Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1066650
`07/07/2020
`
`ESTTA Tracking number:
`
`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
`
`Neal Technologies, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`07/08/2020
`
`4245 EAST PALM STREET
`MESA, AZ 85212
`UNITED STATES
`
`JULIE C. BERGKAMP
`CANTEY HANGER LLP
`600 WEST 6TH STREET, SUITE 300
`FORT WORTH, TX 76102
`UNITED STATES
`Primary Email: jbergkamp@canteyhanger.com
`Secondary Email(s): mduran@canteyhanger.com, pvickers@canteyhanger.com,
`sfredricks@canteyhanger.com
`8178772812
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88406429
`
`Publication date
`
`03/10/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`07/07/2020
`
`Opposition Peri-
`od Ends
`
`07/08/2020
`
`Bulletproof Automotive, LLC
`3523 JACK NORTHROP AVE.
`HAWTHORNE, CA 90250
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 012. First Use: 2002/04/01 First Use In Commerce: 2002/04/01
`All goods and services in the class are opposed, namely: Automotive body kits comprising external
`structural parts of automobiles; Pre-designed vinyl vehicle wraps specially adapted for vehicles; all of
`the foregoinggoods excluding vehicle diesel engines and their component parts, vehicle engine
`mounts and their component parts, and vehicle steering and suspension systems and their compon-
`ent parts
`
`Class 037. First Use: 2002/04/01 First Use In Commerce: 2002/04/01
`All goods and services in the class are opposed, namely: Car washing; Automobile cleaning and car
`washing; all of the foregoing servicesexcluding repair, maintenance, and installation of diesel engines
`and their component parts
`
`

`

`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5220129
`
`Registration Date
`
`06/13/2017
`
`Application Date
`
`10/19/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BULLET PROOF
`
`NONE
`
`Class 037. First use: First Use: 2009/06/01 First Use In Commerce: 2009/06/01
`Automotive repair and maintenance services, namely, repair and maintenance
`of diesel engines, and repair and installation of diesel engine components
`
`U.S. Registration
`No.
`
`5130772
`
`Registration Date
`
`01/31/2017
`
`Application Date
`
`09/29/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`BULLET PROOF
`
`NONE
`
`Class 035. First use: First Use: 2009/06/01 First Use In Commerce: 2009/06/01
`Retail store services featuring diesel engine parts; on-line retail store services
`featuring diesel engine parts; wholesale store services featuring diesel engine
`parts
`
`U.S. Registration
`No.
`
`5854736
`
`Registration Date
`
`09/10/2019
`
`Word Mark
`
`Design Mark
`
`BULLETPROOF
`
`Application Date
`
`07/17/2018
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 007. First use: First Use: 2018/07/16 First Use In Commerce: 2018/07/16
`Automotive components, namely, oil coolers and exhaust gas recirculation cool-
`ers for diesel engines; oil filtration systems comprised of filters for diesel en-
`gines; water pumps for diesel engines; and fuel injection control modules for
`diesel engines
`
`Attachments
`
`76718573#TMSN.png( bytes )
`76718511#TMSN.png( bytes )
`88041096#TMSN.png( bytes )
`Notice of Opposition to 88406429.pdf(302360 bytes )
`Exhibit A.pdf(1744291 bytes )
`Exhibit B.pdf(1620868 bytes )
`Exhibit C.pdf(1294627 bytes )
`Exhibit D Part 1.pdf(927585 bytes )
`Exhibit D Part 2.pdf(5806174 bytes )
`Exhibit D Part 3.pdf(2624988 bytes )
`Exhibit D Part 4.pdf(3696440 bytes )
`Exhibit D Part 5.pdf(2573192 bytes )
`Exhibit E Part 1.pdf(1944282 bytes )
`Exhibit E Part 2.pdf(1862782 bytes )
`Exhibit E Part 3.pdf(5468283 bytes )
`Exhibit E Part 4.pdf(3116879 bytes )
`Exhibit E Part 5.pdf(4859815 bytes )
`Exhibits F-I.pdf(2331516 bytes )
`
`Signature
`
`/juliebergkamp/
`
`Name
`
`Date
`
`JULIE C. BERGKAMP
`
`07/07/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of the Trademark Application Serial No. 88406429 for the
`mark “BULLETPROOF” filed by Bulletproof Automotive, LLC and
`Published in the Official Gazette on March 10, 2020
`
`Neal Technologies, Inc.,
`
`Opposer,
`
`v.
`
`Bulletproof Automotive, LLC,
`
`Applicant.
`
`Opposition No. ______________
`
`NOTICE OF OPPOSITION
`
`Neal Technologies, Inc., an Arizona corporation, whose address is 4245 East Palm
`
`Street, Mesa, Arizona 85215 (“Opposer”), believes that it would be damaged by the
`
`registration of the mark BULLETPROOF that is the subject of the application Serial No.
`
`88406429 published in the Official Gazette on March 10, 2020, and therefore requests
`
`that registration to Applicant, Bulletproof Automotive, LLC, be refused.
`
`The grounds for the opposition are:
`
`The Opposed Application
`
`1.
`
`Bulletproof Automotive LLC, a California limited liability company, with
`
`its address at 3525 Jack Northrop Ave, Hawthorne, California 90250 (“Applicant”), is the
`
`owner of application Serial No. 88406429 and seeks to register the mark
`
`BULLETPROOF in standard characters (“Applicant’s Mark”) as a trademark for these
`
`goods and services (the “Opposed Application”):
`
`1
`
`

