ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1379290
`08/23/2024
`
`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
`
`Caesar Bacarella
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`08/24/2024
`
`5259 NORTH HIATUS ROAD
`SUNRISE, FL 33351
`UNITED STATES
`
`JUSTIN S. MAYA, ESQ.
`COLE, SCOTT & KISSANE, P.A.
`9150 S. DADELAND BOULEVARD, SUITE 1400
`MIAMI, FL 33156
`UNITED STATES
`Primary email: justin.maya@csklegal.com
`Secondary email(s): Ieshia.owens@csklegal.com, jen-
`nifer.lespinasse@csklegal.com, justin.levine@csklegal.com, christoph-
`er.witters@csklegal.com, eric.martin@csklegal.com
`786-268-6752
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`97903888
`
`Opposition filing
`date
`
`Applicant
`
`08/23/2024
`
`Prime Hydration LLC
`2858 FRANKFORT AVE
`LOUISVILLE, KY 40206
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`06/25/2024
`
`Opposition period
`ends
`
`08/24/2024
`
`Class 032. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Energy drinks; Powders used in the prepar-
`ation of isotonic sports drinks and sports beverages; Sports drinks
`
`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.
`
`5430591
`
`Register
`
`Principal
`
`Application date
`
`06/19/2017
`
`

`

`Registration date
`
`03/27/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`ALPHA PRIME
`
`NONE
`
`Class 005. First use: First Use: None First Use In Commerce: None
`Natural pharmaceutical products, namely, natural remedy preparations and sup-
`plements for the treatment of gastro-intestinal conditions, hormonal and chemic-
`al imbalances, sleep disorders, depression or anxiety; herbal dietary supple-
`ments; antioxidants in the nature of dietary supplements; food supplements in
`the nature of dietary supplements; mineral food supplements; protein supple-
`ments for humans; vitamin supplements; nutritional supplements; pharmaceutic-
`al preparations containing amino acids, namely, amino acids for nutritional pur-
`poses
`
`U.S. registration
`no.
`
`5487166
`
`Register
`
`Principal
`
`Registration date
`
`06/05/2018
`
`Word mark
`
`Design mark
`
`ALPHA PRIME
`
`Application date
`
`06/17/2016
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 010. First use: First Use: Jun 15, 2016 First Use In Commerce: Jun 15,
`2016
`compression shirts; compression shorts
`Class 018. First use: First Use: May 22, 2017 First Use In Commerce: May 22,
`2017
`backpacks
`Class 025. First use: First Use: May 1, 2016 First Use In Commerce: May 1,
`2016
`Athletic shirts; beanies; caps with visors; jackets; shirts; short-sleeved shirts;
`shorts; socks; sweat pants; sweat shirts; T-shirts; tank tops; athletic uniforms;
`footwear; athletic sleeves; sleeveless shirts; singlets; hoodies; gym tops for
`weightlifters; racing uniforms
`Class 028. First use: First Use: May 22, 2017 First Use In Commerce: May 22,
`2017
`bags specially adapted for sports equipment
`
`U.S. application
`no.
`
`90854908
`
`Application date
`
`07/29/2021
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`PRIME BITES
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: None First Use In Commerce: None
`Protein bars, namely, protein supplements formed and packaged as bars; Pro-
`tein dietary supplements formed and packaged as protein brownies
`Class 030. First use: First Use: None First Use In Commerce: None
`Brownies, in particular, protein enriched brownies
`
`Related proceed-
`ings
`
`92084831; 91288914
`
`Attachments
`
`79215615#TMSN.png( bytes )
`87074949#TMSN.png( bytes )
`90854908#TMSN.png( bytes )
`Notice of Opposition - DRINKPRIME.pdf(3623672 bytes )
`
`Signature
`
`/s/ Justin S. Maya
`
`Name
`
`Date
`
`Justin S. Maya, Esq.
`
`08/23/2024
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`v.
