Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA879672 Filing date: 02/26/2018 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 The Reds LLC Granted to Date 02/25/2018 of previous ex- tension Address 100 Joe Nuxhall Way Cincinnati, OH 45202 UNITED STATES

Attorney informa- James D. Weinberger tion Fross Zelnick Lehrman & Zissu, P.C. 4 Times Square, 17th Floor New York, NY 10036 UNITED STATES Email: [email protected], [email protected] Phone: (212) 813-5900 Applicant Information

Application No 87359766 Publication date 08/29/2017 Opposition Filing 02/26/2018 Opposition Peri- 02/25/2018 Date od Ends International Re- NONE International Re- NONE gistration No. gistration Date Applicant REDS RACING SRL VIA DEI CARABIOLI, 2 CELLATICA (BS), 25060 ITALY Goods/Services Affected by Opposition

Class 007. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: (Based on Intent To Use) Electric micro- engines and micro-motors for making model vehicles, aircraft and boats; parts and accessories in the nature of fittingsfor internal combustion and electric micro-engines and motors for model vehicles, air- craft and boats, namely, crankshaft, cylinders, pistons, connecting rods, glow plugs, engine exhaust systems comprised of pipes, collector and muffler, cooling systems comprised of cooling radiators, clutches, intake manifolds and fans; (Based on 44(e)) Internal combustion micro-engines and micro- motors for making model vehicles, aircraft and boats; parts and accessories in the nature of fittings for internal combustion and electric micro-engines for model vehicles, aircraft, and boats, namely, carburetors Class 028. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: (Based on Intent To Use) Scale model kits; scale-model vehicles; radio controlled model vehicles Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 2504075 Application Date 11/03/2000 No. Registration Date 11/06/2001 Foreign Priority NONE Date Word Mark C REDS Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 1936/04/14 First Use In Commerce: 1936/04/14 CLOTHING, NAMELY, CAPS, HATS, [ VISORS,] HEADWEAR, SHIRTS, T- SHIRTS, TANK TOPS, SWEATERS, [ TURTLENECKS, ] VESTS, SHORTS, UNIFORMS, JERSEYS, SWEATSHIRTS, BOXER SHORTS, ROBES, SLEEPWEAR, JACKETS, CLOTH BIBS, INFANTWEAR, CLOTH DI- APER SETS WITH UNDERSHIRT AND DIAPER COVER, [ JUMPERS, ] ROMPERS, [ ONESIES, ] [ BABY BOOTIES, ] TIES, FOOTWEAR, SOCKS

U.S. Registration 2533903 Application Date 10/06/2000 No. Registration Date 01/29/2002 Foreign Priority NONE Date Word Mark REDS Design Mark

Description of NONE Mark Goods/Services Class 041. First use: First Use: 1936/04/14 First Use In Commerce: 1936/04/14 ENTERTAINMENT, EDUCATION AND INFORMATION SERVICES, NAMELY, BASEBALL GAMES, COMPETITIONS AND EXHIBITIONS RENDERED LIVE, THROUGH BROADCAST MEDIA INCLUDING TELEVISION AND RADIO AND VIA A GLOBAL COMPUTERNETWORK OR A COMMERCIAL ON-LINE SER- VICE; PROVIDING INFORMATION IN THE FIELD OF SPORTS, ENTERTAIN- MENT AND RELATED TOPICSAND THE EXCHANGE OF INFORMATION RE- LATING THERETO; [ PROVIDING MULTI-USER INTERACTIVE COMPUTER GAMES, ALL VIA A GLOBAL COMPUTER NETWORK OR A COMMERCIAL ON-LINE SERVICE ]

U.S. Registration 2558520 Application Date 02/21/2001 No. Registration Date 04/09/2002 Foreign Priority NONE Date Word Mark C REDS Design Mark

Description of NONE Mark Goods/Services Class 016. First use: First Use: 1936/04/00 First Use In Commerce: 1936/04/00 PAPER GOODS AND PRINTED MATTER, NAMELY,TRADING CARDS, PLAY- ING CARDS, POSTERS, STICKERS, DECALS, TEMPORARY TATTOOS, BUMPER STICKERS, SCOREBOOKS, SCORECARDS, PRINTED BASEBALL GAME PROGRAMS, MAGAZINES AND BOOKS FEATURING BASEBALL, STATIONERYFOLDERS, [[ PREPRINTED AGENDA ORGANIZERS, AUTO- GRAPH BOOKS, ]] BOOK COVERS, CALENDARS, GREETING CARDS, BANK CHECKS, CREDIT CARDS, GIFT WRAPPING PAPER, PAPER GIFT AND PARTY BAGS, PAPER PARTY GOODS, [PAPER COASTERS,] PAPER NAPKINS, [PAPER TABLECLOTHS,] LITHOGRAPHS, PAPERWEIGHTS,[[ LETTER OPENERS, ]] PENS, PENCILS,[ NON-ELECTRIC ERASERS, AND UNGRADUATED RULERS]

