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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1088203 Filing date: 10/13/2020 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 Sazerac Brands, LLC Granted to Date 10/14/2020 of previous ex- tension Address 10101 LINN STATION RD SUITE 400 LOUISVILLE, KY 40223 UNITED STATES Attorney informa- CYNTHIA JOHNSON WALDEN tion FISH & RICHARDSON P.C. PO BOX 1022 MINNEAPOLIS, MN 55440-1022 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected], [email protected] 6175425070 Docket Number Applicant Information Application No. 88796006 Publication date 06/16/2020 Opposition Filing 10/13/2020 Opposition Peri- 10/14/2020 Date od Ends Applicant STRONG SIDE MARKETING, LLC 1018 N WINNETKA AVE DALLAS, TX 75208 UNITED STATES Goods/Services Affected by Opposition Class 033. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Spirits Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Registration 1065407 Application Date 12/15/1975 No. Registration Date 05/10/1977 Foreign Priority NONE Date Word Mark EAGLE RARE Design Mark Description of NONE Mark Goods/Services Class 033. First use: First Use: 1975/02/12 First Use In Commerce: 1975/02/12 BOURBON WHISKEY U.S. Registration 3254611 Application Date 10/19/2006 No. Registration Date 06/26/2007 Foreign Priority NONE Date Word Mark NONE Design Mark Description of The mark consists of eagle in flight over water. Mark Goods/Services Class 033. First use: First Use: 2001/12/01 First Use In Commerce: 2001/12/01 Whisky Attachments Notice of Opposition - Eagle Talon Spirits.pdf(225455 bytes ) Signature /Cynthia Johnson Walden/ Name CYNTHIA JOHNSON WALDEN Date 10/13/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the matter of Application Serial No. 88/796,006 For the Mark EAGLE TALON SPIRITS Published in the Official Gazette on June 16, 2020 SAZERAC BRANDS, LLC, Opposer, Opposition No. _____________ v. STRONG SIDE MARKETING, LLC Applicant. NOTICE OF OPPOSITION In the matter of Application Serial No. 88/796,006 (“the ‘006 Application”), filed February 13, 2020 by Strong Side Marketing, LLC (“Applicant”), for the mark EAGLE TALON SPIRITS, Opposer Sazerac Brands, LLC (“Opposer”), a Delaware limited liability company having its principal place of business at 10101 Linn Station Road, Suite 400, Louisville, Kentucky 40223, believes that it will be damaged by the continued registration of the mark shown in the above-identified application and hereby opposes the same in accordance with the provisions of Section 13 of the Trademark Act of July 5, 1946 (15 U.S.C. § 1063). The grounds for this Opposition are as follows: PARTIES AND STANDING 1. Opposer, through its parent company, Sazerac Company, Inc., markets and sells a number of different types and brands of alcoholic beverages and distilled spirits, including Notice of Opposition Sazerac Brands, LLC v. Strong Side Marketing, LLC Serial No.: 88/796,006 Mark: EAGLE TALON SPIRITS Page 2 tequilas, whiskeys, vodkas, brandies, rums, and specialty liqueurs. Opposer has marketed and sold alcoholic beverages and distilled spirits in the United States for over a century. 2. Since at least as early as 1975, and long prior to Applicant’s February 13, 2020 filing date, Opposer and its predecessors in interest have marketed and sold alcoholic beverage products under the mark EAGLE RARE. In addition, Sazerac owns and uses the following trademarks in the United States, each of which is the subject of a valid, incontestable U.S. trademark registration: EAGLE RARE (U.S. Reg. No. 1,065,407) issued on May 10, 1977, for “bourbon whiskey”; and Eagle Rare Logo (U.S. Reg. 3,254,611), issued on June 26, 2007, for “whisky” (referred to collectively as the “Eagle Marks”). Attached as Exhibit A are true and correct copies of printouts from the USPTO’s TSDR database showing the current status and title of Opposer’s Eagle Marks. 3. As indicated in the ‘006 Application, Applicant is a Texas limited liability company with a mailing address of 1018 N Winnetka Ave., Dallas, Texas 75208. 