Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA292649
`ESTTA Tracking number:
`06/30/2009
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92050127
`Plaintiff
`Dante Peter Spano
`Christina S. Loza
`Loza & Loza, LLP
`305 North Second Avenue, #127
`Upland, CA 91786
`UNITED STATES
`tina@lozaip.com, shirley@lozaip.com
`Motion for Summary Judgment
`Shelley M. Cobos
`shelley@lozaip.com, shirley@lozaip.com
`/Shelley M. Cobos/
`06/30/2009
`SPAN-401 MSJ Public Copy FINAL.pdf ( 152 pages )(2955426 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Registration No.: 3,146,505
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`For the mark: NITRO ENERGY DRINK
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`Date Registered: September 19, 2006
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`Cancellation No.: 92/050127
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`Dante Peter Spano,
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`an individual,
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` Petitioner,
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`v.
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`Blue Beverages Envasadora Ltd.,
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`a Brazilian Limited Corporation
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`Respondent.
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
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`Petitioner Dante Peter Spano (“Petitioner-Spano”) hereby moves for summary judgment
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`on the above-referenced Petition for Cancellation pursuant to Rule 56 of the Federal Rules of
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`Civil Procedure as made applicable to these proceedings and under 37 C.F.R. § 2.116(a). Based
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`on the undisputed material facts, as a matter of law, Registration No. 3,146,505 currently owned
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`by Blue Beverages Envasadora, Ltd. (“Respndent-BBE”) should be cancelled.
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`/ / /
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`I.
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`INTRODUCTION
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`Petitioner-Spano owns several companies in California dedicated to selling dietary
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`supplements and health products, namely, herbal supplements and natural products for health,
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`diet, energy, weight loss, arthritis and joint pain relief, and enlarged prostate. Petitioner-Spano
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`began selling LIQUID HERBAL NITRO dietary supplements (also known as “energy shooters”)
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`in interstate commerce at least as early as March of 2002. Petitioner-Spano began selling
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`LIQUID HERBAL NITRO non-alcoholic beverages, namely, carbonated beverages (also known
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`as “energy drinks”) in interstate commerce at least as early as December of 2003. Petitioner-
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`Spano’s LIQUID HERBAL NITRO product line quickly became successful and within the first
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`year of sales accounted for one-hundred percent of at least one of Petitioner-Spano businesses.
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`Each year, sales grew as Petitioner-Spano was building its reputation and goodwill under the
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`LIQUID HERBAL NITRO trademark.
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`Beginning in 2002, Petitioner-Spano has continuously used the mark through the present
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`day, and intends to continue to do so in the future. Because of Petitioner-Spano’s sales and
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`marketing efforts, the quality of its products sold under the LIQUID HERBAL NITRO mark and
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`its extensive use of the LIQUID HERBAL NITRO mark, Petitioner-Spano has acquired
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`substantial goodwill in the LIQUID HERBAL NITRO trademark used in connection with
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`“energy shooters” and “energy drinks”.
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`On April 12, 2007, Petitioner-Spano submitted a “use in commerce” 1(a) trademark
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`application to the United States Patent and Trademark Application for LIQUID HERBAL
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`NITRO in connection with dietary supplements and non-alcoholic beverages, namely,
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`carbonated beverages in International Classes 005 and 032, respectively (Serial No. 77/155,508).
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`Serial No. 77/155,508 was unintentionally abandoned by Petitioner-Spano for failure to respond
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`to an Office Action. At the time of abandonment, Petitioner-Spano was not represented by legal
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`counsel.
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`On August 23, 2004, Respondent-BBE submitted am “intent-to-use” 1(b) trademark
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`application to the United States Patent and Trademark Application for NITRO ENERGY
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`DRINK in connection with non-alcoholic beverages, namely, energy drinks in International
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`Class 032 (Serial No. 78/472,068). Respondent-BBE’s trademark application issued into
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`Registration No. 3,146,505 on September 19, 2006 (hereinafter, the “’505 Registration”). Both
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`first use and first use in commerce in connection with the application were claimed as June 6,
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`2006 by Respondent-BBE.