`

`a.
`
`International Class 12 covering “Automotive body kits comprising
`
`external structural parts of automobiles; Pre-designed vinyl vehicle
`
`wraps specially adapted for vehicles; all of the foregoing goods
`
`excluding vehicle diesel engines and their component parts, vehicle
`
`engine mounts and their component parts, and vehicle steering and
`
`suspension systems and their component parts”; and
`
`b.
`
`International Class 37 covering “Car washing; Automobile cleaning and
`
`car washing; all of the foregoing services excluding repair, maintenance,
`
`and installation of diesel engines and their component parts.”
`
`The Opposed Application was filed on April 29, 2019.
`
`The Applicant’s Mark was published for opposition on or about March 10,
`
`2.
`
`3.
`
`2020. Opposer filed requests for extension of time to oppose, which were granted until
`
`July 8, 2020.
`
`Opposer’s BULLETPROOF Marks
`
`4.
`
`Opposer is the owner of at least the following U.S. Trademark
`
`Registrations:
`
`Mark
`
`BULLET PROOF
`
`Reg. No./
`Serial No.
`5130772/
`76718511
`
`Application
`Date
`Sept. 29,
`2015
`
`2
`
`Goods/Services
`
`Registration
`Date
`Jan. 31, 2017 Class 35: Retail store
`services featuring
`diesel engine parts;
`on-line retail store
`services featuring
`diesel engine parts;
`wholesale store
`services featuring
`diesel engine parts.
`
`

`

`Mark
`
`BULLET PROOF
`
`Reg. No./
`Serial No.
`5220129/
`76718573
`
`Application
`Date
`Oct. 19,
`2015
`
`Registration
`Date
`June 13,
`2017
`
`BULLETPROOF
`
`5854736/
`88041096
`
`July 17,
`2018
`
`Sept. 10,
`2019
`
`Goods/Services
`
`Class 37: Automotive
`repair and
`maintenance services,
`namely, repair and
`maintenance of diesel
`engines, and repair
`and installation of
`diesel engine
`components.
`Class 7: Automotive
`components, namely,
`oil coolers and exhaust
`gas recirculation
`coolers for diesel
`engines; oil filtration
`systems comprised of
`filters for diesel
`engines; water pumps
`for diesel engines; and
`fuel injection control
`modules for diesel
`engines.
`
`Copies of the TSDR records for these marks showing status and title and of the
`
`Registration Certificates are attached as Exhibits A, B, and C, respectively.
`
`5.
`
`Opposer also has common law rights in the mark BULLETPROOF for use
`
`in connection with the sale of automotive parts and accessories and for automotive repair
`
`and maintenance services since at least as early as June 1, 2009.
`
`3
`
`

