Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA967875
`
`Filing date:
`
`04/18/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Osprey Packs, Inc.
`
`Corporation
`
`800 North Park Street
`Cortez, CO 81321
`UNITED STATES
`
`Citizenship
`
`Colorado
`
`Attorney informa-
`tion
`
`Michael J. Bevilacqua
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`UNITED STATES
`michael.bevilacqua@wilmerhale.com, ben.fernandez@wilmerhale.com, bar-
`bara.barakat@wilmerhale.com, whiptrademark@wilmerhale.com
`617 526 6448
`
`Registrations Subject to Cancellation
`
`Registration No.
`
`5360698
`
`Registration date
`
`12/19/2017
`
`Registrant
`
`ADIDAS AG
`ADI-DASSLER-STRASSE 1
`HERZOGENAURACH, 91074
`FED REP GERMANY
`
`Goods/Services Subject to Cancellation
`
`Class 025. First Use: 2017/10/05 First Use In Commerce: 2017/10/05
`All goods and services in the class are subject to cancellation, namely: Footwear; Shoes; Athletic
`footwear; Cycling shoes
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration No.
`
`5423667
`
`Registration date
`
`03/13/2018
`
`Registrant
`
`ADIDAS AG
`ADI-DASSLER-STRASSE 1
`HERZOGENAURACH, 91074
`FED REP GERMANY
`
`Goods/Services Subject to Cancellation
`
`Class 025. First Use: 2014/11/30 First Use In Commerce: 2014/11/30
`
`
`
`ESTTA Tracking number:
`
`ESTTA967875
`
`Filing date:
`
`04/18/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Osprey Packs, Inc.
`
`Corporation
`
`800 North Park Street
`Cortez, CO 81321
`UNITED STATES
`
`Citizenship
`
`Colorado
`
`Attorney informa-
`tion
`
`Michael J. Bevilacqua
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`UNITED STATES
`michael.bevilacqua@wilmerhale.com, ben.fernandez@wilmerhale.com, bar-
`bara.barakat@wilmerhale.com, whiptrademark@wilmerhale.com
`617 526 6448
`
`Registrations Subject to Cancellation
`
`Registration No.
`
`5360698
`
`Registration date
`
`12/19/2017
`
`Registrant
`
`ADIDAS AG
`ADI-DASSLER-STRASSE 1
`HERZOGENAURACH, 91074
`FED REP GERMANY
`
`Goods/Services Subject to Cancellation
`
`Class 025. First Use: 2017/10/05 First Use In Commerce: 2017/10/05
`All goods and services in the class are subject to cancellation, namely: Footwear; Shoes; Athletic
`footwear; Cycling shoes
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration No.
`
`5423667
`
`Registration date
`
`03/13/2018
`
`Registrant
`
`ADIDAS AG
`ADI-DASSLER-STRASSE 1
`HERZOGENAURACH, 91074
`FED REP GERMANY
`
`Goods/Services Subject to Cancellation
`
`Class 025. First Use: 2014/11/30 First Use In Commerce: 2014/11/30
`
`
`
`All goods and services in the class are subject to cancellation, namely: Footwear
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`87238723
`
`Application Date
`
`11/16/2016
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`KESTREL
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 1992/03/00 First Use In Commerce: 1992/03/00
`Backpacks; Backpacks compatible with personal hydration systems, sold empty
`
`Attachments
`
`87238723#TMSN.png( bytes )
`Petition to Cancel 5360698 5423667.pdf(83125 bytes )
`
`Signature
`
`/barbara a. barakat/
`
`Name
`
`Date
`
`Barbara A. Barakat
`
`04/18/2019
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registrations Nos. 5360698 and 5423667
`
`Date of Issue: December 19, 2017 and March 13, 2108
`
`Osprey Packs, Inc.,
`
`Petitioner
`
`v.
`
`Adidas AG,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`__________________________________________
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Registrant
`__________________________________________)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No.