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`On June 25, 2008, Petitioner-Spano submitted a new “use in commerce” 1(a) trademark
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`application to the United States Patent and Trademark Application for LIQUID HERBAL
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`NITRO in connection with dietary supplements and non-alcoholic beverages, namely,
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`carbonated beverages in International Classes 005 and 032, respectively (Serial No. 77/508,066,
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`hereinafter, the “’066 Application”). An Office Action dated October 6, 2008 was issued with
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`respect to the ‘066 Application rejecting the application on the basis of likelihood of confusion,
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`citing Respondent-BBE Registration No. 3,146,505 (among others). On October 30, 2008, the
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`above-referenced Cancellation Proceeding was initiated by Petitioner-Spano based on (i) prior
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`use by Petitioner-Spano, and (ii) likelihood of confusion between the subject marks.
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`Timing is proper for the filing of this Motion for Summary Judgment since Petitioner-
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`Spano’s testimony period has not yet commenced. 37 C.F.R. § 2.127(e)(1); TBMP § 528.02.
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`This Motion for Summary Judgment is made on the ground that Petitioner-Spano has
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`uncontroverted priority of use as evidenced by the accompanying pleadings, answers to
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`interrogatories and document production together with Petitioner-Spano’s affidavit which show
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`that there is no genuine issue as to any material fact and that there is a likelihood of confusion as
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`a matter of law. TBMP § 528.01
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`II.
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`STANDARD OF REVIEW
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`Summary
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`judgment
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`is “designed ‘to secure
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`the
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`just, speedy and
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`inexpensive
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`determination of every action.’” Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 4 U.S.P.Q.2d
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`1793, 1795 (Fed. Cir. 1997) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986).
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`Summary judgment is proper when there is no genuine issue of material fact, or when, reviewing
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`the evidence in the light most favorable to the non-moving party, the moving party is clearly
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`entitled to prevail as a matter of law. Fed. R. Civ. Proc. 56(c); Celotex, 477 U.S. 317.
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`“The mere existence of a scintilla of evidence in support of the [non-moving party’s]
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`position will be insufficient; there must be evidence on which a reasonable jury could reasonably
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`find for plaintiff.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). Once a summary
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`judgment motion is made and properly supported, the adverse party may not rest on the mere
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`allegations of his pleadings, but must set forth specific facts showing that there is a genuine issue
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`for trial. Fed. R. Civ. Proc. 56(e); Celotex, 477 U.S. 317. Moreover, if the factual context makes
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`the non-moving party’s claim implausible, that party must come forward with more persuasive
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`evidence than would otherwise be necessary to show that there is a genuine issue for trial.
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`Matshshita Elec. Indus. Co. v. Zenith Radio Corp., 485 U.S. 574, 587 (1986).
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`Summary judgment is appropriate in a trademark administrative proceeding where, as in
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`the present case, there are no genuine issues of material fact to be tried. The TTAB’s grant of
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`summary judgment in a trademark opposition proceeding was affirmed in Pure Gold Inc. v.
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`Syntex (USA), Inc., 222 U.S.P.Q. 741 (Fed. Cir. 1984). The Court in Pure Gold explained the
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`basic purpose of summary judgment is to afford judicial economy and the Court accordingly
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`encouraged summary judgment as a means of deciding TTAB matters:
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`The practice of the U.S. Claims Court and of the former U.S. Court of Claims in routinely
`disposing of numerous cases on the basis of cross-motions for summary judgment has
`much to commend it. The adoption of similar practice is to be encouraged in inter partes
`cases before the Trademark Trial and Appeal Board, which seem particularly suitable to
`this type of disposition. Too often we see voluminous records which would be
`appropriate to an infringement or unfair competition suit but are wholly unnecessary to
`resolution of the issue of registerability of a mark.
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`Pure Gold, 222 U.S.P.Q. at 744, n.2.
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`Summary judgment is appropriate in the present case because the pleadings and evidence
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`of record show that there is no genuine issue of material fact and, thus, Petitioner-Spano is
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`entitled to judgment as a matter of law.
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`III.