`
`PRIME HYDRATION, LLC,
`
`
`
`
`
`
`
`
`
`:
`
`:
`
`:
`
`:
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`:
`
`:
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`:
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`
`
`Opposition No. _____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 97903888 for the Mark: DRINKPRIME
`Published in the Official Gazette on June 25, 2024
`
`
`
`
`– – – – – – – – – – – – – – – – – – – – – – – – – – X
`CAESAR BACARELLA,
`:
`
`
`
`
`
`:
`Applicant.
`– – – – – – – – – – – – – – – – – – – – – – – – – – X
`NOTICE OF OPPOSITION
`Opposer, Caesar Bacarella (“Opposer”), will be damaged by the registration for the mark
`
`
`
`
`
`DRINKPRIME (“Applicant’s Mark”) in International Class 32 for “Energy drinks; Powders used
`
`in the preparation of isotonic sports drinks and sports beverages; Sports drinks” (“Applicant’s
`
`Goods”) applied-for in Application Serial No. 97903888 (the “Application”), filed on April 24,
`
`2023 by Prime Hydration LLC, a limited liability company organized under the laws of Kentucky
`
`having an address of record 2858 Frankfort Ave, Louisville, Kentucky United States 40206
`
`(“Applicant”), and having been granted extensions of time up to and including August 24, 2024,
`
`hereby opposes same.
`
`
`
`
`
`
`Page 1
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
`
`As grounds for this likelihood of confusion opposition, Opposer alleges:
`
`1.
`
`2.
`
`Opposer is a Florida resident located in Broward County, Florida.
`
`As described in greater detail below, Applicant’s DRINKPRIME mark, when
`
`considering the overall impression created, leads to a conclusion that the mark is similar to
`
`Bacarella’s ALPHA PRIME and PRIME BITES marks when considering the sound, appearance,
`
`and manner in which each mark is used.
`
`3.
`
`Applicant’s use of DRINKPRIME falsely suggests affiliation with Bacarella, is
`
`confusingly similar to Bacarella’s ALPHA PRIME and PRIME BITES marks, and multiple
`
`instances of actual confusion have been discovered. The result of Applicant’s confusingly similar
`
`products is actual and a likelihood of confusion as to the origin of the products, harming the
`
`reputation and goodwill of Bacarella’s brand. Applicant’s sale of its infringing products is
`
`unlawful and subject to federal court litigation.
`
`I.
`
`OPPOSER’S LITIGATION AGAINST APPLICANT
`
`4.
`
`On July 30, 2024, Opposer filed a civil action against Applicant. Opposer alleges
`
`federal trademark infringement (forward and reverse confusion) and unfair competition under the
`
`Lanham Act, and Florida law trademark infringement, of Opposer’s ALPHA PRIME and
`
`PRIME BITES trademarks (together, the “Marks”) based on Applicant’s use of “PRIME,” and
`
`several derivatives thereof, such as the “DRINKPRIME” mark, which is at issue in this
`
`Opposition (the “Related Civil Action”). See Compl. [D.E. 1] as Exhibit 1.1
`
`5.
`
`Among other things, the Related Civil Action seeks a declaration from the U.S.
`
`
`1The Related Civil Action is pending in the United States District Court for the Southern District
`of Florida, styled as Caesar Bacarella v. Prime Hydration, LLC, Case No. 0:24-61376-DSL.
`
`
`
`Page 2
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
`
`District Court that the word mark “DRINKPRIME” violates 15 U.S.C. § 1114 based on a
`
`likelihood of confusion with Opposer’s Marks and requests that the U.S. District Court reject the
`
`Application and deem the Application abandoned.
`
`6.
`
`Further, on December 22, 2023, Opposer commenced an opposition proceeding
`
`with the Board against the Applicant’s “DRINK PRIME” word mark (Serial Number 97915703)
`
`based on Opposer’s rights in the Marks (the “First Opposition Proceeding”).
`
`7.