`

`6.
`
`Opposer’s registered and common law rights in the mark BULLETPROOF,
`
`along and in combination with other registered and common law words or designs,1 are
`
`collectively referred to in this document as the “BULLETPROOF Marks.”
`
`7.
`
`Opposer has made substantial sales of goods and services under the
`
`BULLETPROOF Marks. Opposer has also licensed the use of the BULLETPROOF
`
`Marks to independent repair shops throughout the United States in connection with the
`
`sale and installation of Opposer’s goods.
`
`8.
`
`Because of Opposer’s use and registration of the BULLETPROOF Marks,
`
`Opposer has developed substantial goodwill in the BULLETPROOF Marks, and the
`
`public associates the BULLETPROOF Marks with the Opposer’s goods and services.
`
`9.
`
`Applicant’s Mark and Opposer’s BULLETPROOF Marks, both in standard
`
`characters, are identical and thus confusingly similar in sight, sound, meaning, and
`
`commercial impression.
`
`10.
`
`On information and belief, Applicant knew of Opposer’s BULLETPROOF
`
`Marks when Applicant filed the Opposed Application.
`
`The Examiner’s Amendments
`
`11.
`
`In addition to the services noted in paragraph 1 above, Applicant’s original
`
`application also sought to register BULLETPROOF for use in connection with
`
`“[a]utomotive upgrade services, namely, supercharging, turbocharging and performance
`
`upgrades of automobiles.” (See the Apr. 29, 2019 TEAS Plus Application attached as
`
`1 Opposer also holds registrations for the word and/or design marks BULLETPROOFDIESEL.COM, BULLET
`PROOF DIESEL, and BULLETPROOFDIESEL, Reg. Nos. 4262825, 4235578, 5220127, and 5220128, among
`others.
`
`4
`
`

`

`Exhibit D.) The original application indicated that Applicant’s first use of
`
`BULLETPROOF in connection with such “supercharging, turbocharging and
`
`performance upgrade” services was January 1, 2013. (Id.)
`
`12.
`
`The Trademark Examiner initially refused the Application in part because
`
`of a likelihood of confusion with Opposer’s marks. (See July 2, 2019 Office Action,
`
`attached as Exhibit E.) In an apparent effort to eliminate the likelihood of confusion, the
`
`Examiner issued Examiner’s Amendments that made the following changes to the goods
`
`and services in the Opposed Application:2
`
`Class 012: Automotive body kits comprising external structural parts of
`automobiles; Pre-designed vinyl vehicle wraps specially adapted for vehicles; all
`of the foregoing goods excluding vehicle diesel engines and their component
`parts, vehicle engine mounts and their component parts, and vehicle steering
`and suspension systems and their component parts.
`
`Class 037: Automotive upgrade services, namely, supercharging, turbocharging
`and performance upgrades of automobiles; Car washing; Automobile cleaning and
`car washing; all of the foregoing services excluding repair, maintenance, and
`installation of diesel engines and their component parts.
`
`(See Examiner’s Amendments dated Jan. 22, 2020 and Jan. 29, 2020, and Final Office
`
`Action dated Jan. 28, 2020 (without attachments), attached as Exhibits F, G, and H,
`
`respectively (emphasis added).)
`
`13.
`
`Thus, the Examiner amended the Application to remove any reference to
`
`the Applicant’s providing any automobile engine upgrade services and required
`
`Applicant to disclaim certain repair and maintenance goods and services for “diesel
`
`engines.” (See Exhibits F and G.)
`
`2 Added language is depicted in bold underlined type. Removed language is depicted with a strikethrough.
`5
`
`

`

`14.
`
`Although the descriptions proposed in the final Opposed Application only
`
`cover non-engine-related parts and services (i.e., body kits, vinyl wraps, car washes, and
`
`cleaning), the addition of the word “diesel” to the exclusion sows seeds of confusion over
`
`whether the registration might nevertheless grant Applicant rights to use
`
`BULLETPROOF in connection with non-diesel engine services. This likelihood of
`
`confusing similarity was acknowledged by Applicant’s counsel in correspondence with
`
`Opposer’s counsel.
`
`Applicant’s Unreasonable Interpretation
`
`15.
`
`In an effort to clarify the scope of the proposed registration and to eliminate
`
`the possibility of confusion caused by the “diesel engine” exclusion, Opposer asked
`
`Applicant to remove the word “diesel” from the exclusionary language in the Opposed
`
`Application. Even though the Opposed Application’s descriptive language does not
`
`cover any engine parts or services, Applicant’s Counsel suggested in response that the
`
`registration would nevertheless grant Applicant the right to use the term
`
`BULLETPROOF in connection with “aftermarket engine performance ‘tuning,’ or ‘tune-
`
`ups’” for non-diesel engines. (See correspondence attached as Exhibit I.)
`
`Opposition Due to Likelihood of Confusion
`
`16.
`
`Applicant’s use of BULLETPROOF with non-diesel engine services, as
`
`unreasonably described by Applicant’s Counsel, would infringe on Opposer’s common
`
`law rights to exclusive use of the BULLETPROOF Marks in connection with automotive
`
`engine repair goods and services.
`
`6
`
`