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`STATEMENT OF UNCONTROVERTED FACTS
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`The following facts are uncontroverted:
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`(A)
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`Petitioner-Spano began using the mark LIQUID HERBAL NITRO in commerce
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`in connection with dietary supplements and non-alcoholic beverages, namely,
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`carbonated beverages at least as early as March of 2002 and December 2003,
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`respectively. (Spano Decl., ¶ 2-3, Exs. A, B.);
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`(B)
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`Respondent-BBE began using the mark NITRO ENERGY DRINK in commerce
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`in connection with non-alcoholic beverages, namely, energy drinks no earlier than
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`March 2, 2004 or May 24, 2004; in any case, later than Petitioner-Spano’s first
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`use. (See Ex. 1, Respondent-BBE’s Response to Request for Production No. 20;
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`Ex. 2, Respondent-BBE’s Response to Request for Production No. 8; Ex. 3
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`Respondent-BBE’s Response to Interrogatory No. 3.);
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`(C)
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`Petitioner-Spano’s first use of LIQUID HERBAL NITRO in connection with non-
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`alcoholic beverages, namely, carbonated beverages, predates Respondent-BBE’s
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`first use of NITRO ENERGY DRINK in connection with non-alcoholic
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`beverages, namely, energy drink.
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`IV. ARGUMENT
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`A person “who believes that he is or will be damaged . . . by the registration of a mark on
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`the principal register”, may petition to cancel the registration under 15 U.S.C. § 1064; see also
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`Golden Gate Salami Co. v. Gulf States Paper Corp., 332 F.2d 184, 188; 141 U.S.P.Q. 661, 664
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`(CCPA 1964). To obtain cancellation of the registration, the petitioning party must show both
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`standing and valid grounds for cancellation. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945
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`(Fed. Cir. 2000).
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`Petitioner-Spano moves for summary judgment on the basis that he has standing and
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`valid grounds to petition to cancel the ‘505 Registration, such valid grounds being prior use and
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`likelihood of confusion. As will be discussed in detail below, there is no issue of material fact
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`that:
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`(A)
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`Petitioner-Spano sells products under the LIQUID HERBAL NITRO mark in
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`connection with dietary supplements and non-alcoholic beverages, namely, carbonated beverages
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`at least as early as March of 2002 and December 2003, respectively. (Spano Decl., ¶ 2-3, Exs. A,
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`B.);
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`(B)
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`Petitioner-Spano has priority of use of the mark LIQUID HERBAL NITRO in
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`connection with dietary supplements and non-alcoholic beverages, namely, carbonated beverages
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`in International Classes 005 and 032;
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`(C) Contemporaneous use of NITRO ENERGY DRINK in commerce in connection
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`with non-alcoholic beverages, namely, energy drinks by Respondent-BBE would likely cause
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`consumer confusion, mistake or deception.
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`A.
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`Petitioner-Spano Sells Products under the LIQUID HERBAL NITRO
`mark
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`Standing requires only that the party seeking cancellation believes that it will likely be
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`damaged by the subject registration. See Golden Gate, 332 F.2d at 188, 141 U.S.P.Q. at 664. A
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`belief in likely damage can be shown by establishing direct commercial interest in the
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`cancellation proceeding. Int'l Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087,
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`1092; 220 U.S.P.Q. 1017, 1020 (Fed. Cir. 1984) (finding sufficient the petitioner's production
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`and sale of merchandise bearing the registered mark). In the present case, Petitioner-Spano’s
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`products sold under the LIQUID HERBAL NITRO mark establish Petitioner-Spano’s direct
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`commercial interest, and hence, his standing, to petition for cancellation of the ‘505 Registration.
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`Cunningham v. Laser Golf Corporation, 222 F.3d 943, 945; 55 U.S.P.Q.2d 1842 (two prior
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`registrations and the products sold under the mark they register suffice to establish petitioner's
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`standing).
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`B.
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`The ‘505 Registration Creates a Likelihood of Confusion
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`Section 2(d) of the Lanham Act precludes registration when a mark is likely to cause
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`confusion with a mark previously used or registered by another. 15 U.S.C. § 1052(d);
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`Cunningham, 222 F.3d at 946. Thus, a party petitioning for cancellation under Section 2(d) must
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`show that it had priority of use and that the registration of the mark creates a likelihood of
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`confusion.
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`1.
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`Petitioner-Spano has prior use LIQUID HERBAL NITRO in
`International Class 005 and 032
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`Respondent-BBE is not entitled to the ‘505 Registration because Petitioner-Spano has
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`priority of use of LIQUID HERBAL NITRO mark in connection with dietary supplements and
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`non-carbonated beverages. Such use has been continuous, and Petitioner-Spano is still using the
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`mark, and has a bona fide intention to continue using the mark, in connection with the goods
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`recited in ‘066 Application. (Spano Decl. ¶ 4.)