U.S. Registration 3589112 Application Date 03/08/2006 No. Registration Date 03/10/2009 Foreign Priority NONE Date Word Mark CINCINNATI RED STOCKINGS Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 2001/01/00 First Use In Commerce: 2001/01/00 Clothing, namely, caps, hats, shirts, T-shirts, pullovers, baseball uniforms, jer- seys

U.S. Registration 2948016 Application Date 04/29/2004 No. Registration Date 05/10/2005 Foreign Priority NONE Date Word Mark REDS COMMUNITY FUND Design Mark

Description of NONE Mark Goods/Services Class 036. First use: First Use: 2004/04/23 First Use In Commerce: 2004/04/23 Charitable fund raising services for community-based charities

U.S. Registration 2968240 Application Date 01/20/2003 No. Registration Date 07/12/2005 Foreign Priority NONE Date Word Mark REDS RALLY PACK Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2003/02/00 First Use In Commerce: 2003/02/00 ENTERTAINMENT SERVICES IN THE NATURE OFLIVE PERFORMANCES BY A SPIRIT SQUAD AT PROFESSIONAL BASEBALL GAMES AND EXHIBI- TIONS, CLINICS, PROMOTIONS AND AT OTHER EVENTS, AND PERSONAL APPEARANCES BY MEMBERS OF A SPIRIT SQUAD; ENTERTAINMENT IN THE NATURE OF A SERIES OF TELEVISION PROGRAMS FEATURING PER- FORMANCES BY A SPIRIT SQUAD; PROVIDING SPORTS AND ENTERTAIN- MENTINFORMATION VIA A WEB SITE ON THE INTERNET; [AND FAN CLUB SERVICES]

U.S. Registration 3295173 Application Date 10/06/2005 No. Registration Date 09/18/2007 Foreign Priority NONE Date Word Mark C REDS Design Mark

Description of NONE Mark Goods/Services Class 009. First use: First Use: 1984/10/09 First Use In Commerce: 1984/10/09 Electrical and scientific apparatus, namely,[ radios;] pre-recorded videodiscs re- lating to baseball; [pre-recorded audio discs relating to baseball;] [ compactdisc cases;] [cases for personal digital assistants,] cell phone accessories, namely, cases and face plate covers; [binoculars;] calculators; [photographic cameras;] electric switch plate covers; luminous signs, neon signs; sunglasses; decorative magnets; [protective helmets,] [catcher's helmets;] video and computer game cartridges, video and computer game discs, [video and computer game cas- settes and] [video game controllers;] computer accessories, namely, mouse pads, computer game programs, and computer application programs download- able from a global computer network in the field of baseball

U.S. Registration 3331564 Application Date 10/06/2005 No. Registration Date 11/06/2007 Foreign Priority NONE Date Word Mark REDS Design Mark

Description of NONE Mark Goods/Services Class 014. First use: First Use: 1970/07/00 First Use In Commerce: 1970/07/00 jewelry, namely, bracelets, charms, earrings, rings, [belly rings,] necklaces, pendants, watches, costume jewelry, rubber or silicone bracelets and/or wrist- bands in the nature of a bracelet, medallions, ornamental metal pins, lapel pins, cuff links, metal belt buckles of precious metal, [tie tacks, tie pins,] money clips of precious metal, metal key chains of precious metal, metal key rings of pre- cious metal, clocks, wall clocks, alarmclocks, [fob watches, clocks incorporating key chains,] and non-monetary coins of precious metal

U.S. Registration 3385818 Application Date 10/29/1997 No. Registration Date 02/19/2008 Foreign Priority NONE Date Word Mark Design Mark Description of NONE Mark Goods/Services Class 016. First use: First Use: 2003/07/00 First Use In Commerce: 2003/07/00 photographic prints, mounted photographs and unmounted photographs, post- cards, posters, art, color, lithographic, and pictorial prints,and trading cards