`

`17.
`
`As an example, Opposer uses the BULLETPROOF Marks in connection
`
`with after-market engine parts and other accessories for diesel and non-diesel work and
`
`passenger trucks, such as oil fill caps, antenna mounts, and diagnostic tools and
`
`equipment. Opposer further licenses independently-owned truck and automobile repair
`
`shops to advertise, sell, and install Opposer’s BULLETPROOF-branded goods and
`
`services using the BULLETPROOF Marks. And Opposer’s customers would reasonably
`
`expect Opposer to expand its use of the BULLETPROOF Marks to additional related
`
`engine services, parts, and accessories, both for diesel and non-diesel engines.
`
`18.
`
`If Applicant’s correspondence to Opposer is to be believed, Applicant’s
`
`Mark, if registered, may apply to goods sold and services performed in connection with
`
`non-diesel engines. Applicant’s use and registration of Applicant’s Mark will inevitably
`
`lead to confusion, to mistake, or to deception as to the origin of Applicant’s goods and
`
`services in that the consuming public are likely to mistakenly believe that Applicant’s
`
`goods and services are provided by, sponsored by, affiliated with, or in some other way
`
`connected to Opposer as related goods or services.
`
`19.
`
`If Applicant is allowed to register the Applicant’s Mark for non-diesel
`
`engine parts or services that are similar and/or related to the goods and services identified
`
`with the BULLETPROOF Marks or within the zone of expansion of the
`
`BULLETPROOF Marks, Opposer will suffer damage and injury from the resulting
`
`likelihood of confusion among consumers as to the source of the Applicant’s and
`
`Opposer’s respective goods and services.
`
`7
`
`

`

`20.
`
`Further, if Applicant is allowed to register the Applicant’s Mark for non-
`
`diesel engine goods or services that are similar and/or related to the goods and services
`
`identified in the BULLETPROOF Marks, or are within the zone of expansion of the
`
`BULLETPROOF Marks, the registration of Applicant’s Mark will be prima facie
`
`evidence of the Applicant’s exclusive right to use its confusingly similar mark on goods
`
`or services that are the same, similar, or within the zone of natural expansion of the goods
`
`and services covered by the BULLETPROOF Marks and will injure Opposer’s rights in
`
`the Bulletproof Marks.
`
`WHEREFORE, Opposer prays that the present opposition be sustained, that
`
`application Serial No. 88406429 be rejected, and that the mark sought for goods and
`
`services as described in the Opposed Application be denied and refused.
`
`Respectfully submitted,
`
`/s/ Julie C. Bergkamp
`Julie C. Bergkamp
`Texas State Bar No. 24045487
`Philip Vickers
`Texas State Bar No. 24051699
`CANTEY HANGER LLP
`600 West 6th St., Suite 300
`Fort Worth, Texas 76102
`(817) 877-2800
`(817) 877-2807 – Fax
`jbergkamp@canteyhanger.com
`pvickers@canteyhanger.com
`
`ATTORNEYS FOR OPPOSER
`NEAL TECHNOLOGIES, INC.
`
`8
`
`

`

`CERTIFICATE OF SERVICE
`
`I certify that on July 7, 2020 I served the foregoing document on counsel for
`Applicant via E-mail and First Class Mail as follows:
`
`John D. Tran
`Rhema Law Group
`1 Park Plaza, 6th Floor
`Irvine, CA 92614
`ipdocket@rhemalaw.com
`jdt@rhemalaw.com
`
`/s/ Julie C. Bergkamp
`Julie C. Bergkamp
`
`9
`
`