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`Petitioner-Spano effectuated its first sale of LIQUID HERBAL NITRO “energy vials” in
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`interstate commerce on March 7, 2002. (Spano Decl. ¶ 2, Ex. A.) Petitioner-Spano effectuated its
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`first sale of LIQUID HERBAL NITRO “energy drinks” in interstate commerce on December 2,
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`2003. (Spano Decl. ¶ 3, Ex. B.) From the date of first use to the present, the LIQUID HERBAL
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`NITRO mark appears on the labels of all of Petitioner-Spano’s products sold under the mark.
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`(Spano Decl. ¶ 5.) Specimens of the products with the LIQUID HERBAL NITRO mark were
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`provided to the USPTO in connection with the ‘066 Application. (Ex. 4, ‘066 Application File
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`History.)
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`In addition to the product labels, Petitioner-Spano displays the LIQUID HERBAL
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`NITRO mark on all of its advertising materials, price lists and Internet websites. (Spano Decl. ¶
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`6, Ex. C.) Petitioner-Spano continues to use the LIQUID HERBAL NITRO mark as evidenced
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`by Petitioner-Spano’s Internet website page. (Id.)
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`By contrast, Respondent-BBE filed its trademark application for the mark NITRO
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`ENERGY DRINK in connection with non-alcoholic beverages, namely, energy drinks, which
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`resulted in the ‘505 Registration, on August 23, 2004, eventually citing June 6, 2006 as the date
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`of first use and the date of first use in commerce. (Ex. 5, ‘505 Registration File History.) By
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`June 6, 2006, however, Petitioner-Spano had already been using the LIQUID HERBAL NITRO
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`mark in connection with “energy shooters” for over 4 years and in connection with “energy
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`drinks” for over 2 years. (Spano Decl. ¶ 2-3, Exs. A-B.) In fact, with respect to the LIQUID
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`HERBAL NITRO “energy drinks”, Petitioner-Spano had already sold over $725,000 worth of
`REDACTED
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`product by June 6, 2006, the date in which Respondent-BBE claimed first use of NITRO
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`ENERGY DRINK. (Spano Decl. ¶ 8, Ex. D.)
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`Notwithstanding the claimed first use of June 6, 2006 for NITRO ENERGY DRINK in
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`connection with energy drinks, Respondent-BBE produced documents and interrogatory
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`responses during discovery that show an alleged first use prior to June 6, 2006. However, the
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`dates evidenced in the produced documents and interrogatory responses by Respondent-BBE
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`still post-date Petitioner-Spano first use. For example, Request for Production No. 20 requested
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`Respondent-BBE to “[p]rovide all documents and things disclosing the first date of use of the
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`Respondent’s mark NITRO ENERGY DRINK in commerce in each state, county or city
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`(including the District of Columbia) in the United States, its territories and possessions as used in
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`connection with non-alcoholic beverages, namely, energy drinks.” (Ex. 1, Respondent-BBE’s
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`Response to Request for Production No. 20.) Respondent-BBE’s responded, “State – Florida,
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`Customer – Poultry, Date – 5/24/2004, Invoice – BV-10.” (Id.) May 24, 2004 clearly post-dates
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`Petitioner-Spano’s first use of the LIQUID HERBAL NITRO mark in connection with “energy
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`shooters”, or March 7, 2002, and “energy drinks”, or December 2, 2003. (Spano Decl. ¶ 2-3, Exs.
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`A-B.)
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`In another example, Respondent-BBE produced documents which appear to show a first
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`sale of NITRO ENERGY “Xtreme cans” as of March 2, 2004 to Poultry and Indust. Suppliers in
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`Miami, Florida. (Ex. 2, Respondent-BBE’s Response to Request for Production No. 8; Ex. 3
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`Respondent-BBE’s Response to Interrogatory No. 3.) Again, assuming this document evidences
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`first use by Respondent-BBE of NITRO ENERGY DRINK in commerce, March 2, 2004 clearly
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`post-dates Petitioner-Spano’s first use of the LIQUID HERBAL NITRO mark in connection with
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`“energy shooters”, or March 7, 2002, and “energy drinks”, or December 2, 2003. (Spano Decl. ¶
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`2-3, Exs. A-B.)