U.S. Registration 3747846 Application Date 03/08/2006 No. Registration Date 02/09/2010 Foreign Priority NONE Date Word Mark CINCINNATI RED LEGS Design Mark

Description of NONE Mark Goods/Services Class 025. First use: First Use: 2009/12/14 First Use In Commerce: 2009/12/14 Clothing, namely, shirts, T-shirts

U.S. Registration 4026994 Application Date 07/28/2010 No. Registration Date 09/13/2011 Foreign Priority NONE Date Word Mark REDS Design Mark

Description of The mark consists of the word "REDS" instylized form. Mark Goods/Services Class 041. First use: First Use: 2011/02/27 First Use In Commerce: 2011/02/27 Entertainment services, namely, organizing and conducting an array of athletic events rendered live or recorded for distribution through broadcast media; Edu- cational services in the nature of baseball camps, and clinics; Organizing and conducting sweepstakes, and on-line competitions; Production and provision of on-going television, internet and radio programs in the field of sports; Providing news, information, pod casts, web casts, online newsletters, and online journals, namely, blogs, all of the foregoing in the field of sports; Organizing communitys- porting and cultural events; Entertainment in the nature of live performances by costumed mascots, cheerleaders, and dance groups; Fan clubs; Festivals fea- turing a variety of sports and entertainment activities

U.S. Registration 4029778 Application Date 07/28/2010 No. Registration Date 09/20/2011 Foreign Priority NONE Date Word Mark REDS Design Mark

Description of The mark consists of the word "REDS" instylized form. Mark Goods/Services Class 025. First use: First Use: 2011/02/25 First Use In Commerce: 2011/02/25 Clothing, namely, headwear, shirts, athletic uniforms, jerseys, socks, hosiery Attachments 76159012#TMSN.png( bytes ) 76142540#TMSN.png( bytes ) 76213616#TMSN.png( bytes ) 78832105#TMSN.png( bytes ) 78410527#TMSN.png( bytes ) 78727733#TMSN.png( bytes ) 78727734#TMSN.png( bytes ) 78832111#TMSN.png( bytes ) 85095106#TMSN.png( bytes ) 85095104#TMSN.png( bytes ) F2525816.pdf(46664 bytes )

Signature /s/ James D. Weinberger Name James D. Weinberger Date 02/26/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

THE LLC,

Opposer,

-against-

REDS RACING SRL,

Applicant.

NOTICE OF OPPOSITION

Opposer, The Cincinnati Reds LLC (“Opposer”), a Delaware limited liability company, with offices at Great American Ball Park, 100 Joe Nuxhall Way, Cincinnati, 45202, believes that it will be damaged by registration of the mark REDS RACING and design, as shown here: (“Applicant’s Mark”) for “Electric micro-engines and micro-motors for making model vehicles, aircraft and boats; parts and accessories in the nature of fittings for internal combustion and electric micro-engines and motors for model vehicles, aircraft and boats, namely, crankshaft, cylinders, pistons, connecting rods, glow plugs, engine exhaust systems comprised of pipes, collector and muffler, cooling systems comprised of cooling radiators, clutches, intake manifolds and fans; Internal combustion micro-engines and micro- motors for making model vehicles, aircraft and boats; parts and accessories in the nature of fittings for internal combustion and electric micro-engines for model vehicles, aircraft, and boats, namely, carburetors” in International Class 7 and “Scale model kits; scale-model vehicles; radio controlled model vehicles” in International Class 28 as shown in Application Serial No.

87/359,766 (the “Application”), and hereby opposes the same.

{F2524134.1 } As grounds therefore, Opposer alleges as follows:

1. Opposer is the owner of the CINCINNATI REDS MAJOR LEAGUE

BASEBALL club.

2. Since long prior to any date on which Applicant can rely, Opposer and its predecessors, and their affiliated and related entities, licensees and/or sponsors have used, promoted and advertised the name or mark REDS, alone or with other word, letter and/or design elements (“Opposer’s REDS Marks”), in connection with baseball games and exhibition services and a wide variety of goods and services, including, but not limited to, electrical and scientific apparatus.

