Red Bull v. Lendtzke

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1083775

Filing date: 09/23/2020

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 Red Bull GmbH

Granted to Dateof previous ex-tension

10/14/2020

Address AM BRUNNEN 1FUSCHL AM SEE, A-5330AUSTRIA

Attorney informa-tion

TYWANDA HARRIS LORDKILPATRICK TOWNSEND & STOCKTON LLP1100 PEACHTREE STREET NE, SUITE 2800ATLANTA, GA 30309UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected], [email protected], [email protected]

Docket Number

Applicant Information

Application No. 88806080 Publication date 06/16/2020

Opposition FilingDate

09/23/2020 Opposition Peri-od Ends

10/14/2020

Applicant Lentzke, Jason24220 N. 23RD STREETPHOENIX, AZ 85024UNITED STATES

Goods/Services Affected by Opposition

Class 041. First Use: 2012/04/01 First Use In Commerce: 2013/04/01All goods and services in the class are opposed, namely: Providing fitness training services in thefield of triathlons, marathons and cycling; Providing personal fitness training for triathlons, marathonsand cycling

Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d)

Dilution by blurring Trademark Act Sections 2 and 43(c)

Dilution by tarnishment Trademark Act Sections 2 and 43(c)

False suggestion of a connection with persons, Trademark Act Section 2(a)

living or dead, institutions, beliefs, or nationalsymbols, or brings them into contempt, or disrep-ute

Marks Cited by Opposer as Basis for Opposition

U.S. Application/ Registra-tion No.

NONE Application Date NONE

Registration Date NONE

Word Mark RED BULL

Goods/Services Personal fitness training services, strength and conditioning trainingservices, energy drinks, beverages, sports drinks, soft drinks, carbon-ated beverages, and various other products and services related orcomplementary thereto




Design Mark





Design Mark





Design Mark





Word Mark BULL





Design Mark


Attachments Single Bull Logo.jpgRED BULL & TWO BULLS LOGO.jpgTWO BULLS LOGO.jpgTWO BULLS LOGO IN COLOR.jpg2020.09.23 Notice of Opposition (Lentzke).pdf(1891437 bytes )

Signature /Tiffani D. Otey/

Name Tiffani D. Otey

Date 09/23/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application Serial No. 88806080 Filed: February 21, 2020 Published: June 16, 2020 in the Official Gazette

For:

RED BULL, GMBH

Opposer, v.

JASON LENTZKE,

Applicant.

Opposition No. _____________

NOTICE OF OPPOSITION

UNITED STATES PATENT AND TRADEMARK OFFICETrademark Trial and Appeal Board P.O. Box 1451 Alexandria, Virginia 22313-1451

Red Bull GmbH (“Opposer”) believes that it will be damaged by the registration of the

mark shown in Application Serial No. 88806080 (the “Application”), and hereby opposes same.

Having timely filed a request for an extension of time to oppose, Opposer now timely files this

Notice of Opposition.

As grounds for its opposition, Opposer alleges as follows:

The Parties and the Application

1. Opposer Red Bull GmbH is a limited liability company organized and existing

under the laws of Austria, with its principal place of business at Am Brunnen 1, 5330 Fuschl am

See, Austria.

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2. According to the information included in the Application, the applicant is Jason

Lentzke (“Applicant”), an individual, having an address at 24220 N. 23rd Street, Phoenix,

Arizona USA 85024.

3. Applicant filed the Application on February 21, 2020 for the trademark

(the “Winged Bull Device Mark”) for “Providing fitness training services in the field

of triathlons, marathons and cycling; Providing personal fitness training for triathlons, marathons

and cycling” in Class 41, claiming that the Winged Bull Device Mark was first used in

commerce in connection with these services on April 1, 2013.

4. The Application was published for opposition on June 16, 2020.

Opposer and Its Famous Marks

5. Opposer is now and has for many years been engaged in the development,

marketing, advertising, distribution and sale of various products and services including, among

others, personal fitness training services, strength and conditioning training services, as well as

energy drinks, beverages, sports drinks, soft drinks, carbonated beverages, and various other

products and services related or complementary thereto (collectively “Opposer’s Goods and

Services”).