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`Petitioner-Spano has established that Petitioner-Spano began using the mark LIQUID
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`HERBAL NITRO in connection with “dietary supplements” (also known as “energy shooters”)
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`and “non-alcoholic beverages, namely, carbonated beverages” (also known as “energy drinks”)
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`at least as early as March 7, 2002 and December 2, 2003, respectively. These dates are more than
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`4 years and more than 2 years than the June 6, 2006 first use alleged on the ‘505 Registration.
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`Moreover, these dates are more than 2 years and more than 4-5 months than the March 2, 2004
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`date shown in Respondent-BBE’s document production and the May 24, 2004 date identified by
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`Respondent-BBE in response to Interrogatory No. 20. Petitioner-Spano has also established that
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`Petitioner-Spano’s use of the LIQUID HERBAL NITRO mark in connection with dietary
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`supplements and non-alcoholic beverages, namely, carbonated beverages has been continuous
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`through the present day. Accordingly, Petitioner-Spano has established priority with respect to
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`the LIQUID HERBAL NITRO mark over Respondent-BBE with respect to the NITRO
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`ENERGY DRINK mark.
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`2.
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`Use of NITRO ENERGY DRINK by Respondent-BBE is Likely to
`Cause Consumer Confusion, Mistake or Deception
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`Likelihood of confusion is determined based on the factors set forth in In re E.I. DuPont
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`Denemours & Co., 476 F.2d 1357, 1361; 177 U.S.P.Q. 563, 567 (CCPA 1973). The likelihood of
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`confusion analysis considers all DuPont factors for which there is evidence in the record, but
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`“may focus . . . on dispositive factors, such as similarity of the marks and relatedness of the
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`goods.” Herbko International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165; 64 U.S.P.Q.2d
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`1375 (Fed. Cir. 2002).
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`The first factor in determining likelihood of confusion is the similarity or dissimilarity of
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`the marks. DuPont, 476 F.2d at1257. This factor is the predominant inquiry under a DuPont
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`analysis. DuPont, 476 F.2d at 1361. Similarity or dissimilarity of the marks is evaluated with
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`respect to appearance, sound, connotation and commercial impression. DuPont, 476 F.2d at
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`1257. In this case, Petitioner-Spano’s mark LIQUID HERBAL NITRO is very similar to
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`Respondent’s mark NITRO ENERGY DRINK because both marks include the dominant word
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`“NITRO.” During prosecution of the NITRO ENERGY DRINK mark, Respondent-BBE
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`disclaimed the exclusive right to use “ENERGY DRINK” apart from the mark as shown. (Ex. 5,
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`‘505 Registration File History.)
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`During prosecution of the LIQUID HERBAL NITRO mark, Petitioner-Spano similarly
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`disclaimed the exclusive right to use “LIQUID HERBAL” apart from the mark as shown. (Ex. 3,
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`‘066 Application File History.) Thus, both Petitioner-Spano and Respondent-BBE impliedly
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`acknowledge that the dominant part of the marks NITRO ENERGY DRINK and LIQUID
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`HERBAL NITRO is the word “NITRO.” Moreover, Respondent-BBE’s own specimen shows
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`that the word “NITRO” is prominently featured in large font while the words “ENERGY
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`DRINK” are substantially inconspicuous and featured in small font. (Ex. 5, ‘505 Registration
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`File History.) Petitioner-Spano’s “energy drink” also prominently features the word “NITRO” on
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`the product. (Ex. 4, ‘066 Application File History.) Because both Petitioner-Spano’s mark
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`LIQUID HERBAL NITRO and Respondent-BBE’s mark NITRO ENERGY DRINK include the
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`dominant word “NITRO”, which is also prominently featured on each of the respective products,
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`the marks are similar with respect to appearance, sound, connotation and commercial impression.
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`The second factor in determining likelihood of confusion is the relatedness of the goods
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`or services and the activities surrounding their marketing. In re August Storck KG, 218 U.S.P.Q.
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`823 (TTAB 1983). At least one of Petitioner-Spano’s goods, i.e., the LIQUID HERBAL NITRO
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`“energy drink” beverage and Respondent-BBE’s goods, i.e., NITRO ENERGY DRINK beverage
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`are substantially the same. “Energy drinks” are soft drinks advertised as providing energy to
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`improve physical activity of the drinker, as compared to a typical drink. Rather than providing
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`food energy (as measured in calories), “energy drinks” are designed to increase a user's mental
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`alertness and physical performance by the addition of caffeine, vitamins, and herbal supplements
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`which may interact to provide a stimulant effect over and above that obtained from caffeine
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`alone. (Declaration of Shelley M. Cobos (“Cobos Decl., ¶ 2, Ex. 6.)