`
` In the First Opposition Proceeding, Applicant sought registration of “DRINK
`
`PRIME” in connection with (A) International Class 18 for “all-purpose sports bags for use by
`
`athletes; all-purpose carrying bags; backpacks; duffel bags;” and (B) International Class 25 for
`
`“Apparel, namely, shirts, t-shirts, sweaters, hoodies, sweatshirts, pants, sweat pants, tank tops,
`
`dresses, skirts, jackets, leggings; athletic apparel, namely, shirts, pants, jackets, footwear, hats and
`
`caps; hats; beanies; headbands; gloves; swim trunks; sweatbands.” (collectively, the “Goods in
`
`the First Opposition Proceeding”).
`
`8.
`
`Pursuant to 15 U.S.C. § 1063(a), Opposer opposed the “DRINK PRIME” mark
`
`for the Goods in the First Opposition Proceeding based on a likelihood of confusion with
`
`Opposer’s U.S. Registration No. 5,487,166 for the “ALPHA PRIME” word mark for (A)
`
`“compression shirts; compression shorts” in Class 10; for (B) “backpacks” in Class 18; for (C)
`
`“athletic shirts; beanies; caps with visors; jackets; shirts; short-sleeved shirts; shorts; socks; sweat
`
`pants; sweat shirts; t-shirts; tank tops; athletic uniforms; footwear; athletic sleeves; sleeveless
`
`shirts; singlets; hoodies; gym tops for weightlifters; racing uniforms” in Class 25; and for (D)
`
`“bags specially adapted for sports equipment” in Class 28, and based on Applicant’s “PRIME
`
`BITES” word mark in U.S. trademark application (Serial Number 90854908) in class 5 for
`
`“protein bars, namely, protein supplements formed and packaged as bars; protein dietary
`
`Page 3
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
`
`supplements formed and packaged as protein brownies,” and in class 30 for “brownies, in
`
`particular, protein enriched brownies.”
`
`9.
`
`In the First Opposition Proceeding, like here, Opposer asserted that Opposer’s Mark
`
`and Applicant’s Mark as depicted below are confusingly similar:
`
`Opposer’s Mark
`
`
`ALPHA PRIME
`
`
`Applicant’s Mark
`
`
`DRINK PRIME
`
`
`
`
`10.
`
`After brief litigation before the Board, on July 31, 2024, the Board granted
`
`Applicant’s Motion to Amend its “DRINK PRIME” application, whereby Applicant deleted
`
`Classes 18 and 25 from its application and accepted judgment against it on the grounds of a
`
`likelihood of confusion with Opposer’s ALPHA PRIME and PRIME BITES marks.
`
`11.
`
`Presently, Opposer continues to assert that Applicant’s Mark in the instant action
`
`is likely to cause confusion, even if Applicant deletes the space between the words “drink” and
`
`“prime” as shown below.
`
`Opposer’s Mark
`
`
`ALPHA PRIME
`
`
`Opposer’s Mark
`
`
`PRIME BITES
`
`
`and
`
`Applicant’s Mark
`
`
`DRINKPRIME
`
`
`Applicant’s Mark
`
`
`DRINKPRIME
`
`
`
`Page 4
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`
`
`
`
`

`

`
`
`II.
`
`OPPOSER’S MARKS
`
`12.
`
`Opposer owns and operates the well-known ALPHA PRIME fitness lifestyle brand,
`
`which sells a variety of fitness supplements under the distinctive marks “ALPHA PRIME” and/or
`
`“PRIME BITES” (the “Marks”), in addition to a variety of apparel and fitness gear.
`
`13.
`
`Since commencing use of ALPHA PRIME mark, Opposer has formed several
`
`business entities,2 licensing Opposer’s Mark to those business entities, and expanded his presence
`
`across the United States and internationally. Opposer’s product lines focus on lifestyle and
`
`wellness.
`
`14.
`
`Since long before the filing of Applicant’s Application, Opposer has been and is
`
`using Opposer’s Marks in interstate commerce, as a trade name, service mark, and/or trademark
`
`to identify his products and services.
`
`15.
