`
`ESTTA Tracking number:
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`ESTTA1106514
`
`Filing date:
`
`01/07/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
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`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`Beyond Meat, Inc.
`
`Corporation
`
`119 STANDARD ST.
`EL SEGUNDO, CA 90245
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`KRISTIN S. CORNUELLE
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`2050 MAIN ST., SUITE 1100
`IRVINE, CA 92614
`UNITED STATES
`Primary Email: ipprosecution@orrick.com
`Secondary Email(s): kcornuelle@orrick.com, bwang@orrick.com,
`bela.karmel@orrick.com, mweddington@orrick.com
`9495676700
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5675504
`
`Registration date
`
`02/12/2019
`
`Registrant
`
`BEYOND CHEESE LTD
`7 BAYWOOD GARDENS
`BRIGHTON, EAST SUSSEX, BN26BN
`UNITED KINGDOM
`
`Goods/Services Subject to Cancellation
`
`Class 029. First Use: 2018/12/01 First Use In Commerce: 2018/12/01
`All goods and services in the class are subject to cancellation, namely: Dairy free, vegan, gluten free,
`and lactose free cheeses; Plant based cheese alternatives made primarily of nuts, processed beans,
`and/or processed seeds; Vegetarian and vegan cheese products, namely, cheese food in the form of
`dips, cheese powder, cheese spreads, crumbled cheese, grated cheese, diced cheese, sliced
`cheese, soft cheese, melting cheese, cheddar cheese substitutes, mozzarella cheese substitutes,
`parmesan cheese substitutes, Emmental cheese substitutes, herb cheese substitutes, and smoked
`cheese substitutes; Cheese substitutes; Cream cheese; Pizza cheese
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
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`Trademark Act Sections 14(1) and 2(d)
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`Abandonment
`
`Trademark Act Section 14(3)
`
`
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`Marks Cited by Petitioner as Basis for Cancellation
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`U.S. Registration
`No.
`
`4314689
`
`Registration Date
`
`04/02/2013
`
`Application Date
`
`04/24/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEYOND MEAT
`
`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
`
`Application Date
`
`02/24/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEYOND CHICKEN
`
`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
`
`Application Date
`
`02/24/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BEYOND BEEF
`
`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
`
`Attachments
`
`Petition to Cancel - BEYOND CHEESE - Jan-07-2021.pdf(16676 bytes )
`
`Signature
`
`/Kristin S. Cornuelle/
`
`Name
`
`Date
`
`Kristin S. Cornuelle
`
`01/07/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 5,675,504
`Trademark: BEYOND CHEESE
`
`Beyond Meat, Inc.,
`
`Petitioner,
`
`v.
`
`Beyond Cheese Ltd,
`
`Respondent.
`
`PETITION FOR CANCELLATION
`
`Beyond Meat, Inc., a corporation organized and existing under the laws of Delaware,
`
`with a business address at 119 Standard St. El Segundo, California, 90245 (“Petitioner”),
`
`believes that it is and will continue to be damaged by Registration No. 5,675,504 for the mark
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`BEYOND CHEESE in International Class 29 and hereby petitions to cancel the same.
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`As grounds for cancellation, Petitioner alleges:
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`1.
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`Petitioner is a corporation that provides vegetarian meat substitutes, among other
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`goods and services.
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`2.
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`Petitioner is the owner of the BEYOND MEAT mark and the BEYOND family of
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`trademarks, including but not limited to the marks BEYOND MEAT (Registration No.
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`4,314,689), BEYOND CHICKEN (Registration No. 4,654,351), BEYOND BEEF (Registration
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`No. 4,654,352), BEYOND SAUSAGE (Registration No. 5,504,568), BEYOND BURGER
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`(Registration No. 5,910,554), THE BEYOND BURGER (Registration No. 5,101,972),
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`BEYOND FRIED CHICKEN (Registration No. 6,071,089), BEYOND BREAKFAST
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`
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`SAUSAGE (Registration No. 6,059,295), GO BEYOND (Registration No. 5,928,278), and THE
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`FUTURE OF PROTEIN BEYOND MEAT and Design (Registration No. 5,499,242)
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`(collectively, the “BEYOND family of marks”), which it has used in interstate commerce in
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`connection with meat substitutes, vegetarian meat products and plant-based meat substitutes.