6. Opposer is the owner of the corporate name, trade name and trademark RED

BULL, in use continuously in interstate commerce on and in connection with Opposer’s Goods

and Services since long before the filing date of the Application or any claimed use date therein.

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7. Opposer is also the owner of numerous United States trademark registrations and

common law rights in and to the trademarks RED BULL, (Single Bull

Device), BULL, (RED BULL & Double Bull Device),

(Double Bull Device), (Double Bull Device

in Color), and other marks for or incorporating the word BULL and/or the design of a bull, and

GIVES YOU WINGS for various goods and services, including, but not limited to, its fitness

training services (collectively, the “Red Bull Marks”).

8. Opposer’s various Red Bull Marks have been used continuously in interstate

commerce on and in connection with Opposer’s Goods and Services, including, but not

limited to, personal fitness training services, strength and conditioning training services, as well

as drinks and beverages, and complimentary products and services related to the foregoing,

since long before the filing date of the Application or any claimed use date therein.

9. Opposer’s Red Bull Marks have become valuable assets of Opposer, such that

consumers have come to recognize a family of Red Bull Marks identifying Opposer’s Goods and

Services, and distinguishing Opposer’s Goods and Services, including, but not limited to,

personal fitness training services, strength and conditioning training services, as well as drinks

and beverages, and complimentary products and services related to the foregoing, from the

goods and services of others.

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10. Opposer’s Red Bull Marks have been extensively advertised in the United States

and throughout the world, and have appeared on or in relation to products, product packaging,

point-of-sale displays and other promotional materials for products sold, offered, and advertised,

and have been used in connection with Opposer’s Goods and Services, advertised, offered,

conducted, and promoted in the United States and throughout the world.

11. In 2019, Opposer’s worldwide sales of its energy drinks, beverages, sports

drinks, soft drinks, and carbonated beverages exceeded 7.5 billion units, with significant sales

in the United States. As a result of the enormous success and sales of Opposer’s Goods and

Services, and of the extensive advertising and promotion of Opposer’s family of Red Bull

Marks and products in the United States and throughout the world, Opposer’s Red Bull Marks

are famous marks, and are recognized in the United States and elsewhere as such. For

example, Forbes Magazine ranks RED BULL #69 on its 2020 list of the world’s most valuable

brands. Similarly, the “Eurobrand” ranking, which is published annually by The European Brand

Institute, has ranked Red Bull as one of the 100 most valuable brand corporations worldwide for

approximately 10 years. Moreover, the Trademark Trial and Appeal Board has repeatedly

found Opposer’s trademarks to be famous for purposes of its likelihood of confusion analysis.

See Red Bull GmbH v. Morganti Flavio Innovaciones Gastronomicas, S.L., Opp. No.

91223317 (T.T.A.B. Jan. 18, 2019) and Red Bull GmbH v. Bullred Clothing, Inc., Opp. No.

91216739 (T.T.A.B. Jan. 12, 2016).

Applicant’s Application to Register the Winged Bull Device Mark

12. The services for which Applicant seeks registration are fitness training services,

which are similar and closely related to Opposer’s Goods and Services for which Opposer both

uses its Red Bull Marks and owns registrations.

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13. On information and belief, Applicant was aware of Opposer and one or more of the

Red Bull Marks before it filed the Application to register the Winged Bull Device Mark.

14. The Winged Bull Device Mark that is the subject of the Application is highly

similar in appearance and overall commercial impression to the Red Bull Marks.

15. Upon information and belief, Applicant and his company use the color red to

depict the Winged Bull Device Mark, as shown, for example, in the images from Applicant’s

business’ social media account, below.

16. Upon information and belief, Applicant and his company use the term “TORO”,

which translates to the word “BULL” in English, in connection with the Winged Bull Device

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Mark, as shown, for example, in the images from Applicant’s business’ social media account

shown in Paragraph 15 above.