3. Opposer owns U.S. federal registrations for Opposer’s REDS Marks in

International Classes 9, 14, 16, 25, 36 and 41, namely, Registration Nos. 2,504,075, 2,533,903,

2,558,520, 3,589,112, 2,948,016, 2,968,240, 3,295,173, 3,331,564, 3,385,818, 3,747,846,

4,026,994 and 4,029,778. All of the registrations for Opposer’s REDS Marks relied upon herein

are valid, subsisting and in full effect and serve as prima facie evidence of the validity of the

mark and of Opposer’s exclusive right to use the mark in connection with the goods and services

identified therein, pursuant to Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(a). Moreover,

the majority of the registrations relied upon herein are incontestable under Section 15 of the

Lanham Act, 15 U.S.C. § 1065, and therefore serve as conclusive proof of Opposer’s exclusive

right to use the mark in connection with the goods and services identified therein, as provided by

Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b).

4. Since long prior to March 6, 2017, Applicant’s filing date for the Application and

the earliest day on which Applicant may rely, Opposer, its predecessors, and their affiliated and

related entities, licensees and/or sponsors have promoted and advertised the sale and distribution

{F2524134.1 } 2 of goods and services bearing or offered in connection with Opposer’s REDS Marks, including, but not limited to, baseball games and exhibition services and a wide variety of goods and services, including but not limited to electrical and scientific apparatus, and have sold or distributed such goods and rendered such services in commerce.

5. As a result of the sales and promotion of its goods and services bearing or offered in connection with Opposer’s REDS Marks, Opposer has built up highly valuable goodwill in

Opposer’s REDS Marks, and said goodwill has become closely and uniquely identified and associated with Opposer.

6. On March 6, 2017, Applicant filed the Application for Applicant’s Mark for

“Electric micro-engines and micro-motors for making model vehicles, aircraft and boats; parts

and accessories in the nature of fittings for internal combustion and electric micro-engines and

motors for model vehicles, aircraft and boats, namely, crankshaft, cylinders, pistons, connecting

rods, glow plugs, engine exhaust systems comprised of pipes, collector and muffler, cooling

systems comprised of cooling radiators, clutches, intake manifolds and fans; Internal combustion

micro-engines and micro-motors for making model vehicles, aircraft and boats; parts and

accessories in the nature of fittings for internal combustion and electric micro-engines for model

vehicles, aircraft, and boats, namely, carburetors” in International Class 7 and “Scale model kits;

scale-model vehicles; radio controlled model vehicles” in International Class 28 on the basis of

an intent to use Applicant’s Mark in commerce.

7. Upon information and belief, Applicant did not use Applicant’s Mark for the

goods covered in the Application in United States commerce prior to its constructive priority use

date of March 6, 2017.

{F2524134.1 } 3

8. The goods covered by the Application are identical and/or closely related to the goods offered and services rendered in connection with Opposer’s REDS Marks.

9. Applicant’s Mark consists of the word REDS, which is identical to Opposer’s

REDS Marks, combined with the less prominent word RACING.

10. Applicant’s Mark so resembles Opposer’s REDS Marks as to be likely, when used in connection with Applicant’s goods, to cause confusion, to cause mistake, and to deceive the trade and public, who are likely to believe that Applicant’s goods have their origin with

Opposer and/or that such goods are approved, endorsed or sponsored by Opposer or associated in some way with Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).

11. Moreover, Opposer’s REDS Marks are famous for goods and services relating to baseball games and exhibition services and a wide variety of goods and services including, but not limited to, electrical and scientific apparatus, and had become famous long before the earliest priority date upon which Applicant can rely. Because Opposer’s REDS Marks have become famous, Applicant’s use and registration of Applicant’s Mark will damage Opposer by trading on the enormous goodwill associated with Opposer’s REDS Marks and diluting their distinctiveness. Thus, Applicant’s use and registration of Applicant’s Mark in connection with the services identified in the Application are likely to cause dilution by blurring of the famous

Opposer’s REDS Marks, in violation of Sections 13(a) and 43(c) of the Lanham Act, 15 U.S.C.

§§ 1063(a), 1125(c).

12. By reason of the foregoing, Opposer is likely to be harmed by the registration of the Application for Applicant’s Mark.

THEREFORE, it is respectfully requested that this Opposition be sustained and that registration of the mark shown in the Application be refused in its entirety.

{F2524134.1 } 4

Dated: New York, New York FROSS ZELNICK LEHRMAN & ZISSU, P.C. February 26, 2018

By:______James D. Weinberger ([email protected]) Jessica Vosgerchian ([email protected]) 4 Times Square, 17th Floor New York, New York 10036 Tel: (212) 813-5900

Attorneys for Opposer

{F2524134.1 } 5