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`Both LIQUID HERBAL NITRO energy drink beverage sold by Petitioner-Spano and
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`NITRO ENERGY DRINK beverage sold by Respondent-BBE are non-alcoholic, carbonated
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`energy drinks. (Span Decl., ¶ 6, Ex. C; Ex. 7, Respondent-BBE’s Internet website
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`www.nitroenergy.com.br.) Petitioner-Spano’s LIQUID HERBAL NITRO energy drink contains
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`carbonated water, sucrose, dextrose, citric acid, taurine, sodium citrate, natural and artificial
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`flavor, caffeine, sodium benzoate, fumaric acid, inositol, caramel color, potassium sorbate,
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`niacin, calcium pantothenate, pyridoxine hydrochloride, riboflavin, cyanocobalamin. (Spano
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`Decl., ¶ 6, Ex. C.) Respondent-BBE’s NITRO ENERGY DRINK at least contains carbonated
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`water, guarana, glucuronolactone, B vitamins, caffeine, artificial flavor and taurine. (Ex. 8,
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`Respondent-BBE’s Response to Request for Production No. 14.) Petitioner-Spano’s LIQUID
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`HERBAL NITRO energy drink beverage is marketed as an “energy drink”. (Spano Decl., ¶ 6,
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`Ex. C.) Similarly, Respondent-BBE’s NITRO ENERGY DRINK beverage is also marketed as an
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`“energy drink”. (Ex. 7, Respondent-BBE’s Internet website www.nitroenergy.com.br.) Both
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`Petitioner-Spano’s LIQUID HERBAL NITRO energy drink and Respondent-BBE’s NITRO
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`ENERGY DRINK come in similar sized cans. Thus, the relatedness of the goods and the class of
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`purchasers of Petitioner-Spano’s LIQUID HERBAL NITRO energy drink beverage and
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`Respondent’s NITRO ENERGY DRINK beverage, namely purchasers and/or consumers of
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`“energy drinks”, are exactly the same.
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`Moreover, “energy drinks” are typically sold in retail venues such as grocery stores,
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`convenience stores and similar retail and/or wholesale venues in addition to being sold on-line by
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`the manufacturer and/or distributor. For example, the well-known convenience stores 7-11 and
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`AM/PM carry Petitioner-Spano’s LIQUID HERBAL NITRO energy drinks. (Span Decl., ¶ 8,
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`Ex. D.) Respondent-BBE was recently in negotiations with 7-11 regarding endorsement of
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`NITRO ENERGY DRINK. (Ex. 9, Respondent-BBE’s Response to Request for Production No.
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`18.) Additionally, endorsements for energy drinks are often done in conjunction with sporting
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`events. As shown in Exhibit C, Petitioner-Spano’s LIQUID HERBAL NITRO “energy drink”
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`was advertised on a racing car during the Davin Racing promotion. (Spano Decl., ¶ 6, Ex. C.) As
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`disclosed in Respondent-BBE’s document production, Respondent-BBE is currently in
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`negotiation to sponsor an Andretti Green Car at the Indycar Series in 2009. Ex. 9, Respondent-
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`BBE’s Response to Request for Production No. 18.) Thus, the channels of trade for both
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`Petitioner-Spano’s LIQUID HERBAL NITRO energy drink and Respondent’s NITRO
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`ENERGY DRINK are the same.
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`Furthermore, Petitioner-Spano’s ‘066 Application was refused by the United States
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`Patent and Trademark Office on the ground of likelihood of confusion in view of the ‘505
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`Registration. In view of the disclaimer of “LIQUID NITRO” in Petitioner-Spano’s ‘066
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`Application and the disclaimer of “ENERGY DRINK” in Respondent-BBE’s ‘505 Registration,
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`-13-
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`the Examining Attorney determined that “NITRO” portions of the marks are identical in spelling
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`and meaning. (Ex. 3, ‘066 Application File History.) The Examining Attorney also found the
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`goods used in connection with each mark were similar. (Id.)
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`As the respective parties’ marks are similar and the goods are identical, similar and/or
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`related, there is a likelihood that consumers will be confused as to the source of these goods.