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`3.
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`Petitioner has made a substantial investment in advertising and promoting its
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`BEYOND family of marks. Petitioner has extensively used, advertised, promoted, offered, and
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`rendered Petitioner’s goods under the BEYOND family of marks to the public through various
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`channels of trade in commerce. By virtue of its efforts and the expenditure of considerable sums
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`for promotional and advertising activities, and by virtue of the excellence of its products,
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`Petitioner has built extensive goodwill in its BEYOND family of marks and has created, in the
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`minds of the general public, an exclusive association between the BEYOND trademark and
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`Petitioner’s goods.
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`4.
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`Petitioner is the owner of, among others, an incontestable registration for the
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`trademark BEYOND MEAT under U.S. Registration No. 4,314,689 for “Meat substitutes;
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`vegetarian meat products; plant-based meat substitutes” in International Class 29. Petitioner’s
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`Registration 4,314,689 was filed on April 24, 2012 and registered on April 2, 2013.
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`5.
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`Petitioner is also the owner of U.S. Trademark Registration No. 4,654,351 for the
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`trademark BEYOND CHICKEN for “Meat substitutes; vegetarian meat products; plant-based
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`meat substitutes” in International Class 29. Petitioner’s Registration No. 4,654,351 was filed on
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`February 24, 2014 and registered on December 9, 2014.
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`6.
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`Petitioner is also the owner of U.S. Trademark Registration No. 4,654,352 for the
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`trademark BEYOND BEEF for “Meat substitutes; vegetarian meat products; plant-based meat
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`2
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`
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`substitutes” in International Class 29. Petitioner’s Registration No. 4,654,352 was filed on
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`February 24, 2014 and registered on December 9, 2014.
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`7.
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`On October 15, 2020, Petitioner filed a trademark application for BEYOND
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`CHEESE, Serial No. 90/256,631 for “cheese substitutes; non-dairy cheese; plant-based cheese
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`substitutes” in Class 29 (the “Petitioner’s Application”).
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`8.
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`On December 17, 2020, the U.S. Patent and Trademark Office (“USPTO”) issued
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`an office action refusing registration of the Petitioner’s Application under Trademark Act
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`Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the mark shown at
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`U.S. Registration No. 5,675,504.
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`9.
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`Beyond Cheese Ltd (“Respondent”) appears as the listed owner of Registration
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`No. 5,675,504 for the mark BEYOND CHEESE for “Dairy free, vegan, gluten free, and lactose
`
`free cheeses; Plant based cheese alternatives made primarily of nuts, processed beans, and/or
`
`processed seeds; Vegetarian and vegan cheese products, namely, cheese food in the form of dips,
`
`cheese powder, cheese spreads, crumbled cheese, grated cheese, diced cheese, sliced cheese, soft
`
`cheese, melting cheese, cheddar cheese substitutes, mozzarella cheese substitutes, parmesan
`
`cheese substitutes, Emmental cheese substitutes, herb cheese substitutes, and smoked cheese
`
`substitutes; Cheese substitutes; Cream cheese; Pizza cheese” in Class 29, filed on February 23,
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`2015 and registered on February 12, 2019.
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`10.
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`Respondent identifies itself in its registration as a United Kingdom private limited
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`company with an address at 7 Baywood Gardens Brighton, East Sussex, United Kingdom
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`BN26BN.
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`3
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`
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`11.
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`On information and belief, and based on investigation by counsel for the
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`Petitioner, Respondent has discontinued use of the BEYOND CHEESE mark and has no intent
`
`to resume such use.
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`12.
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`On information and belief, Respondent’s domain and social media sites do not
`
`display any evidence of use of the BEYOND CHEESE trademark.
`
`13.