`

`Exhibit
`
`

`

`Generated on: This page was generated by TSDR on 2020-07-01 21:44:46 EDT
`Mark: BULLET PROOF
`
`US Serial Number: 76718511
`
`US Registration 5130772
`Number:
`
`Register: Principal
`
`Mark Type: Service Mark
`TM5 Common Status
`Descriptor:
`
`Application Filing Sep. 29, 2015
`Date:
`
`Registration Date: Jan. 31, 2017
`
`LIVE/REGISTRATION/lssued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The Trademark Trial and Appeal Board has terminated a cancellation proceeding. For further information, see TTABVUE on the
`Trademark Trial and Appeal Board web page.
`
`Status Date: Sep. 27, 2019
`
`Publication Date: Oct. 11, 2016
`
`Mark Literal BULLET PROOF
`Elements:
`
`Mark Information
`
`Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`Claim:
`
`Mark Drawing 4 - STANDARD CHARACTER MARK
`Type:
`
`Related Properties Information
`
`Claimed Ownership 4235578, 4262825
`of US
`Registrations:
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`o Brackets [..] indicate deleted goods/services;
`I Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`I Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Retail store services featuring diesel engine parts; on-line retail store services featuring diesel engine parts; wholesale store services
`featuring diesel engine parts
`
`International 035 - Primary Class
`Class(es):
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 01, 2009
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 440: No
`
`Filed 44E: No
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: Jun. 01, 2009
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`

`

`Filed 66A:
`
`Filed No Basis:
`
`No
`No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name:
`
`Owner Address:
`
`Neal Technologies, Inc.
`4245 East Palm Street
`Mesa, ARIZONA UNITED STATES 85215
`
`Legal Entity Type:
`
`CORPORATION
`
`State or Country ARIZONA
`Where Organized:
`
`Attorney/Correspondence Information
`
`Attorney Name: James W. Armstrong
`
`Attorney Primary armstrong@sackstierney.com
`Email Address:
`
`Attorney of Record
`
`Attorney Email No
`Authorized:
`
`Correspondent
`
`Correspondent RICHARD L SCHWARTZ
`Name/Address
`: WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 COMMERCE ST
`STE 3500
`FORT WORTH, TEXAS UNITED STATES 76102
`
`Phone
`
`:
`
`(480)425-2628
`
`Correspondent e
`mail
`
`- armstrong@sackstierney.com
`:
`
`Correspondent e- No
`mail Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`May 28, 2020
`Apr. 15, 2020
`Sep. 27, 2019
`Sep. 27, 2019
`Sep. 27, 2019
`Nov. 19,2018
`Oct. 29, 2018
`Apr. 16, 2018
`Feb. 21, 2018
`Jan. 31, 2017
`Dec. 26, 2016
`Nov. 10, 2016
`Oct. 11,2016
`Sep. 21, 2016
`Sep. 06, 2016
`Sep. 04, 2016
`Aug. 02, 2016
`Aug. 02,2016
`Jul. 28, 2016
`Jul. 28, 2016
`Jul. 23, 2016
`Jul. 20, 2016
`Jan. 21, 2016
`Jan. 20, 2016
`Jan. 20, 2016
`Oct. 06, 2015
`Sep. 30,2015
`
`TICE OF SUIT
`TICE OF SUIT
`
`NO
`NO
`TTAB RELEASE CASE TO TRADEMARKS
`NCELLATION TERMINATED NO. 999999
`CA
`NCELLATION DENIED NO. 999999
`CA
`TICE OF SUIT
`NO
`TICE OF SUIT
`NO
`TICE OF SUIT
`NO
`NCELLATION INSTITUTED NO. 999999
`CA
`REGISTERED-PRINCIPAL REGISTER
`EXTENSION OF TIME TO OPPOSE PROCESS - TERMINATED
`EXTENSION OF TIME TO OPPOSE RECEIVED
`BLISHED FOR OPPOSITION
`PU
`TICE OF PUBLICATION
`NO
`LETTER OF PROTEST EVIDENCE REVIEWED-NO FURTHER ACTION TAKEN
`LETTER OF PROTEST ACCEPTED
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`AMENDMENT FROM APPLICANT ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`ASSIGNED TO LIE
`PAPER RECEIVED
`NON-FINAL ACTION MAILED
`NON-FINAL ACTION WRI'I'I'EN
`ASSIGNED TO EXAMINER
`APPLICATION FILING RECEIPT MAILED
`NEWAPPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Proceeding
`Number
`
`67945
`67945
`67945
`
`67945
`
`92578
`
`68171
`
`68171
`68171
`68171
`
`92578
`92578
`
`