17. The Winged Bull Device Mark, when used in connection with the services listed

in the Application, is intended to refer to or call to the mind of the consumer the Opposer and its

Red Bull Marks.

FIRST CLAIM FOR RELIEF (Likelihood of Confusion with Registered Trademarks)

18. Opposer repeats and re-alleges the allegations of Paragraphs 1 through 17 above,

as though fully set forth herein.

19. The mark shown in the Application so resembles Opposer’s registered Red Bull

Marks as to be likely, when used on or in connection with the services identified in the

Application, to cause confusion, to cause mistake, or to deceive, and Applicant’s mark is thus

unregistrable under § 2(d) of the United States Trademark Act, 15 U.S.C. §1052(d).

20. Opposer will be damaged by registration of the mark shown in the opposed

Application because the registration will give Applicant prima facie evidence of the validity of

its confusingly-similar mark and the exclusive nationwide right to use its confusingly-similar

mark in commerce in connection with the services identified in the Application, in derogation of

Opposer’s rights in the Red Bull Marks.

SECOND CLAIM FOR RELIEF (Likelihood of Confusion with Opposer’s Previously-Used and Famous Marks)



22. The mark shown in the Application so resembles Opposer’s famous Red Bull

Marks previously used in the United States and not abandoned as to be likely, when used on or in

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connection with the services identified in the Application, to cause confusion, to cause mistake,

and to deceive, and Applicant’s mark is thus unregistrable under § 2(d) of the United States

Trademark Act, 15 U.S.C. §1052(d).

23. Opposer will be damaged by registration of the mark shown in the Application

because registration of the mark would give Applicant prima facie evidence of its ownership of,

and exclusive right to use in commerce, a mark that is confusingly similar to Opposer’s famous,

previously-used and not-abandoned marks.

THIRD CLAIM FOR RELIEF (Dilution of Famous Marks)



25. Opposer’s Red Bull Marks are famous in the United States and became famous in

the United States long before the filing date of the Application, or any earlier date of actual use

of the mark shown in the Application upon which Applicant can rely.

26. Use of Applicant’s mark is likely to cause dilution by blurring of Opposer’s Red

Bull Marks in that Applicant’s target customers are likely to associate Applicant’s services with

Opposer and Opposer’s famous Red Bull Marks even if they are not confused as to the different

origins of these services.

27. Moreover, Applicant’s mark is likely to cause dilution by tarnishment of

Opposer’s Red Bull Marks in that Applicant’s use of its mark will harm the reputation of

Opposer’s famous Red Bull Marks.

28. Accordingly, the Application must be refused registration under Section 43(c) of

the United States Trademark Act, 15 U.S.C. §1125(c).

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FOURTH CLAIM FOR RELIEF (False Suggestion of a Connection)



30. The mark shown in the Application falsely suggests a connection between

Opposer and Applicant, and Applicant’s mark is thus unregistrable under § 2(a) of the United

States Trademark Act, 15 U.S.C. §1052(a).

PRAYER FOR RELIEF

WHEREFORE, Opposer Red Bull GmbH prays that this Opposition be sustained,

and that registration of the mark in the Application be refused. Please direct all notices,

pleadings and process regarding this matter to the below.

Respectfully submitted,

KILPATRICK TOWNSEND & STOCKTON LLP

Dated: September 23, 2020 By: /Tiffany D. Otey/ Tywanda Harris Lord Kilpatrick Townsend & Stockton LLP 1100 Peachtree Street NE Suite 2800 Atlanta, GA USA 30309 Telephone: (404) 745-2597 [email protected]

Tiffani D. Otey Kilpatrick Townsend & Stockton LLP 1001 West Fourth Street Winston-Salem, NC 27101-2400 Telephone: (336)-607-7503 [email protected]

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Camden A. Minervino Kilpatrick Townsend & Stockton LLP 1801 Century Park East Suite 2300 Los Angeles, CA 90067 Telephone: (310) 777-3725 [email protected]

Attorneys for Opposer Red Bull GmbH

Documents

Red Bull v. Lendtzke