registration
`no.
`
`5718753
`
`Register
`
`Principal
`
`Registration date
`
`04/09/2019
`
`Application date
`
`12/16/2016
`
`Foreign priority
`date
`
`07/04/2016
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`RS 5
`
`The mark consists of the letters "R" and "S" and the number "5" in block capital-
`ized letters, outlined, with the letter "R" interposed over a rectangular block,
`double-outlined.
`
`Goods/services
`
`Class 012. First use: First Use: None First Use In Commerce: None
`Emblems, not of metal, for vehicles, namely, badges for vehicles
`
`U.S. registration
`no.
`
`5830854
`
`Register
`
`Principal
`
`Registration date
`
`08/13/2019
`
`Application date
`
`12/23/2016
`
`Foreign priority
`date
`
`07/04/2016
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS 3
`
`The mark consists of the letters "R" and "S" and the number "3" in block capital-
`ized letters, outlined, with the letter "R" interposed over a rectangular block,
`double-outlined.
`
`Class 009. First use: First Use: None First Use In Commerce: None
`Speed measuring apparatus for vehicles; vehicle radios; navigation devices for
`vehicles in the nature of on-board computers
`Class 012. First use: First Use: None First Use In Commerce: None
`Emblems, not of metal, for vehicles, namely, badges for vehicles
`
`U.S. registration
`no.
`
`6016461
`
`Register
`
`Principal
`
`Registration date
`
`03/24/2020
`
`Application date
`
`02/20/2019
`
`Foreign priority
`date
`
`08/31/2018
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`RS
`
`The mark consists of the stylized letters "RS" in front of a four sided design.
`
`

`

`Goods/services
`
`Class 009. First use: First Use: None First Use In Commerce: None
`Information technology and audio-visual, multimedia and photographic devices,
`namely, USB hubs, USB charging ports, blank USB flash drives; optical devices,
`namely, sun glasses; safety, security, protection and signaling devices, namely,
`safety and driving assistant system for vehicles and vessels comprised of elec-
`tronic proximity sensors and switches, integrated circuits for the purpose of im-
`age processing, and display monitors, personal security alarms, security lighting
`system for vehicles using radio frequency device, vehicle locating, tracking and
`security system comprised of an antenna and radio transmitter to be placed in a
`vehicle; navigation, guidance, tracking, targeting and map making devices,
`namely, navigation apparatus for vehicles in the nature of on-board computers,
`electric navigational instruments, GPS navigation devices; measuring, detecting
`and monitoring instruments, indicators and controllers, namely, speedometers
`for vehicles, satellite communication apparatus to transmit communications from
`a vehicle to another vehicle, or from a vehicle to a satellite; scientific research
`and laboratory apparatus, educational apparatus and simulators; all aforesaid
`being components, equipment or goods for us in or in relation to automobiles
`Class 016. First use: First Use: None First Use In Commerce: None
`Paper and cardboard; works of art and figurines of paper and cardboard, and ar-
`chitects' models; stationery and educational supplies, namely, pens, pencils,
`pen holders, stationery boxes, pen and pencil cases; adhesives for stationery or
`household purposes; money clips; printed matter, namely, calendars, stickers,
`posters, postcards
`Class 027. First use: First Use: None First Use In Commerce: None
`Floor coverings
`
`U.S. registration
`no.
`
`6104299
`
`Register
`
`Principal
`
`Registration date
`
`07/21/2020
`
`Application date
`
`08/21/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS6
`
`NONE
`
`Class 012. First use: First Use: None First Use In Commerce: None
`Land vehicles and structural parts therefor
`
`U.S. registration
`no.
`
`6202931
`
`Register
`
`Principal
`
`Registration date
`
`11/24/2020
`
`Application date
`
`03/19/2020
`
`Foreign priority
`date
`
`10/28/2019
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RS
`
`The mark consists of the stylized letters "RS" in front of a four sided design.
`
`Class 014. First use: First Use: None First Use In Commerce: None
`Precious metals and their alloys; jewellery, precious and semi-precious stones;
`horological and chronometric instruments; cases for watches
`Class 018. First use: First Use: None First Use In Commerce: None
`Leather and imitations of leather; animal skins and hides; luggage and carrying
`
`

`

`bags, namely, sports bags, traveling bags, clutch bags, key bags, shoulder
`bags, leather bags, and textile shopping bags; umbrellas and parasols; walking
`sticks; whips, harness and saddlery; collars, leashes and clothing for animals
`Class 025. First use: First Use: None First Use In Commerce: None
`Clothing, namely, jackets, parkas, shell jackets, windcheaters, tops, t-shirts, golf
`shirts, hoodies, trousers, pants, skiwear, footwear, headwear; cap peaks
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`S
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`S3
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`S4
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`S5
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`S6
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`S7
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`