`

`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`
`Current Location:
`
`PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jan. 31, 2017
`
`Proceedings
`
`Summary
`Number of
`Proceedings:
`
`2
`
`Proceeding
`N umber:
`
`92067945
`
`Terminated
`JILL M MCCORMACK
`
`Status:
`
`lnterlocutory
`Attorney:
`
`Name:
`
`Correspondent
`Address:
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`BULLET PROOF
`BULLET PROOF
`
`Type of Proceeding: Cancellation
`
`Filing Date: Feb 15, 2018
`
`Status Date: Sep 27, 2019
`
`Defendant
`
`Neal Technologies, Inc.
`RICHARD L SCHWARTZ
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 COMMERCE ST, STE 3500
`FORT WORTH TX UNITED STATES , 76102
`
`tgv_vynne@whitakerchalk.com , rschwartz@whitakerchalk.com
`
`Application Status
`Cancellation Terminated - See TTAB Records
`Cancellation Terminated - See TTAB Records
`
`33:3”
`76718573
`76718511
`
`Sigiiglation
`5220129
`5130772
`
`Plaintiff(s)
`
`Due Date
`
`Apr 02,2018
`
`Date
`Feb 15, 2018
`Feb 21,2018
`Feb 21,2018
`Mar 06, 2018
`Mar 29, 2018
`Apr 19, 2018
`Apr 30,2018
`May 08, 2018
`May 09,2018
`Jul 10,2018
`Jul 25, 2019
`
`Sep 27,2019
`Sep 27, 2019
`
`Name:
`
`Correspondent
`Address:
`
`Unique Motorsports inc
`DUSTIN HELMS
`UNIQUE MOTORSPORTS INC
`500 EAST STATE HWY 121
`LEWISVILLE TX UNITED STATES , 75057
`
`Correspondent e-
`mail:
`
`dustin@unigue-motorsgortscom
`
`Prosecution History
`
`History Text
`FILED AND FEE
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`PENDING, INSTITUTED
`D MOT FOR EXT W/O CONSENT
`D REQUEST
`RESPONSE DUE
`D RESP TO BD ORDER/INQUIRY
`DIS CT JURY VERDICT
`D MOT TO SUSP PEND DISP CIV ACTION
`CONSOLIDATED; PROC SUSP PEND DISP 0F BANKRUPTCY CASE
`D MOT TO DISMISS
`
`BD DECISION: CAN DENIED W/PREJ
`TERMINATED
`
`Entry Number
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`
`Proceeding
`Number:
`
`76718511
`
`Type of Proceeding: Extension of Time
`
`Filing Date: Nov 10, 2016
`
`

`

`Status:
`
`Terminated
`
`Status Date: Dec 26, 2016
`
`Interlocutory
`Attorney:
`
`Name:
`
`Correspondent
`Address:
`
`Associated marks
`
`Mark
`
`BULLET PROOF
`
`Defendant
`
`Neal Technologies, Inc.
`JAMES W. ARMSTRONG
`SACKS TIERNEY
`4250 N DRINKWATER BLVD FL 4
`SCOTTSDALE AZ , 85251-3693
`
`.
`.
`Appllcatlon Status
`Cancellation Terminated - See TTAB Records
`
`Potential Opposer(s)
`
`Serial
`Number
`76718511
`
`Registration
`Number
`
`m
`
`Name:
`
`Correspondent
`Address:
`
`Unique Motorsports Inc.
`Gerald W. Roberts
`G. W. Roberts Law Firm, PLLC
`5001 Spring Valley RoadSuite 400 East
`Dallas TX UNITED STATES , 75244
`
`Correspondent e- gwroberts@robertslawdallas.com , geraldwroberts@netzero.net
`mail:
`
`Prosecution History
`
`Entry Number
`
`History Text
`INCOMING - EXT TIME TO OPPOSE FILED
`EXTENSION OF TIME GRANTED
`
`Date
`Nov 10, 2016
`Nov 10, 2016
`
`Due Date
`
`

`

`“my étatefi of Qmer
`mutter: gamma iBatent anti wrahemark QBffiuz
`In?
`
`BULLET PROOF
`
`Reg. No. 5,130,772
`
`Neal Technologies, Inc. (ARIZONA CORPORATION)
`4245 East Palm Street
`
`Registered Jan. 31, 2017 Mesa, AZ 85215
`
`Int Cl , 35
`'
`' '
`
`CLASS 35: Retail store services featuring diesel engine parts; on-line retail store services
`featuring diesel engine parts; wholesale store services featuring diesel engine parts
`
`Serv1ce Mark
`
`FIRST USE 6-1-2009; IN COMMERCE 6-1-2009
`
`Principal Register
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 4235578, 4262825
`
`SER. NO. 76-718,511, FILED 09-29-2015
`THOMAS PAUL YOUNG, EXAMINING ATTORNEY
`
`
`
`Director of the United States
`
`Patent and Trademark Office
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`
`Requirements in the First Ten Years*
`What and When to File:
`
`. First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`
`years after the registration date. See 15 U.S.C. §§ 1058, 1141k.
`
`If the declaration is accepted, the
`
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`0 Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
`
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`and an Application for Renewal
`file a Declaration of Use (or Excusable Nonuse)
`. You must
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the US. registration date (not the international registration date). The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations. See 15 U.S.C. §§105 8, 1141k. However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the World Intellectual Property Organization, under
`Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated fi'om the
`date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
`international registration, see http://www.wipo.int/madrid/en/.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online at h
`ttp://www.uspto.gov.
`
`NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of2 / RN # 5130772
`
`