`
`BOX TTAB/FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`PETITION FOR CANCELLATION
`
`Osprey Packs, Inc., a corporation organized and existing under the laws of Colorado,
`
`located and doing business at 800 North Park Street, Cortez, Colorado 81321 (“Petitioner”),
`
`believes that it will be damaged by Registrations Nos. 5360698 and 5423667 for the marks “5 10
`
`KESTREL and Design” covering “Footwear; Shoes; Athletic footwear; Cycling shoes” and
`
`“KESTREL” covering “Footwear” in class 25, and hereby petitions to cancel the registrations of
`
`the marks “5 10 KESTREL and Design” and “KESTREL” for these goods.
`
`As grounds therefor, it is alleged that:
`
`
`
`ActiveUS 172805628v.1
`
`
`
`
`
`1.
`
`Petitioner is now, and has been for some time, engaged in the design, manufacture
`
`and sale of backpacks, packs, carrier bags, bags, luggage and travel bags.
`
`2.
`
`At least as early as March 1992, Petitioner adopted the name KESTREL for its
`
`backpacks.
`
`3.
`
`Petitioner adopted the mark “KESTREL” in connection with its backpacks and
`
`backpacks compatible with personal hydration systems, sold empty, and began using the mark in
`
`interstate commerce in connection with those goods at least as early as March 1992. Such use
`
`has been valid and continuous since the date of first use and has not been abandoned.
`
`4.
`
`Petitioner is the owner of United States Trademark Application Serial No.
`
`87238723, filed November 16, 2016, for the mark “KESTREL” in connection with technical
`
`backpacks for backpacking and load carrying; technical backpacks for backpacking and load
`
`carrying compatible with personal hydration systems, sold empty, based upon use in commerce
`
`since at least as early as March 1992.
`
`5.
`
`Petitioner’s trademark “KESTREL” is symbolic of the extensive goodwill and
`
`recognition built up by Petitioner through continuous use of said mark over a substantial period
`
`of time.
`
`6.
`
`Petitioner has expended considerable effort and expense in promoting its
`
`trademark “KESTREL” and the goods sold under such mark, with the result that the purchasing
`
`public has come to know, rely upon, and recognize the goods of Petitioner by such mark.
`
`Petitioner has an exceedingly valuable goodwill established in its mark.
`
`7.
`
`Petitioner is being harmed by the registrations for the marks “5 10 KESTREL and
`
`Design” and “KESTREL” because the registrations for those marks were cited against
`
`
`ActiveUS 172805628v.1
`
`- 2 -
`
`
`
`
`
`Petitioner’s application for the mark KESTREL, U S Serial No. 87238723, and is preventing
`
`Petitioner’s application from passing to registration.
`
` 8. Registration No. 5423667, sought to be canceled for the trademark “KESTREL”
`
`is registered for use in connection with footwear. The date of first use claimed by the Registrant
`
`for all the goods is November 30, 2014.
`
`9.
`
`Registration No, 5360698, sought to be canceled for the trademark “5 10
`
`KESTREL and design” is registered for use in connection with “Footwear; shoes; athletic
`
`footwear; cycling shoes.” The date of first use claimed by the Registrant for the goods is
`
`October 5, 2017.
`
`10.
`
`Petitioner’s application for KESTREL is currently refused, based upon a
`
`likelihood of confusion with Registrant’s Registrations Nos. 5360698 and 5423667.
`
`LIKELIHOOD OF CONFUSION
`
`11.
`
`Petitioner’s trademark “KESTREL” and Registrant’s trademarks “5 10 KESTREL
`
`and Design” and “KESTREL” are confusingly similar, as evidenced by the Examining
`
`Attorney’s refusal to register Petitioner’s application for its mark, based upon the Registrant’s
`
`registrations.
`
`12.
`
`According to the Examining Attorney, Registrant’s claimed goods in class 25 are
`
`closely related to the goods of the Petitioner and on information and belief will travel in the same
`
`channels of trade to the same potential purchasers.