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`IV. CONCLUSION
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`The undisputed facts clearly establish that Petitioner-Spano is entitled to summary
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`judgment sustaining the cancellation and cancelling Respondent-BBE’s ‘505 Registration. First,
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`there is no genuine issue of material fact that the marks are similar. The dominant part of each
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`mark is “NITRO” – exactly the same word. Second, there is no genuine issue of material facts
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`that the goods sold in connection with each mark, namely, energy drinks, are identical, similar
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`and/or related. Accordingly, Petitioner-Spano is entitled to summary judgment as a matter of
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`law.
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`Petitioner-Spano requests that all proceedings not germane to this Summary Judgment
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`Motion be suspended until such time as the Board decides the disposition to this motion. 37
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`C.F.R. § 2.127(d); TBMP §528.03. Petitioner-Spano respectfully requests this Board grant the
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`present motion and enter judgment in its favor, and therefore cancel Respondent-BBE’s
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`Registration No. 3,146,505.
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`Respectfully submitted,
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`LOZA & LOZA, LLP
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`___________________________
`Shelley M. Cobos, Esq.
`Counsel for Petitioner, Dante Peter Spano
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`-15-
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`Dante Peter Spano,
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`an individual,
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` Petitioner,
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`v.
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`Registration No.: 3,146,505
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`For the mark: NITRO ENERGY DRINK
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`Date Registered: September 19, 2006
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`Cancellation No.: 92/050127
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`Blue Beverages Envasadora Ltd.,
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`(cid:1)
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`a Brazilian Limited Corporation
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`
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`(cid:1)
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`Respondent.(cid:1)
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`DECLARATION OF SHELLEY M. COBOS
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`I, Shelley M. Cobos, declare state the following:
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`1.
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`I am an attorney and counsel for Petitioner Dante P. Spano and I have personal
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`knowledge of the facts set forth herein and can testify competently thereto if called in a court of
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`law or administrative forum.
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`2.
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`A true and correct copy of the definition of “Energy drink” on Wikipedia
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`available at http://en.wikipedia.org/wiki/Energy_drink, last accessed on May 29, 2009 is attached
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`as Exhibit 6.
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`3.
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`A
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`true and correct copy of
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`the Petitioner-BBE’s website available at
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`www.nitroenergy.com.br, last accessed on May 29, 2009 is attached as Exhibit 7.
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`/ / /
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`I declare, under penalty of perjury under the laws of the United States of America, that
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`the foregoing is true and correct to the best of my knowledge.
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`Executed on June 4, 2009 in Los Angeles County, California.
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`_____________________
`Shelley M. Cobos
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`-2-
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`IN THE UNITED STATES FATENT AND TRADEMARK IDFFICE BEFORE THE
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`TRADEMARK TRIAL AND APPEAL BDARD
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`Dante Peter Spano,
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`Registration No; 3,146,565
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`an individual,
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`For the mark: NITRD ENERGY DRINK
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`Petitioner,
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`Date Registered: September I9, sons
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`v.
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`Cancellation No.: 92I[l5fl 12?
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`Blue Beverages Envasadora Ltd.,
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`a Brazilian Limited Corporation
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` Res onrient.
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`DECLAI-IALTIUN (IF DANTE I’. SPANU
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`I, Dante P. Spano, declare state the following:
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`I.
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`I am the owner of the LIQUID HERBAL NITRG common law trademark and I
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`have personal knowledge of the faets set Forth herein and ean testify eornpetently thereto ifealled
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`in a court of law or administrative Forum.
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`2.
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`I began using the mark LIQUID HERBAL NITRD in connection with dietary
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`supplements, also known as “energy shooters", at least as early as Mareh T, EGIJE. A true and
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`eorreet copy of the March it’, 2002 Enyoiee to North Pagosa Shell Gasoline Station for the sale of
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`LIQUID HERBAL HITRD dietary supplements, also known as “energy shooters", is attached as
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`Exhibit A.
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`3.
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`I began using the mark LIQUID HERBAL NITRD in connection with non-
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`alcoholic drinks, namely, carbonated beverages, also known as “energy drinks", at least as early
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`

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`as December 3, EDGE. A true and correct copy of the December 2, EDGE Invoice to Kassir Co. for
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`the sale of LIQUID HERBAL NITRIC) non-alcoholic beverage, namely, non—carbonated
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`beverage, also known as “energy drinks”, is attached as Exhibit B.