`
`The ALPHA PRIME brand appeals to the modern athlete to provide all things
`
`fitness related – from premium fitness apparel to fitness products, and sports supplements. To that
`
`end, ALPHA PRIME’s target audience are men and women, between the ages of eighteen to fifty-
`
`five, who place an emphasis on quality product, fashion, and a strong alignment with fitness.
`
`ALPHA PRIME’s target audience value premium athletic wear and products designed for any
`
`occasion. Members of ALPHA PRIME’s target audience pursue active lifestyles split between
`
`health, athletics, fitness and professional activities. Such a lifestyle keeps them constantly on-the-
`
`go and seeking premium products to complement their active and healthy lifestyle. For these
`
`reasons, ALPHA PRIME’s lifestyle brand allows its customers to be prepared for any occasion
`
` 2
`
` The entities include Alpha Prime Apparel, Inc. (“AP Apparel”), a corporation incorporated and
`existing under the laws of Florida, and AP Sports Regimen, Inc. (“AP Sports”), a limited liability
`company organized under the laws of Florida.
`
`
`Page 5
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
`
`while enjoying premium products.
`
`16.
`
`The Marks, which are more fully described below, are the subject of substantial and
`
`continuous nationwide and international marketing and promotion by the Opposer.
`
`17.
`
`The Marks have achieved extensive exposure and widespread recognition through
`
`sponsorships with athletes, bodybuilders, athletic teams, celebrities, public figures, and social
`
`media influencers.
`
`18.
`
`Furthermore, marketing for the Marks includes a wide array, such as live sporting
`
`events, collaborative marketing partnerships, social media marketing, trade shows, distribution of
`
`promotional material, and product sampling.
`
`a. OPPOSER’S ALPHA PRIME FITNESS APPAREL
`
`
`
`19.
`
`Since at least June of 2018, Opposer has been marketing and selling ALPHA
`
`PRIME branded apparel in the United States through his affiliated entities, and he has
`
`continuously sold ALPHA PRIME branded apparel in the Unted States through interstate
`
`commerce since that time.
`
`20.
`
`Opposer is the owner of U.S. Registration No. 5,487,166 for ALPHA PRIME for
`
`(1) “compression shirts; compression shorts” in Class 10; (2) “backpacks” in Class 18; (3)
`
`“Athletic shirts; beanies; caps with visors; jackets; shirts; short-sleeved shirts; shorts; socks; sweat
`
`pants; sweat shirts; T-shirts; tank tops; athletic uniforms; footwear; athletic sleeves; sleeveless
`
`shirts; singlets; hoodies; gym tops for weightlifters; racing uniforms” in Class 25; and (4) “bags
`
`specially adapted for sports equipment” in Class 28, which issued June 5, 2018. See Exhibit 1, at
`
`Ex. A.
`
`21.
`
`Opposer sells ALPHA PRIME branded apparel on his websites and social media
`
`platforms.
`
`
`Page 6
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
`
`b. OPPOSER’S ALPHA PRIME SUPPLEMENTS
`
`Opposer also owns U.S. trademark registration number 5,430,591 (the “‘591
`
`22.
`
`Mark”) for ALPHA PRIME for “natural pharmaceutical products, namely, natural remedy
`
`preparations and supplements for the treatment of gastro-intestinal conditions, hormonal and
`
`chemical imbalances, sleep disorders, depression or anxiety; herbal dietary supplements;
`
`antioxidants in the nature of dietary supplements; food supplements in the nature of dietary
`
`supplements; mineral food supplements; protein supplements for humans; vitamin supplements;
`
`nutritional supplements; pharmaceutical preparations containing amino acids, namely, amino acids
`
`for nutritional purposes,” which holds a U.S. priority date of March 27, 2018. See Exhibit 1, at
`
`Ex. B and C.
`
`23.
`
`As the owner of the ‘591 Mark, Opposer is entitled to the exclusive right to use the
`
`name ALPHA PRIME for supplements in the United States.
`
`24.