`
`13.
`
`Petitioner began to use its mark in 1992, long before the filing dates of the
`
`applications for Registrant’s registrations, May 5, 2016 for the mark “5 10 KESTREL and
`
`design” and September 5, 2014 for the mark “KESTREL,” and long before the claimed dates of
`
`
`ActiveUS 172805628v.1
`
`- 3 -
`
`
`
`
`
`first use of the Registrant, October 5, 2017 for the mark July 27, 2015 “5 10 KESTREL and
`
`design” and November 30, 2014 for the mark “KESTREL.”
`
`14.
`
`Petitioner’s trademark “KESTREL” is symbolic of the extensive goodwill and
`
`recognition built up by Petitioner through continuous use of said mark over a substantial period
`
`of time.
`
`15.
`
`Petitioner has expended considerable effort and expense in promoting its
`
`trademark “KESTREL” and the goods provided under such mark, with the result that the
`
`purchasing public has come to know, rely upon, and recognize the goods and services of
`
`Petitioner by such mark. Petitioner has an exceedingly valuable goodwill established in its mark.
`
`16.
`
`If the Registrant is permitted to retain the registrations sought to be canceled, and
`
`thereby, the prima facie exclusive right to use in commerce the marks “5 10 KESTREL and
`
`design” and “KESTREL” on goods considered by the United States Patent and Trademark Office
`
`to be closely related to the goods provided by Petitioner, Petitioner’s mark, and the goodwill
`
`established in its mark, will be diluted.
`
`17.
`
`If the Registrant is permitted to retain the registrations sought to be canceled, and
`
`thereby, the prima facie exclusive right to use in commerce the marks “5 10 KESTREL and
`
`design” and “KESTREL” on goods considered by the United States Patent and Trademark Office
`
`to be closely related to the goods provided by Petitioner, confusion in trade is likely to result
`
`from any concurrent use of Petitioner’s mark and those of the Registrant, all to the great
`
`detriment of Petitioner, who has expended considerable sums and efforts in promoting its mark
`
`and goods.
`
`18.
`
`Purchasers are likely to consider the goods of the Registrant sold under the marks
`
`“5 10 KESTREL and design” and “KESTREL” as emanating from Petitioner.
`
`
`ActiveUS 172805628v.1
`
`- 4 -
`
`
`
`
`
`19.
`
`If the Registrant is permitted to retain the registrations sought to be canceled, a
`
`cloud will be placed on Petitioner’s title in and to its trademark “KESTREL” and on its right to
`
`enjoy the free and exclusive use thereof in connection with the provision of its goods, all to the
`
`great injury of Petitioner.
`
`20.
`
`Petitioner is being harmed by the registration of the “5 10 KESTREL and design”
`
`and “KESTREL” marks because the registrations of those marks are cited against Petitioner’s
`
`application for the mark KESTREL U S Serial No. 87238723 and is preventing Petitioner’s
`
`application from passing to registration.
`
`21.
`
`Based on the foregoing, maintenance of Registrant’s registrations of the marks “5
`
`10 KESTREL and design” and “KESTREL” on the Principal Register of the United States Patent
`
`and Trademark Office are clearly causing injury and damage to the Petitioner.
`
`WHEREFORE, Petitioner deems that it is and will be damaged by Registrations Nos.
`
`5360698 and 5423667, and petitions for cancellation of the registrations thereof.
`
`Respectfully submitted,
`
`OSPREY PACKS, INC.
`
`/barbara a. barakat/
`_________________________________
`Michael J. Bevilacqua
`Reg. No. 31,091
`Benjamin Fernandez
`Reg. No. 55,172
`Barbara A. Barakat
`Reg. No. 32,190
`Attorneys for Petitioner
`
`
`
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`(617) 526-6154
`April 18, 2019
`
`
`ActiveUS 172805628v.1
`
`- 5 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