`

`Exhibit
`
`

`

`Generated on: This page was generated by TSDR on 2020-07-01 21:46:02 EDT
`Mark: BULLET PROOF
`
`US Serial Number: 76718573
`
`US Registration 5220129
`Number:
`
`Register: Principal
`
`Mark Type: Service Mark
`TM5 Common Status
`Descriptor:
`
`Application Filing Oct. 19, 2015
`Date:
`
`Registration Date: Jun. 13, 2017
`
`LIVE/REGISTRATION/lssued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The Trademark Trial and Appeal Board has terminated a cancellation proceeding. For further information, see TTABVUE on the
`Trademark Trial and Appeal Board web page.
`
`Status Date: Sep. 27, 2019
`
`Publication Date: Mar. 28, 2017
`
`Mark Literal BULLET PROOF
`Elements:
`
`Mark Information
`
`Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`Claim:
`
`Mark Drawing 4 - STANDARD CHARACTER MARK
`Type:
`
`Related Properties Information
`
`Claimed Ownership 4235578, 4262825
`of US
`Registrations:
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`o Brackets [..] indicate deleted goods/services;
`I Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`I Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Automotive repair and maintenance services, namely, repair and maintenance of diesel engines, and repair and installation of diesel
`engine components
`
`International 037 - Primary Class
`Class(es):
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 01, 2009
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 440: No
`
`Filed 44E: No
`
`U.S Class(es): 100, 103, 106
`
`Use in Commerce: Jun. 01, 2009
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`

`

`Filed 66A: No
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Neal Technologies, Inc.
`Owner Address: 4245 East Palm Street
`Mesa, ARIZONA UNITED STATES 85215
`
`Legal Entity Type: CORPORATION
`
`State or Country ARIZONA
`Where Organized:
`
`Attorney/Correspondence Information
`
`Attorney Name: James W. Armstrong
`
`Attorney Primary ARMSTRONG@SACKSTIERNEY.COM
`Email Address:
`
`Attorney Email No
`Authorized:
`
`Attorney of Record
`
`Correspondent
`
`Correspondent RICHARD L SCHWARTZ
`Name/Address: WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 COMMERCE ST
`STE 3500
`FORT WORTH, TEXAS UNITED STATES 76102
`
`Phone: 480) 425-2628
`
`Fax: 480.425.4928
`
`Correspondent e- ARMSTRONG@SACKSTIERNEY.COM
`mail:
`
`Correspondent e- No
`mail Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`May 28, 2020
`Apr. 15,2020
`Sep. 27, 2019
`Sep. 27, 2019
`Sep. 27, 2019
`Nov. 19, 2018
`Oct. 29, 2018
`Apr. 16, 2018
`Feb. 21, 2018
`Jun. 13, 2017
`Mar. 28, 2017
`Mar. 08, 2017
`Feb. 22, 2017
`Feb. 07,2017
`Feb. 06,2017
`Feb. 06,2017
`Jan. 30, 2017
`Nov. 01, 2016
`Oct. 31, 2015
`
`Aug. 10, 2015
`Aug. 10, 2015
`Jul. 28, 2015
`Jul. 28, 2015
`Jul. 23, 2015
`Jul. 20, 2015
`Jan. 21, 2015
`Jan. 20, 2015
`
`Description
`NOTICE OF SUIT
`NOTICE OF SUIT
`TTAB RELEASE CASE TO TRADEMARKS
`CANCELLATION TERMINATED NO. 999999
`CANCELLATION DENIED NO. 999999
`NOTICE OF SUIT
`NOTICE OF SUIT
`NOTICE OF SUIT
`CANCELLATION INSTITUTED NO. 999999
`REGISTERED-PRINCIPAL REGISTER
`PUBLISHED FOR OPPOSITION
`NOTICE OF PUBLICATION
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`AMENDMENT FROM APPLICANT ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`PAPER RECEIVED
`LETTER OF PROTEST EVIDENCE REVIEWED-NO FURTHER ACTION TAKEN
`LETTER OF PROTEST ACCEPTED
`
`PRIORITY ACTION MAILED
`PRIORITY ACTION WRITTEN
`AMENDMENT FROM APPLICANT ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`ASSIGNED TO LIE
`PAPER RECEIVED
`NON-FINAL ACTION MAILED
`NON-FINAL ACTION WRITTEN
`
`:Lcmgzging
`
`57945
`57945
`67945
`
`67945
`
`68171
`
`68171
`68171
`
`92578
`
`92578
`58171
`58171
`58171
`
`92578
`
`