`
`Indeed, Opposer markets and sells a variety of ALPHA PRIME branded
`
`supplements, including energy, creatine, amino acids, minerals, vitamins, protein, sleep aids,
`
`collagen, fat loss, and diuretics.
`
`25.
`
`Before the filing of the Application, Opposer was using the ALPHA PRIME mark
`
`in interstate commerce as a trademark to identify Opposer’s supplements.
`
`26.
`
`Supplements and Applicant’s Goods are highly related goods. To be sure,
`
`supplements and Applicant’s Goods appeal to the same classes of consumers.
`
`27.
`
`For example, numerous third-party registrations show that trademark owners have
`
`registered a single mark for both supplements and energy drinks – e.g., U.S. Registration Numbers
`
`3,835,894; 6,150,541; 2,995,742; and 3,628,769. Copies of these registrations are included as
`
`Composite Exhibit 2. Third-party registrations which individually cover a number of different
`
`
`Page 7
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
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`items and which are based on use in commerce serve to suggest that the listed goods and/or services
`
`are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29
`
`USPQ2d 1783 (TTAB 1993).
`
`Opposer’s pre-workout product (a supplement) is intended to boost energy.
`
`Further, brands that offer pre-workout products naturally expand into energy
`
`28.
`
`29.
`
`drinks.
`
`c. OPPOSER’S PRIME BITES PROTEIN BROWNIES
`
`Since at least September of 2021, Opposer has been marketing and selling PRIME
`
`30.
`
`BITES branded protein brownies in the United States, through his affiliated entities, and he has
`
`continuously sold PRIME BITES branded protein brownies in the Unted States through interstate
`
`commerce since that time.
`
`31.
`
`Further, Opposer has rights in U.S. Trademark Application Serial No. 90,854,908
`
`for PRIME BITES for “protein bars, namely, protein supplements formed and packaged as bars;
`
`Protein dietary supplements formed and packaged as protein brownies” in Class 5, and “Brownies,
`
`in particular, protein enriched brownies” in Class 30.
`
`32.
`
`Further, Opposer has rights in U.S. Trademark Application Serial No. 90,854,893
`
`for AP PRIME BITES for “protein bars, namely, protein supplements formed and packaged as
`
`bars; Protein dietary supplements formed and packaged as protein brownies” in Class 5, and
`
`“Brownies, in particular, protein enriched brownies” in Class 30.
`
`33.
`
`Further, Opposer has common law rights in the inherently distinctive PRIME
`
`BITES mark for protein brownies and supplements.
`
`34.
`
`PRIME BITES protein brownies are a nationally recognized product in the fitness-
`
`wellness space, garnering great success with the consumer base.
`
`
`Page 8
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
`
`35.
`
`By virtue of Opposer’s actual and continuous use of the PRIME BITES mark
`
`throughout the state of Florida, through interstate commerce, and its inherently distinctive name,
`
`Opposer has established common law trademark rights in the PRIME BITES mark.
`
`36.
`
`Furthermore, through the efforts of the Opposer, PRIME BITES has achieved
`
`secondary meaning with the fitness-consuming public as an identifier of high-quality protein
`
`brownies. The PRIME BITES mark has come to designate the goods of the Opposer, so that the
`
`goodwill represented by the mark is of great value to the Opposer.
`
`37.
`
`The PRIME BITES branded protein brownies have acquired a distinctive
`
`reputation to the public through continuous advertising and by the high quality of these goods.
`
`38.
`
`39.
`
`Protein brownies and Applicant’s Goods are related goods.
`
`To be sure, protein brownies and Applicant’s Goods appeal to the same classes of
`
`health-conscious consumers.
`
`40.
`
`By January 2022, Opposer was selling PRIME BITES branded protein brownies
`
`nationwide through major supplement retailers, such as The Vitamin Shoppe, and Amazon.com.
`
`d. OPPOSER’S TRADE CHANNELS AND CONSUMERS ARE HIGHLY SIMILAR WITH
`THE APPLICANT
`
`Opposer has spent significant sums in advertising and promoting Opposer’s Marks
`
`41.