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`Petitioner requests that Registration No. 5,675,504 be cancelled under Section
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`14(3) of the Lanham Act, 15 U.S.C. § 1064(3), on the ground that Registration No. 5,675,504
`
`has been abandoned.
`
`14.
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`Petitioner additionally requests that Registration No. 5,675,504 be cancelled
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`under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), on the ground that Registration No.
`
`5,675,504 is likely to be confused with Petitioner’s BEYOND MEAT, BEYOND CHICKEN and
`
`BEYOND BEEF marks.
`
`15.
`
`Each of Petitioner’s trademark registrations for BEYOND MEAT, BEYOND
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`CHICKEN and BEYOND BEEF were filed prior to Respondent’s filing date of February 23,
`
`2015, and Petitioner has priority over Respondent on that basis. Petitioner also has priority over
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`Respondent’s registration as Petitioner has made actual use of the trademark BEYOND MEAT
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`since at least as early as May 2012, and the BEYOND CHICKEN and BEYOND BEEF
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`trademarks since at least as early as August 2014, which predate both Respondent’s filing date
`
`and claimed first use date.
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`16.
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`Respondent’s mark, BEYOND CHEESE, is likely to be confused with
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`Petitioner’s trademarks, BEYOND MEAT, BEYOND CHICKEN and BEYOND BEEF, because
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`Respondent’s designation and marks are highly similar in appearance, sound, meaning and
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`overall commercial impression.
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`4
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`
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`17. Moreover, Respondent has registered BEYOND CHEESE as a mark in
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`connection with goods that are related to the goods of Petitioner, and such use so nearly
`
`resembles Petitioner’s use as to be likely to cause confusion, to cause mistake or to deceive
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`consumers as to the origin, sponsorship and approval of Respondent’s products within the
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`meaning of 15 U.S.C. § 1052(d).
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`18.
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`Respondent’s goods provided in connection with the BEYOND CHEESE mark
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`are likely to be sold or offered in the same channels of trade as Petitioner’s goods sold under the
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`BEYOND MEAT, BEYOND BEEF and BEYOND CHICKEN trademarks; the parties’ goods
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`are likely to be purchased by the same class of consumers, thus causing consumers and the trade
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`to wrongly associate Respondent’s goods with Petitioner’s goods, and causing the purchasing
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`public to assume that goods offered under the designation BEYOND CHEESE emanate from, or
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`are approved, licensed, or sponsored by Petitioner, have the same source as Petitioner’s products,
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`or that Respondent is affiliated with Petitioner.
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`19.
`
`Persons familiar with Petitioner’s BEYOND MEAT, BEYOND BEEF and
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`BEYOND CHICKEN trademarks would be likely to purchase Respondent’s BEYOND CHEESE
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`goods as goods offered and provided by Petitioner. Indeed, any defect, objection, or fault found
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`with Respondent’s goods marketed under the BEYOND CHEESE mark would be likely to
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`reflect upon and seriously injure the reputation that Petitioner has established for the high-quality
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`goods expected by consumers and offered under its BEYOND MEAT, BEYOND BEEF and
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`BEYOND CHICKEN trademarks and the BEYOND family of marks.
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`20.
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`If Respondent is permitted to maintain the registration that is the subject of this
`
`cancellation, it will continue to hold at least a prima facie exclusive right to use the BEYOND
`
`5
`
`
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`CHEESE trademark. Such a registration would continue to be a source of damage and injury to
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`Petitioner.
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`WHEREFORE, Petitioner prays that the cancellation be sustained and that Registration
`
`No. 5,675,504 be cancelled in its entirety.
`
`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`Dated: January 7, 2021
`
`By:
`
`/Kristin S. Cornuelle/
`
`Betsy Lee
`Kristin S. Cornuelle
`Bela Karmel
`Orrick, Herrington & Sutcliffe LLP
`Attorneys for Beyond Meat, Inc.
`2050 Main Street, Suite 1100
`Irvine, California 92614
`kcornuelle@orrick.com
`
`6
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`