Red Bull GmbHv.Jordi Nogues, S.L. Red Bull GmbH v. Jordi Nogues, S.L.

Trademark Trial and Appeal Board

Apr 19, 2017

No. 92061202 (T.T.A.B. Apr. 19, 2017)

KWM Mailed: April 19, 2017

Opposition No. 91221325 (Parent Case)
Red Bull GmbH
v.
Jordi Nogues, S.L.

Cancellation No. 92061202

Red Bull GmbH
v.

Jordi Nogues, S.L.

Before Wolfson, Shaw and Pologeorgis,
Administrative Trademark Judges.

By the Board:
These consolidated proceedings now come before the Board for consideration of (1)
Red Bull GmbH’s (“Red Bull”) response (filed December 30, 2016) to the Board’s
December 2, 2016 order; and (2) Kirton McConkie’s motion (filed April 5, 2017) to
withdraw as Applicant’s representative.
Background
On August 9, 2016, Red Bull filed a motion for partial summary judgment solely
on its pleaded claim that Jordi Nogues, S.L. (“Applicant”) lacked a bona fide intent to
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91221325

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use the mark subject to its involved intent-to-use application Serial No. 86324277.1
On December 2, 2016, the Board issued an order finding that Red Bull demonstrated
that it is entitled to judgment on its claim of lack of a bona fide intent as a matter of
law, provided it submitted evidence demonstrating that there is no genuine dispute
of material fact as to its standing in Opposition No. 91221325. The Board further
requested Red Bull to indicate whether it wishes to go forward on its other pleaded
claims of likelihood of confusion, false suggestion of a connection with Red Bull, and
dilution, should it prevail on the lack of a bona fide intent to use claim.
On December 30, 2016, Red Bull submitted its response, together with a current
printout of information from USPTO electronic database records showing the current
status and title of Registration Nos. 3197810, 3881732, 3838170, 3092197, and
4647395. Red Bull also indicated that if this evidence demonstrates there is no
genuine dispute of material fact as to its standing in Opposition No. 91221325, and
judgment is entered against Applicant as to application Serial No. 86324277 on the
ground of lack of bona fide intent, Red Bull wishes to proceed on its other claims in
the cancellation proceeding only.
Red Bull’s Partial Motion for Summary Judgment
Red Bull has sufficiently established entitlement to summary judgment on the
issue of standing and on the pleaded ground of lack of bona fide intent. See Bongrain
Int’l (American) Corp. v. Moquet Ltd., 230 USPQ 626, 628 n.3 (TTAB 1986)
(submission of status and title copies of registration is sufficient to make registration

1 The motion was based on the alleged lack of a bona fide intent to use by the original
applicant, an individual by the name of Jordi Nogues.
Opposition No. 91221325

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of record for purposes of summary judgment). Accordingly, summary judgment is
hereby entered in Red Bull’s favor in Opposition No. 91221325, the opposition is
sustained, and registration of application Serial No. 86324277 is refused.
Further Proceedings
“Where a final disposition has been entered as to some, but not all, of the cases in
a consolidated proceeding, the remaining cases will no longer be considered
consolidated with the cases for which a final disposition has been entered.” TBMP
§ 511 (Jan. 2017). Since we have entered a final disposition with regard to Opposition
No. 91221325, that proceeding is no longer consolidated with Cancellation No.
92061202. Cancellation No. 92061202 will proceed on its own on the pleaded grounds
of (1) likelihood of confusion; (2) false suggestion of a connection with Red Bull; (3)
dilution; and (4) non-use.
Motion to Withdraw
Kirton McConkie’s motion to withdraw from representation of Defendant Jordi
Nogues, S.L. complies with the requirements of Trademark Rule 2.19 and Patent and
Trademark Rule 11.116, and is accordingly granted. The law firm of Kirton
McConkie no longer represents Defendant Jordi Nogues, S.L. in this proceeding. In
view of the withdrawal of counsel, and in accordance with standard Board practice,
proceedings are suspended and Defendant Jordi Nogues, S.L. is allowed until thirty
days from the mailing date of this order to appoint new counsel, or to file a paper
stating that it chooses to represent itself. If Defendant Jordi Nogues, S.L. files no
response, the Board may issue an order to show cause why default judgment should
Opposition No. 91221325

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not be entered against it based on its apparent loss of interest in the proceeding.
Defendant Jordi Nogues, S.L. should file its response to this order in
Cancellation No. 92061202 only.
As noted, Opposition No. 91221325 is sustained, proceedings herein are
no longer consolidated, and Cancellation No. 92061202 is hereby suspended
pending Defendant Jordi Nogues, S.L.’s response to this Order.
A copy of this order has been sent to all persons listed below.
cc:
NICHOLAS D. WELLS
KIRTON MCCONKIE PC
1800 WORLD TRADE CENTER, 60 E SOUTH TEMPLE
SALT LAKE CITY, UT 84111

MARTIN R. GREENSTEIN
TECHMARK A LAW CORPORATION
4820 HARWOOD ROAD 2ND FLOOR
SAN JOSE, CA 95124-5237

JORDI NOGUES, S.L.
BRUC 114, PRAL 2”
BARCELONA, SPAIN 08009

Information regarding legal representation
While Patent and Trademark Rule 11.14 permits any entity to represent itself, it
is strongly advisable for an entity that is not acquainted with the technicalities of the
procedural and substantive law involved in inter partes proceedings before the Board
to secure the services of an attorney who is familiar with such matters. The Patent
and Trademark Office cannot aid in the selection of an attorney. See TBMP § 114.02.
Opposition No. 91221325