`
`throughout the United States and abroad.
`
`42.
`
`Opposer has established a strong social media presence using the Marks, which has
`
`allowed the Opposer to grow his brand exponentially in the fitness sphere.
`
`43.
`
`Opposer maintains a social media presence using Opposer’s Marks to sell and
`
`advertise his branded fitness apparel and supplements. Opposer maintains an online retail presence
`
`
`Page 9
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
`
`
`
`

`

`
`
`at www.AlphaPrimeUSA.com, www.AlphaPrimeSports.com, and www.AlphaPrimeSupps.com
`
`using Opposer’s Mark to sell and advertise his branded fitness apparel and supplements.
`
`44.
`
`Furthermore, Opposer markets and sells his supplements through retailers such as
`
`Walmart, The Vitamin Shoppe, GNC, and Amazon.com, which is similar to the outlets used by
`
`Applicant.
`
`45.
`
`Opposer’s branded apparel and supplements have received substantial media
`
`coverage spanning across a variety of marketing channels, including television, websites, and
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`social media.
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`46.
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`By virtue of Opposer’s long-standing use, the popularity of Opposer’s apparel and
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`supplements offered in connection with Opposer’s Marks, and Opposer’s advertising and
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`promotion of Opposer’s Marks, Opposer has built up and now owns an extremely valuable
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`goodwill which is symbolized by Opposer’s Marks.
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`47.
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`Also, by virtue of Opposer’s long-standing use, the popularity of Opposer’s goods
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`offered in connection with Opposer’s Marks, and Opposer’s advertising and promotion of
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`Opposer’s Marks, the Marks became well-known and recognized prior to the filing of the
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`Application, uniquely representing Opposer’s goods offered in connection with Opposer’s Marks
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`in the minds of consumers.
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`48.
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`Opposer’s trade channels for supplements are the same trade channels for
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`Applicant’s Goods. Furthermore, Opposer’s trade channels for protein brownies are the same trade
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`channels for Applicant’s Goods.
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`49.
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`Opposer’s consumers for supplements are the same consumers for Applicant’s
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`Goods. The conditions of purchasing Opposer’s supplements and Applicant’s Goods also pose
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`risks of confusion for the average purchaser. Even careful consumers could reasonably assume
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`Page 10
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
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`that both types of products – energy drinks, sports drinks, and supplements – emanate from a single
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`source if sold under similar marks. Applicant’s Goods are purchased as an impulse item. Moreover,
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`the proper focus is on the recollection of the average purchaser, who retains a general rather than
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`specific impression of trademarks.
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`50.
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`Furthermore, Opposer may be damaged as there is a likelihood of reverse
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`confusion. A consumer who is familiar with Opposer’s ALPHA PRIME supplements and
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`PRIME BITES protein brownies might well buy a DRINKPRIME energy drink without any
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`thought, merely assuming because of the highly similar mark that the goods emanate from the
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`same source. Likewise, a consumer who is familiar with Applicant’s DRINKPRIME energy drink
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`may come to believe that Opposer’s use of ALPHA PRIME and/or PRIME BITES for
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`supplements is affiliated with Applicant.
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`51.
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`In fact, consumers have expressed concerns of infringement and actual confusion,
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`commenting on Opposer’s TikTok marketing videos for PRIME BITES (1) that Opposer is
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`“gonna get sued by [Applicant]”; and (2) whether Opposer’s PRIME BITES brownie brownies
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`“[are] associated with [Applicant’s] prime drink.”
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`III. THE APPLICATION
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`52.
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`On April 24, 2023, Applicant filed the Application with the USPTO on an intent-
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`to-use basis seeking registration of the mark DRINKPRIME for “Energy drinks; Powders used
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`in the preparation of isotonic sports drinks and sports beverages; Sports drinks” in Class 32.
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`53.
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`Opposer’s priority date in each of the Marks precedes the Applicant’s Application
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`and, upon information and belief, any date of first use or constructive use of Applicant’s Mark and
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`any priority upon which Applicant may claim to rely.