`

`92578
`
`Jan. 20, 2016
`Nov. 17, 2015
`Nov. 16,2015
`Nov. 16,2015
`Nov. 11,2015
`Nov. 10,2015
`Nov. 06, 2015
`Oct. 27, 2015
`Oct. 21, 2015
`
`ASSIGNED TO EXAMINER
`APPLICATION FILING RECEIPT MAILED
`FILING RECEIPT CORRECTION ENTERED
`PAPER RECEIVED
`APPLICATION FILING RECEIPT MAILED
`FILING RECEIPT CORRECTION ENTERED
`PAPER RECEIVED
`APPLICATION FILING RECEIPT MAILED
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jun. 13, 2017
`
`Proceedlngs
`
`Summary
`Number of
`Proceedings:
`
`1
`
` Type of Proceeding: Cancellation
`Proceeding 92067945
`Filing Date: Feb15,2018
`Number:
`
`Status: Terminated
`
`lnterlocutory JILL M MCCORMACK
`Attorney:
`
`Status Date: Sep 27, 2019
`
`Defendant
`
`Name: Neal Technologies, Inc.
`
`Correspondent RICHARD L SCHWARTZ
`Address: WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 COMMERCE ST, STE 3500
`FORT WORTH TX UNITED STATES , 76102
`
`Correspondent e- tgv_vynne@whitakerchalk.com , rschwartz@whitakerchalk.com
`mail:
`
`Associated marks
`
`Mark
`
`BULLET PROOF
`
`BULLET PROOF
`
`Application Status
`
`Cancellation Terminated - See TTAB Records
`
`Cancellation Terminated - See TTAB Records
`
`Plaintiff(s)
`
`Serial
`Number
`75718573
`76718511
`
`Registration
`Number
`5220129
`
`m
`
`Name: Unique Motorsports inc
`
`Correspondent DUSTIN HELMS
`Address: UNIQUE MOTORSPORTS INC
`500 EAST STATE HWY 121
`LEWISVILLE TX UNITED STATES , 75057
`
`Correspondent e- dustin@unigue-motorsgortscom
`mail:
`
`Prosecution History
`
`Entry Number
`
`History Text
`FILED AND FEE
`
`\IO‘JU'l-th—‘k
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`PENDING, INSTITUTED
`D MOT FOR EXT W/O CONSENT
`D REQUEST
`RESPONSE DUE
`D RESP T0 BD ORDER/INQUIRY
`
`Due Date
`
`Apr 02, 2018
`
`Date
`
`Feb 15, 2018
`Feb 21, 2018
`Feb 21, 2018
`Mar 06, 2018
`Mar 29, 2018
`
`Apr 19, 2018
`Apr 30, 2018
`
`

`

`10
`11
`12
`13
`
`DIS CT JURY VERDICT
`D MOT TO SUSP PEND DISP CIV ACTION
`
`CONSOLIDATED; PROC SUSP PEND DISP OF BANKRUPTCY CASE
`D MOT TO DISMISS
`BD DECISION: CAN DENIED W/PREJ
`TERMINATED
`
`May 08, 2018
`May 09, 2018
`Jul 10, 2018
`Jul 25, 2019
`
`Sep 27, 2019
`Sep 27, 2019
`
`

`

`'(lfitfllt‘zb étatefi of gum,
`mutter: gamma iBatent anti wrahemark QBffiuz
`
`In?
`
`BULLET PROOF
`
`Reg. No. 5,220,129
`
`Neal Technologies, Inc. (ARIZONA CORPORATION)
`4245 East Palm Street
`
`Registered Jun. 13, 2017 Mesa,“ 85215
`
`Int Cl , 37