Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: Filing date: ESTTA661404 03/16/2015 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 San Francisco Bay Area Rapid Transit District Granted to Date of previous extension 03/21/2015 Address 300 Lakeside Drive P.O. Box 12688 Oakland, CA 94604-2688 UNITED STATES Attorney information Linda Joy Kattwinkel Owen, Wickersham & Erickson, P.C. 455 Market Street, Ste. 1910 San Francisco, CA 94105 UNITED STATES ljk@owe.com, jrhodes@owe.com, tmparalegal@owe.com Phone:415.882.3200 Applicant Information Application No 86370084 Publication date 01/20/2015 Opposition Filing Date 03/16/2015 Opposition Period Ends 03/21/2015 Applicant Truckee Craft Brewing 11197 Brockway Road, Suite #1 Truckee, CA 96161 UNITED STATES Goods/Services Affected by Opposition Class 032. First Use: 2008/12/21 First Use In Commerce: 2008/12/21 All goods and services in the class are opposed, namely: Beer Grounds for Opposition Dilution Trademark Act section 43(c) Other No lawful use in commerce (27 C.F.R. 7.41) Marks Cited by Opposer as Basis for Opposition U.S. Registration No. 972406 Application Date 03/31/1972 Registration Date 11/06/1973 Foreign Priority Date NONE Word Mark BART Design Mark Description of Mark NONE Goods/Services Class 016. First use: First Use: 1965/09/30 First Use In Commerce: 1965/09/30 PRINTS AND PUBLICATIONS ISSUED FROM TIME TO TIME-NAMELY, BOOKS, BROCHURES, PAMPHLETS, NEWSLETTERS, MAPS AND POSTERS Class 039. First use: First Use: 1965/09/30 First Use In Commerce: 1965/09/30 TRANSPORTATION SERVICES-NAMELY, A REGIONAL RAPID TRANSIT SYSTEM U.S. Registration No. 975032 Application Date 03/31/1972 Registration Date 12/18/1973 Foreign Priority Date NONE Word Mark BART BA Design Mark Description of Mark NONE Goods/Services Class 016. First use: First Use: 1971/12/16 First Use In Commerce: 1971/12/16 PRINTS AND PUBLICATIONS ISSUED FROM TIME TO TIME-NAMELY, BOOKS, BROCHURES, PAMPHLETS, NEWSLETTERS, MAPS AND POSTERS Class 039. First use: First Use: 1971/10/15 First Use In Commerce: 1971/10/15 TRANSPORTATION SERVICES-NAMELY, A REGIONAL RAPID TRANSIT SYSTEM Attachments 72420023#TMSN.png( bytes ) BART60002-Opp.pdf(341297 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date. Signature /Linda Joy Kattwinkel/ Name Linda Joy Kattwinkel Date 03/16/2015 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the re matter of Trademark Application Applicant: Truckee Craft Brewing Serial No.: 86370084 Filed: August 18, 2014 Mark: B.A.R.T. Publication Date: January 20, 2015 30-Day Extension granted: February 3, 2015 San Francisco Bay Area Rapid Transit District, dba BART Opposer, V- NOTICE OF OPPOSITION Truckee Craft Brewing dba FiftyFifty Brewing Co. Applicant. San Francisco Bay Area Rapid Transit District dba BART or ?Opposer?) is a rapid transit district established pursuant to California Public Utilities Code Section 28500 et seq., with its principal place of business located at 300 Lakeside Drive, Oakland, California 94612. BART that it will be damaged by registration of the mark B.A.R.T. set forth in Application Serial No. 86370084, published in the O?cial Gazette on January 20, 2015, and hereby opposes the same. I As grounds for this Opposition, BART relies upon its federal registrations and applications and the common law rights developed by the use of its BART marks, and alleges on knowledge as to itself, and otherwise upon information and belief, as follows: Page 1 of5 l. BART is a government agency, specifically, a Special purpose transit district, formed by the California state legislature in 1957 to build and operate a public rapid transit system serving the San Francisco Bay Area. of?cial opening day for its rapid transit services was September 11, 1972, and BART has been providing such services continuously since then. Today BART operates passenger rapid transit train services via 669 third rail propulsion trains over 104 miles of surface, elevated and subway rails between 44 BART stations on ?ve lines connecting San Francisco with cities and suburbs in the Northern California counties of San Francisco, Alameda, Contra Costa, and San Mateo. BART also has direct connections to other regional rail services and bus lines in Northern California. BART is the ?fth busiest heavy rail rapid transit system in the United States. average weekday ridership is approximately 380,000 passengers; weekend day ridership is approximately 310,000 passengers. BART receives federal ?nding and is subject to the jurisdiction of the Federal Transit Administration. 