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`4,
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`My use of LIQIJIJJ HERBAL NFTRD in connection with dietary supplements and
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`non-alcoholic beverages, namely, carbonated beverages has been continuous since March T,
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`2{llJ2 and December 2, H103, respectively, and l have a bona flde intention to continue using the
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`marks in connection with dietary supplements and nonalcoholic beverages, namely, carbonated
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`beverages.
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`5.
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`From the date of'first use to the present, the LIQUID HERBAL Nl'l'RU mark.
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`appears on the labels of all of my products sold under the mark.
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`15.
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`The LIQUID HERBAL l*~Il'l"Rf) mark is displayed on all advertising materials,
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`price lists and Internet websites. True and correct copies of advertising materials, price lists and
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`lntemet websites vvnanv_ligLu'dherbalnitro.com and m_“vH\3.;..[:_1§.-,1_'I_sal_I1_itJ printed on May 29,
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`2t}D9 displaying the LIQUID l'lER.BAL NITRD mark are attached as Exhibit C.
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`I I I
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`I I I
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`I I I
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`I I I
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`I I I
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`I I I
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`I I I
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`I I I
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`Hf
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`

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`7'".
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`By June 6, Zflflér. I had already sold over Rum--.+;;;.
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`r;-rth ef‘LlQUII} HERBAL
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`MITRE} “energy drink”. A true and eerreet copy of Sales by item mi‘ LEQUID l1ERBAL NITRIC}
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`“energy drin " From [}eeember'2, 20133 through June 3!], Eflflfi is attached as Exhibit D. Beth part
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`r1Lu~nbe1*s “LT?'?f}lJ5" and “LN?Tr'fl{)5“’ correspond Le LIQUID EIERBAL NITRD “energy drink".
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`I deelalt. under penaity of peijury under the laws ef the United States of America, that
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`the foregoing is true and eerteet ten the best of my knowledge.
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`2009 “~.._: u
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` Executed on June
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`

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`EXHIBIT A — REDACTED
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`

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`EXHIBIT B — REDACTED
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`

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`EXHIBIT C — REDACTED
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`EXHIBIT D — REDACTED
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`

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`EXHIBIT 1
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`

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`RESPONSE:
`
`The brand NITRO ENERGY DRINK is dealing in negotiations to sponsor an
`Andretti Green car at Indy Car Series in 2009. Emails providing negotiation
`information are attached, which are considered confidential infonnation. The
`brand NITRO ENERGY DRINK does not advertise on television.
`
`19.
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`Provide all documents and things disclosing the first date of use of the
`Respondent’s mark NITRO ENERGY DRINK in commerce in each state,
`county or city (including the District of Columbia) in the United States, its
`territories and possessions.
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`RESPONSE:
`
`Attached are first shipment invoices for the states of Florida, Texas, and New
`York with invoice numbers and dates.
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`20.
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`Provide all documents and things disclosing the first date of use of the
`Respondent’s mark NITRO ENERGY DRINK in commerce in each state,
`county or city (including the District of Columbia) in the United States, its
`territories and possessions as used in connection with non-alcoholic
`beverages, namely, energy drinks.
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`RESPONSE:
`
`The brand NITRO ENERGY DRINK is usually used with another brand
`belonging to Blue Beverages Envasadora — called Blue Energy Xtreme Energy
`Drink. Both brands belong to Blue Beverages Envasadora and are usually sold,
`and sometimes promoted, together.
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`The first shipment invoice for the states of Florida, Texas and New York where
`Nitro Energy Drink was sold with Blue Energy Xtreme energy drink with invoice
`number and date follows:
`
`State
`Texas
`Florida
`New York
`
`Customer
`Grupo Saesa
`Poultry
`World Wide Foods
`
`Date
`4!1f2005
`5;’24f2004
`5a’16!200S
`
`Invoice
`BV-07
`BV—10
`BV-O3
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`21.
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`Provide one specimen each of all advertising and promotional documents
`used in commerce in each state, county or city (including the District of
`Columbia) in the United States, its territories and possessions bearing
`Respondent’s mark NITRO ENERGY DRINK as used in connection with
`non-alcoholic beverages, namely, energy drinks.
`
`

`
`EXHIBI