`

`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`S8
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`RS
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`RS3
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`RS4
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`RS5
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`RS6
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`RS7
`
`Application date
`
`NONE
`
`

`

`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`RS Q8
`
`Application date
`
`NONE
`
`Goods/services
`
`Vehicles, vehicle parts and accessories and other related goods
`
`Attachments
`
`ES7 NOO.pdf(136045 bytes )
`ES7 Exhibit 1.pdf(3483169 bytes )
`
`Signature
`
`/William C. Wright/
`
`Name
`
`Date
`
`William C. Wright
`
`01/25/2024
`
`

`

`
`
`William C. Wright
`Jason M. Drangel
`
`EPSTEIN DRANGEL LLP
`60 East 42nd Street, Suite 1250
`New York, NY 10165
`Tel: 212-292-5390
`Fax: 212-292-5391
`E-Mail: mail@ipcounselors.com
`Attorneys for Opposer
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Audi AG,
`Opposer,
`
`
`v.
`
`NIO Co. Ltd.,
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Opposition No.:
`
`
`
`
`In
`
`the
`
`matter
`
`of
`
`U.S.
`
`Trademark
`
`Application
`
`Serial
`
`No.
`
`NOTICE OF OPPOSITION
`
`
`97832922, Audi AG, an aktiengesellschaft organized and existing under the laws of the Germany
`
`(hereinafter, “Opposer”), believes that it is or will be damaged by the registration of the trademark
`
`ES7 (hereinafter, “Applicant’s Mark”), as reflected in U.S. Trademark Application Serial No.
`
`97832922 (hereinafter, the “Application”), in the name of NIO Co. Ltd., a limited company,
`
`organized and existing under the laws of China, with an address of Suite 115, 569 Anchi Road,
`
`Anting Town, Jiading District, Shanghai 201805, China (hereinafter, “Applicant”), and hereby
`
`opposes the same.
`
`As grounds therefor, Opposer, by and through its undersigned attorneys, alleges as follows:
`
`1. Opposer is one of the world’s leading automobile companies, with roots dating back to the
`
`early 1900s.
`
`2. Opposer designs, engineers, manufactures, markets, and sells millions of vehicles under its
`
`
`
`1
`
`

`

`
`
`
`
`house mark AUDI in nearly every country across the globe.
`
`3. The AUDI brand is considered one of the most valuable brands in the world and is
`
`consistently listed in Interbrand’s annual survey of the “Best Global Brands”.
`
`4. For well over a decade Opposer has used the letter S in conjunction with numbers to
`
`designate various models of its AUDI automobiles.
`
`5. Opposer has used a family of trademarks incorporating the letter S, including, but not
`
`limited to, S and RS alone and with various numbers to designate various models of its
`
`AUDI automobiles, including S, S3, S4, S5, S6, S7 and S8 and RS, RS3, RS4, RS5, RS6,
`
`RS7, and RS Q8.
`
`6. Opposer is the owner of all rights, title, and interest in and to the family of S marks, namely,
`
`S, S3, S4, S5, S6, S7 and S8 and RS, RS3, RS4, RS5, RS6, RS7, and RS Q8 (hereinafter,
`
`“Opposer’s Marks”) for use in connection with, inter alia, vehicles, vehicle parts and
`
`accessories and other related goods (hereinafter, “Opposer’s Goods”).
`
`7. Opposer has expended vast amounts of time, effort, and money in developing, advertising,
`
`and publicizing Opposer’s Marks and Opposer’s Goods.
`
`8. As a result of Opposer’s efforts, the high quality of Opposer’s Goods, and Opposer’s
`
`extensive use, advertising, and promotion of Opposer’s Marks and Opposer’s Goods,
`
`Opposer’s Marks and Opposer’s Goods have become famous.
`
`9. Consumers have come to associate Opposer’s Marks and Opposer’s Goods exclusively
`
`with Opposer, and Opposer has acquired a valuable reputation and goodwill among
`
`consumers as a result.
`
`10. Opposer’s Marks are distinctive indicators of the origin of Opposer’s Goods and are
`
`extremely valuable symbols of Opposer’s goodwill.
`
`11. In addition to Opposer’s common law rights in and to each of Opposer’s Marks, Opposer
`
`2
`
`