2. Long before the launch of its services in 1972, Opposer has been known to the public by its acronym, BART. All of trains, stations and promotional materials use the name, trademark and service mark BART, as well as distinctive logo comprising the name BART in upper case letters combined with overlapping lower case letters and (the BART Logo) (collectively, the BART name and the BART Logo are referred to hereinafter as the Marks?). 3. BART owns U.S. Trademark Registration No. 0972406 for the word mark BART and No. 0975032 for the design mark comprising the BART Logo. Both registrations are for ?prints and publications issued from time to time-namely, books, brochures, pamphlets, newsletters, maps and posters? in class 16, and ?transportation services?namely, a regional rapid transit system? in class 39. Both registrations are incontestable. True and correct copies of these registrations are attached hereto as Exhibit A. 4. Opposer?s BART Marks have become well?known and famous through continuous and widespread use of the marks in the U.S. and worldwide for over forty years. Page 2 of 5 BART advertises its services extensively. BART has been featured in at least 14 motion pictures, numerous television shows, and even museum exhibits. BART is often the subject of unsolicited media coverage both locally and nationwide. 5. As a result of Opposer?s extensive marketing and promotion, coupled with the overwhelming commercial success of its services, and widespread national media and entertainment renown, Opposer?s BART Marks have become famous and well known nationwide. The BART Marks are so distinctive that members of the American public would associate the term BART with Opposer even when they encounter the term apart from Opposer?s services. 6. On August 18, 2014, Applicant, Truckee Craft Brewing (?Applicant?), ?led an application for the mark B.A.R.T. based on Section 1(a) for beer in International Class 32, alleging ?rst use, both anywhere and in commerce, of at least as early as December 21, 2008. Applicant?s principal place of business is listed as 11197 Brockway Road, Suite 1 in the city of Truckee, which is located in Nevada County, Northern California. 7. BART had garnered signi?cant goodwill, distinctiveness, and nationwide fame in its BART Marks decades before Applicant?s ?ling date and long before any date of ?rst use upon which Applicant can rely. 8. On information and belief, Applicant?s adoption and use of the BART. mark is with the intent to derive bene?t from the value and reputation of Opposer?s BART Marks. 9. On information and belief, Applicant has not obtained Certi?cates of Label Approval as required for interstate commerce under 27 CPR. 7.41. Accordingly, contrary to its declaration in support of its application, Applicant has not made lawful use in commerce of the BART. mark on beer as required for federal registration under the Lanham Act, Section 10. Opposer?s BART Marks are famous and well known and became famous under 15 U.S.C. 1125(c) well prior to the ?ling date of the Application or date of ?rst use upon which Applicant can rely. Page 3 of 5 11. Applicant?s use of the essentially identical mark B.A.R.T. is likely to cause and will cause dilution of the distinctive quality of Opposer?s BART Marks by blurring and tarnishment within the meaning of Section 43 of the Trademark Act. Such dilution would be a source of damage and injury to Opposer. WHEREFORE, BART prays that this opposition be sustained in its favor and that registration of the BART. mark shown and speci?ed in Application Serial No. 863 70084 be refused in accordance with the provisions of the Trademark Act. Dated: March 16 2015 Respectfully submitted, OWEN, WICKERSHAM ERICKSON, P.C. w- i . Linda Joy Kattwinkel Melville Owen Attorneys for Opposer SAN FRANCISCO BAY AREA RAPID TRANSIT DISTRICT 455 Market Street, 19th Floor San Francisco, CA 94105 Phone: (415) 882?3200 Fax: (415) 882-3232 E?mail: ljk@owe.com mowen@owe.com. Page 4 of 5 CERTIFICATE OF SERVICE I hereby certify that a true and complete copy of the foregoing NOTICE OF OPPOSITION has been served on Applicant Via ?rst class US mail, postage prepaid, to the following address: Don Thornburgh Don Thornburgh Law Corporation 466 Foothill Blvd. #220 La Canada Flintridge, California 91011 Dated: March 16, 2015 min/V 1212? Jessica Rhodes beer\notice of opposition - ljk.doc Page 5 of 5