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`Page 11
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
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`54.
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`Applicant’s application
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`for, and use or proposed use of Applicant’s
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`DRINKPRIME mark, is without Opposer’s consent or permission.
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`55.
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`Opposer believes that he is or will be damaged by Applicant’s DRINKPRIME
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`mark under the meaning of 15 U.S.C. § 1063(a).
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`56.
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`As stated above, Opposer’s Marks and Applicant’s Mark as depicted below are
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`confusingly similar:
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`Opposer’s Mark
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`ALPHA PRIME
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`Opposer’s Mark
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`PRIME BITES
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`and
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`Applicant’s Mark
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`DRINK PRIME
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`Applicant’s Mark
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`DRINKPRIME
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`57.
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` The word “PRIME” is the primary wording in Opposer’s Marks and Applicant’s
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`Mark, and this feature of the marks is more significant and dominant when creating a commercial
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`impression. Marks may be confusingly similar in appearance where similar terms or similar parts
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`of terms appear in the compared marks and create a similar overall compression impression. Since
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`Opposer’s Marks and Applicant’s Mark look and sound similar and create the same commercial
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`impression, the marks are considered similar for likelihood of confusion purposes.
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`Page 12
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
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`58.
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`Further, both Opposer and Applicant’s goods are highly similar (if not legally
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`identical for the good/services analysis), commercially related, and travel in the same trade
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`channels.
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`59.
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`For example, Opposer’s ‘591 Registration uses broad wording, such as “herbal
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`dietary supplements,” “vitamin supplements” and “nutritional supplements” which encompass the
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`type of goods described in Applicant’s Goods, including Applicant’s narrower “powders used in
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`the preparation of isotonic sports drinks.”
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`60.
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`Opposer’s goods and Applicant’s goods travel in the same channels of trade to the
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`same class of purchasers. For example, dietary supplements, protein brownies, energy drinks, and
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`sports drinks appeal to the same classes of consumers.
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`61.
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`Applicant’s registration of Applicant’s Mark as a trademark is likely to cause injury
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`to Opposer and to injure Opposer’s rights in Opposer’s Marks. Applicant’s registration and use of
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`Applicant’s Mark in connection with Applicant’s Goods is likely to cause confusion, mistake
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`and/or deception as to source, affiliation, and/or sponsorship between Opposer and his goods, on
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`the one hand, and Applicant and Applicant’s Goods, on the other.
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`62.
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`Applicant’s use of DRINKPRIME in connection with Applicant’s Goods falsely
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`suggests a connection and unfairly competes with Opposer and Opposer’s Marks and his goods in
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`violation of Section 2(d) of the Trademark Act.
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`63.
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`Finally, the overriding concern is not only to prevent buyer confusion as to the
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`source of the goods, but to protect a registrant from adverse commercial impact due to use of a
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`similar mark by a newcomer. Therefore, any doubt regarding the likelihood of confusion
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`determination should be resolved in favor of Opposer.
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`Page 13
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
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`WHEREFORE, Opposer respectfully requests that this opposition be sustained, and that
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`Application Serial No. 97903888 be denied registration.
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`Dated: August 23, 2024
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`Respectfully,
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`
`COLE, SCOTT & KISSANE, P.A.
`Cole, Scott & Kissane Building
`9150 South Dadeland Boulevard
`Suite 1400
`Miami, Florida 33256
`Telephone (786) 268-6752
`justin.levine@csklegal.com
`justin.maya@csklegal.com
`
`By:
`
`s/ Justin S. Maya
` JUSTIN LEVINE
`Florida Bar No.: 106463
`JUSTIN S. MAYA
`Florida Bar No.: 126087
`ERIC MARTIN
`Florida Bar No.: 1019248
`Attorneys for Opposer Caesar Bacarella
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`Page 14
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on August 23, 2024, I caused a true and correct copy of the
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`foregoing Notice of Opposition to be served via e-mail upon the Applicant’s Attorney of Record.