`

`
`
`
`
`owns several U.S. trademark registrations of Opposer’s Marks, as set forth in the chart
`
`below. Print-outs of said registrations from the electronic database records of the United
`
`States Patent and Trademark Office (hereinafter, the “USPTO”) are attached hereto as
`
`Exhibit 1.
`
`MARK
`
`S6
`S4
`S8
`RS4
`S5
`S7
`
`S3
`
`RS5
`
`RS 3
`
`
`
`RS 7
`
`RS 5
`
`RS Q8
`
`RS6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`REGISTRATIONS
`
`REG. DATE
`
`APP./REG.
`NO.
`Sep. 12, 1995
`1917829
`Oct. 23, 2001
`2499526
`Jan. 29, 2002
`2534302
`Sep. 28, 2004
`2889135
`Oct. 30, 2007
`3324676
`3421582 May 6, 2008
`Aug. 17,
`2010
`October 12,
`2010
`3966469 May 24, 2011
`
`3835128
`
`3860770
`
`4405143
`
`Sep. 24, 2013
`
`4440628
`
`4883873
`
`5367990
`
`November
`26, 2013
`January 12,
`2016
`January 2,
`2018
`
`CLASS
`
`STATUS
`
`12
`12
`12
`12, 18
`12
`12
`
`12
`
`12
`
`12
`
`12
`
`12
`
`Incontestable
`Incontestable
`Incontestable
`Incontestable
`Incontestable
`Incontestable
`
`Incontestable
`
`Incontestable
`
`Incontestable
`
`Incontestable
`
`Incontestable
`
`9, 27
`
`Incontestable
`
`12, 16
`
`Registered
`
`5457305 May 1, 2018
`
`6, 12
`
`Registered
`
`5479356 May 29, 2018
`
`9, 12, 28
`
`Registered
`
`5718753
`
`April 9, 2019
`
`12
`
`Registered
`
`5830854
`
`6016461
`
`6104299
`
`6202931
`
`August 13,
`2019
`March 24,
`2020
`July 21, 2020
`November
`24, 2020
`
`9, 12
`
`Registered
`
`9, 16, 27
`
`Registered
`
`12
`
`Registered
`
`14, 18, 25
`
`Registered
`
`12. Opposer’s registrations are valid and subsisting and are conclusive evidence of Opposer’s
`3
`
`

`

`
`
`
`
`exclusive right to use Opposer’s Marks in commerce in connection with Opposer’s Goods,
`
`related goods and services, and/or goods and services within Opposer’s scope of natural
`
`expansion.
`
`13. Since long prior to any date in which Applicant can rely, Opposer has continuously and
`
`extensively used Opposer’s Marks in commerce in connection with Opposer’s Goods.
`
`14. Notwithstanding Opposer’s prior rights in and to Opposer’s Marks, on March 10, 2023,
`
`Applicant filed an application with the USPTO for Applicant’s Mark, Ser. No. 97832922,
`
`for “Sports cars; cars; engines for land vehicles; bicycles; tyres for vehicle wheels; water
`
`vehicles, namely, boats, submarines, catamarans; steering wheels for vehicles; electrically-
`
`powered motor vehicles; tram cars; motorcycles; apparatus for locomotion on land, air or
`
`water, namely, motor vehicles, boats, airplanes; vehicles, namely, armored vehicles, all-
`
`terrain vehicles (ATVs), hot air balloons being vehicles; two-wheeled, four-wheeled,
`
`concept motor vehicles; land vehicles; motors, electric, for land vehicles; vehicle axles;
`
`bodies for electric vehicles; brake shoes and brake linings for vehicles; structural
`
`components for land vehicles, namely, brake calipers, brake systems, bumpers, couplings,
`
`differentials, drive wheels, drive shafts, engines, shift selectors, gearboxes, transmission
`
`shafts, hydraulic cylinders and engines, couplings, bearings; chassis for vehicles; structural
`
`components for vehicles, namely, manual and power steering, safety belts, seats, sliding
`
`roofs, steering columns; hubs for vehicle wheels; vehicle wheels; structural components
`
`for vehicles, namely, deflectors, direction indicators, doors, hatches, upholstery, door
`
`handles, horns, mirrors, luggage racks, ski racks, wheel mudguards, snow chains or anti-
`
`skid chains, headrests, safety belts, child safety seats, mud flaps, roof racks, shock
`
`absorbers, springs, stabilizer, starters, steering wheels, steering linkages, wheel
`
`suspensions, torsion bars, bars, windows, window winders, wipers; arm rests for vehicles;
`
`4
`
`

`

`
`
`
`
`lead weight being structural components for balancing vehicle wheels; protective covers,
`
`radiator grills, fluid reservoirs, storage boxes and boxes, spare wheel holders, all being
`
`structural parts of vehicles; moldings being structural parts for vehicle bodywork; structural
`
`and replacement parts and accessories for vehicles, in particular motor vehicles and electric
`
`vehicles” in Class 12 and “Toy cars; toy vehicles; scale model vehicles; scale model kits
`
`for crafting; toy bicycles; toy scooters; jigsaw puzzles; toy drones; smart plush toys; smart
`
`robot toys; playing cards; sports equipment, namely, basketballs, skis, hoc