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Trademark Rules 2.119(a) and (b) require that every submission filed in a
proceeding before the Board must be served upon the other party or parties, and
proper proof of such service must be made before the submission will be considered
by the Board. Accordingly, all submissions filed in this proceeding must be
accompanied by a statement, signed by the party (if an individual) or his or her
attorney, or (if a corporation or other juridical entity), its attorney or other authorized
representative, attached to or appearing on the original submission when filed,
clearly stating the date and manner in which service was made, the name of each
party or person upon whom service was made, and the email address or other
authorized address at which service was made. See TBMP § 113.03. Service must be
made by email unless otherwise stipulated, or unless the filing party has satisfied the
requirements for another method of service as set forth in Trademark Rule 2.119(b).
The statement will be accepted as prima facie proof of service, must be signed and
dated, and should take the form of a Certificate of Service as follows:
I hereby certify that a true and complete copy of the foregoing (insert title of
submission) has been served on (insert name of opposing counsel or party) by
forwarding said copy on (insert date of mailing), via email (or insert other
appropriate method of delivery) to: (set out name, address, and email address
of opposing counsel or party).

Signature______________________________
Date___________________________________
Submissions in Board proceedings must be made via ESTTA, the Electronic
System for Trademark Trials and Appeals, and must be in compliance with
Trademark Rules 2.126(a) and (b). See TBMP § 110.01. The ESTTA user manual,
ESTTA forms, and instructions for their use are at http://estta.uspto.gov/.
Opposition No. 91221325

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Strict compliance with the Trademark Rules of Practice, and where applicable the
Federal Rules of Civil Procedure, is required of all parties, whether or not they are
represented by counsel. McDermott v. San Francisco Women’s Motorcycle Contingent,
81 USPQ2d 1212, n.2 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir.
2007), cert. denied, 552 U.S. 1109 (2008). Thus, it is strongly recommended that any
pro se party be familiar with the latest edition of Chapter 37 of the Code of Federal
Regulations, which includes the Trademark Rules of Practice. Parties should also be
familiar with the Trademark Trial and Appeal Board Manual of Procedure (TBMP),
available at http://www.uspto.gov/trademarks-application-process/trademark-trial-
and-appeal-board-ttab; the TTABVUE system for viewing the record for all Board
proceedings, available at http://ttabvue.uspto.gov/ttabvue/; and the Standard
Protective Order, available at https://www.uspto.gov/trademarks-application-
process/appealing-trademark-decisions/standard-documents-and-guidelines-0.

Recent Changes to the Trademark Rules of Practice
CHANGES TO THE TRADEMARK RULES OF PRACTICE, AFFECTING
PROCEEDINGS BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD,
BECAME EFFECTIVE JANUARY 14, 2017
The USPTO published a Notice of Final Rulemaking in the Federal Register on
October 7, 2016, at 81 Fed. Reg. 69950. It sets forth several amendments to the rules
that govern inter partes (oppositions, cancellations, concurrent use) and ex parte
appeal proceedings. A correction to the final rule was published on December 12,
2016, at 81 Fed. Reg. 89382.
For complete information, the parties are referred to:
• The Board’s home page on the uspto.gov website:
http://www.uspto.gov/trademarks-application-process/trademark-trial-
and-appeal-board-ttab
• The final rule:
Opposition No. 91221325

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http://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.
pdf
• The correction to the final rule:
http://www.uspto.gov/sites/default/files/documents/81%20FR%2089382.
pdf
• A chart summarizing the affected rules and changes:
http://www.uspto.gov/sites/default/files/documents/Chart%20Summariz
ing%20Rule%20Changes%2012-9-16.pdf

For all proceedings, including those already in progress on January 14, 2017, some of
the changes are:
• All pleadings and submissions must be filed through ESTTA.
Trademark Rules 2.101, 2.102, 2.106, 2.111, 2.114, 2.121, 2.123, 2.126,
2.190, and 2.191.
• Service of all papers must be made by email, unless otherwise
stipulated. Trademark Rule 2.119.
• Response periods are no longer extended by five days for service by first-
class mail, Priority Mail Express®, or overnight courier. Trademark
Rule 2.119.
• Deadlines for submissions to the Board that are initiated by a date of
service are 20 days. Trademark Rule 2.119. Responses to motions for
summary judgment remain 30 days. Similarly, deadlines for responses
to discovery requests remain 30 days.
• All discovery requests must be served early enough to allow for
responses prior to the close of discovery. Trademark Rule 2.120. Duty to
supplement discovery responses will continue after the close of
discovery.
• Motions to compel initial disclosures must be filed within 30 days after
the deadline for serving initial disclosures. Trademark Rule 2.120.
• Motions to compel discovery, motions to test the sufficiency of responses
or objections, and motions for summary judgment must be filed prior to
the first pretrial disclosure deadline. Trademark Rules 2.120 and 2.127.
• Requests for production and requests for admission, as well as
interrogatories, are each limited to 75. Trademark Rule 2.120.
• Testimony may be submitted in the form of an affidavit or declaration.
Trademark Rules 2.121, 2.123, and 2.125.
Opposition No. 91221325

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• New requirements for the submission of trial evidence and deposition
transcripts. Trademark Rules 2.122, 2.123, and 2.125.
This is only a summary of the significant content of the Final Rule. All parties
involved in a Board proceeding should read the entire Final Rule.