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`
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`COLE, SCOTT & KISSANE, P.A.
`9150 South Dadeland Boulevard
`Suite 1400
`Miami, Florida 33256
`Telephone: (786) 268-6752
`Email: justin.maya@csklegal.com
`
`
`/s/ Justin S. Maya
`JUSTIN S. MAYA, ESQ.
`Florida Bar No.: 126087
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`
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`
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`Herbert H. Finn, Esq.
`GREENBERG TRAURIG, LLP
`77 W. WACKER DRIVE
`SUITE 3100
`CHICAGO, ILLINOIS 60601
`chiipmail@gtlaw.com
`matthewsk@gtlaw.com
`finnh@gtlaw.com
`carrm@gtlaw.com
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`Attorneys for Applicant
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`Service List
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`Page 15
`COLE, SCOTT & KISSANE, P.A.
` COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
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`Exhibit 1
`Exhibit 1
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`

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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`CASE NO:
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`CEASAR BACARELLA,
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`Plaintiff,
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`v.
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`PRIME HYRDRATION, LLC,
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`Defendant.
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`_______________________________/
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`COMPLAINT
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`Plaintiff Caesar Bacarella, through counsel, hereby files his Complaint against Defendant
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`Prime Hydration, LLC as follows:
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`NATURE OF ACTION
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`1.
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`This is a civil action for federal trademark infringement (forward and reverse
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`confusion) and unfair competition under the Lanham Act and for Florida law trademark
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`infringement of Bacarella’s ALPHA PRIME trademarks.
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`2.
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`Plaintiff Bacarella’s ALPHA PRIME brand includes products such as fitness
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`apparel and sports supplements. This further includes Bacarella’s PRIME BITES branded protein
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`brownies.
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`3.
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`Despite Bacarella’s priority rights in the ALPHA PRIME and PRIME BITES
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`marks, Defendant is selling sports nutrition products and supplements using the name “PRIME”
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`(and derivatives thereof). As described in greater detail below, Defendant’s use of PRIME and its
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`derivatives, falsely suggest affiliation with Bacarella, are confusingly similar to Bacarella’s
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`Page 1
`COLE, SCOTT & KISSANE, P.A.
`COLE, SCOTT & KISSANE BUILDING - 9150 SOUTH DADELAND BOULEVARD - SUITE 1400 - P.O. BOX 569015 - MIAMI, FLORIDA 33256 - (305) 350-5300 - (305) 373-2294 FAX
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`

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`ALPHA PRIME and PRIME BITES marks, and despite “PRIME” only being on the market for
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`a short time, multiple instances of actual confusion have been discovered. The result of these
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`confusingly similar products is actual and a likelihood of confusion as to the origin of the products,
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`harming the reputation and goodwill of Bacarella’s brand. Defendant’s sale of these infringing
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`products is therefore unlawful and is causing irreparable harm to Bacarella’s brand.
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`4.
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`Among other relief, Bacarella respectfully asks this Court to: (a) preliminarily and
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`permanently enjoin Defendant from distributing, marketing, selling products which are
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`confusingly similar to the ALPHA PRIME and PRIME BITES marks; (b) preliminarily and
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`permanently enjoin Defendant from registering trademarks which are confusingly similar to the
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`ALPHA PRIME and PRIME BITES marks; (c) declare invalid any registered trademarks and
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`trademark applications owned by Defendant, which are confusingly similar to the ALPHA
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`PRIME and PRIME BITES marks; (d) award Bacarella monetary damages and to treble that
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`award; and (e) award Bacarella attorney’s fees, and costs.
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`PARTIES
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`5.
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`Plaintiff Ceaser Bacarella is a Florida resident, located in Broward County, Florida,
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`and is the owner of the ALPHA PRIME and PRIME BITES marks.
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`6.
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`Defendant Prime Hydration LLC is a limited liability company organized under the
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`laws of Kentucky.
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`JURISIDCTION AND VENUE
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`7.
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`This is