ESTTA Tracking number:
`
`Filing date:
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`ESTTA1375798
`08/07/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer information
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`Name
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`Tequila Cuervo, S.A. de C.V.
`
`Granted to date
`of previous ex-
`tension
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`Address
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`Attorney informa-
`tion
`
`08/07/2024
`
`AVENIDA PERIFERICO SUR NO. 8500
`TLAQUEPAQUE
`JALISCO, C.P.45609
`MEXICO
`
`ERICA HALSTEAD
`WOMBLE BOND DICKINSON (US) LLP
`950 THIRD AVE.
`SUITE 2400
`NEW YORK, NY 10022
`UNITED STATES
`Primary email: tmdocketing@wbd-us.com
`Secondary email(s): erica.halstead@wbd-us.com, docketingnyc@wbd-us.com
`3322588400
`
`Docket no.
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`115945.32412
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`Applicant information
`
`Application no.
`
`98035338
`
`Opposition filing
`date
`
`Applicant
`
`08/07/2024
`
`BD3, Inc.
`SUTE 110
`1108 LAVACA STREET
`AUSTIN, TX 78701
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`04/09/2024
`
`Opposition period
`ends
`
`08/07/2024
`
`Class 032. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Energy drinks; Non-alcoholic drinks,
`namely, energy shots
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`Grounds for opposition
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`Priority and likelihood of confusion
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`Trademark Act Section 2(d)
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`Marks cited by opposer as basis for opposition
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`U.S. registration
`no.
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`7331227
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`Application date
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`12/16/2022
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`
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`Register
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`Principal
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`Registration date
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`03/19/2024
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`Foreign priority
`date
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`NONE
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`Word mark
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`Design mark
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`Description of
`mark
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`Goods/services
`
`U.S. application
`no.
`
`MATADOR
`
`The mark consists of the word "MATADOR" in stylized letters.
`
`Class 033. First use: First Use: None First Use In Commerce: None
`Distilled blue agave liquor
`
`90154844
`
`Application date
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`09/02/2020
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`EL GRAN MATADOR
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 033. First use: First Use: None First Use In Commerce: None
`Distilled blue agave liquor
`
`Attachments
`
`97721112#TMSN.png( bytes )
`90154844#TMSN.png( bytes )
`MATADOR NOTICE OF OPPOSITION.pdf(110752 bytes )
`
`Signature
`
`/erh/
`
`Name
`
`Date
`
`ERICA HALSTEAD
`
`08/07/2024
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`v.
`
`Opposer,
`
`Opposition No.
`
`
`In re: Application No. 98035338 for the mark MATADOR
`Published: April 9, 2024
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`
`
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`Tequila Cuervo, S.A. de C.V.,
`
`
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`
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`BD3, Inc.,
`
`
`
`
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`Applicant.
`
`NOTICE OF OPPOSITION
`
`
`Tequila Cuervo, S.A. de C.V. (“Opposer”), a corporation of Mexico, with a business
`
`
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`address at Avenida Periferico Sur No. 8500, Tlaquepaque, Jalisco, MEXICO, C.P.45609,
`
`believes that it will be damaged by registration of the mark MATADOR in the name of BD3, Inc.
`(“Applicant”), a corporation of Delaware with a business address at 1108 Lavaca Street, Austin,
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`Texas 78701, Suite 110, and hereby opposes same.
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`
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`
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`1.
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`2.
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`3.
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`The grounds for opposition are as follows:
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`On June 9, 2023, Applicant filed an application to register the mark MATADOR, which was
`assigned Ser. No. 98035338 (“Applicant’s Mark”), covering Energy drinks; Non-alcoholic
`drinks, namely, energy shots in Class 32 (“Applicant’s Goods”).
`Applicant’s Mark was filed based on Applicant’s bona fide intent to use the mark in
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`commerce.
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`Opposer is the owner of all right, title, interest, and goodwill in the mark MATADOR in
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`connection with goods in Class 33 by virtue of its use and registration of the following
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`marks:
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`
`
`
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`MARK
`
`REG. NO. / SER.
`NO.
`Reg. No. 7331227
`
`GOODS
`
`distilled blue agave
`liquor in Class 33
`
`FILING DATE /
`REG. DATE
`Filed: Dec.
`2022
`Reg.: March 19,
`2024
`
`16,
`
`
`(hereinafter “Opposer’s
`Registration”)
`EL GRAN MATADOR
`(hereinafter “Opposer’s
`Application”)
`
`(The goods covered by both Opposer’s Registration and Opposer’s Application, namely
`distilled blue agave liquor will hereinafter be referred to as “Opposer’s Goods”).
`
`Ser. No. 90154844
`
`
`
`distilled blue agave
`liquor in Class 33
`
`Filed: Sept. 2, 2020
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`Opposer and Opposer’s predecessors in interest have used the MATADOR mark in US
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`commerce in connection with goods in Class 33 since at least as early as 2004. Accordingly,
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`on information and belief, Opposer has rights in and to the MATADOR mark which are
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`senior to any actual or constructive use rights which may be claimed by Applicant.
`Applicant’s Mark is identical to Opposer’s Registration.
`Applicant’s Mark is nearly identical to Opposer’s Application.
`Applicant’s Mark is confusingly similar to Opposer’s Registration and Opposer’s
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`Application as to appearance, sound, connotation and commercial impression.
`Applicant’s Goods are beverages, namely energy drinks and energy shots. Opposer’s
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`Goods are also beverages, namely distilled spirits. Goods of this nature are often mixed
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`together and/or consumed together and are therefore complementary goods. Accordingly,
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`source confusion is likely.
`Applicant’s Goods and Opposer’s Goods are commercially related. Accordingly,
`Applicant’s targeted consumers will overlap with Opposer’s targeted consumers, thus
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`10.
`
`source confusion is likely.
`The use and registration of Applicant’s Mark is likely to deceive and to cause mistake or
`confusion among members of the purchasing public as to the source of Applicant’s
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`Goods within the meaning of 15 U.S.C. §1052(d).
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`
`
`2
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`
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`WHEREFORE, Opposer believes that it has a real interest in this proceeding and will be
`
`irreparably damaged by the registration of the Applicant's Mark, and respectfully requests that the
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`Board sustain this Opposition and refuse the registration of the Applicant's Mark based on priority
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`and likelihood of confusion.
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`
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`Dated: August 7, 2024
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`Respectfully submitted,
`
`
`
`Erica Halstead
`WOMBLE BOND DICKINSON (US) LLP
`950 Third Avenue, Suite 2400
`New York, New York 10022
`Telephone: (332) 258-8400
`Email: Erica.Halstead@wbd-us.com
`TMDocketing@wbd-us.com
`
`Attorney for Opposer
`Tequila Cuervo, S.A. de C.V.
`
`3
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`