4. Applicant filed its application to register EAGLE TALON SPIRITS on February 13, 2020 on an intent to use basis for proposed use with “Spirits” in Class 33. 5. As the owner of record of prior registrations for similar marks for legally identical goods, and as a current user of similar marks for alcoholic beverages, Opposer has standing to bring this proceeding. 2 Notice of Opposition Sazerac Brands, LLC v. Strong Side Marketing, LLC Serial No.: 88/796,006 Mark: EAGLE TALON SPIRITS Page 3 FACTS Opposer and its EAGLE Marks 6. Opposer, through its predecessors in interest, first adopted the EAGLE RARE mark for use in connection with bourbon whiskey in 1975 and the Eagle Rare Logo mark for use in connection with whiskey in 2001. Since then, Opposer, together with its predecessors in interest, has invested substantial amounts of money, time and effort in developing, establishing, promoting and selling its products under the Eagle Marks. During that time, Opposer has developed substantial goodwill in the Eagle Marks, which are valuable assets of Opposer. 7. Opposer’s EAGLE RARE brand products are sold throughout the United States where distilled spirits are typically sold. This includes “off premises” sales at liquor stores, grocery stores, and other retail outlets and “on premises” sales at bars, restaurants, and other locations where individual alcoholic drinks are sold. GROUND FOR OPPOSITION: PRIORITY & LIKELIHOOD OF CONFUSION 15 U.S.C. § 1052(d) 8. Opposer hereby repeats and re-alleges the allegations contained in paragraphs 1 through 7 above as if fully set forth herein. 9. Upon information and belief, given the long-standing and prominent use of the Eagle Marks by Opposer, Applicant must have known of Opposer's rights in the Eagle Marks. In addition, given Opposer's federal registrations for its Eagle Marks, Applicant had at least constructive notice of Opposer's rights in them. 3 Notice of Opposition Sazerac Brands, LLC v. Strong Side Marketing, LLC Serial No.: 88/796,006 Mark: EAGLE TALON SPIRITS Page 4 10. Applicant’s EAGLE TALON SPIRITS mark, with the leading and prominent use of the term EAGLE, is likely to lead to confusion in the marketplace with Opposer’s EAGLE Marks. 11. Opposer’s use in commerce and registration of the Eagle Marks predate any priority date Applicant can claim for its EAGLE TALON SPIRITS mark. 12. The goods claimed in the ‘006 Application are highly similar and/or legally identical to Opposer’s goods. 13. Upon information and belief, Applicant’s goods do, or would, travel and/or be promoted in the same or similar channels of trade as Opposer’s, for sale to the same class of consumers. 14. There is a likelihood that consumers and potential consumers of either Opposer or Applicant will be confused or deceived into believing that the goods emanate from the same source, or that they are somehow sponsored by or affiliated with the other, all to the great detriment of the goodwill which Opposer has built in its EAGLE Marks. 15. As a result of this likely confusion, Opposer believes that it will be damaged by the use and registration of Applicant’s EAGLE TALON SPIRITS mark. 16. Opposer has not consented and does not consent to Applicant’s use or registration of Applicant’s mark. 4 Notice of Opposition Sazerac Brands, LLC v. Strong Side Marketing, LLC Serial No.: 88/796,006 Mark: EAGLE TALON SPIRITS Page 5 WHEREFORE, Opposer respectfully requests that the Board sustain this Opposition, and refuse registration of the ‘006 Application, and grant such other and further relief as the Board deems just and proper. Respectfully submitted, SAZERAC BRANDS, LLC By its Attorneys, Date: October 13, 2020 /Cynthia Johnson Walden/ Cynthia Johnson Walden Ryan E. Thomas FISH & RICHARDSON P.C. Postal Address: P.O. Box 1022 Minneapolis, MN 55440-1022 Courier Mail Address: One Marina Park Drive Boston, MA 02210 Telephone: (617) 542-5070 Facsimile: (617) 542-8906 [email protected]; [email protected], [email protected], [email protected] 5 EXHIBIT A EXHIBIT A Generated on: This page was generated by TSDR on 2020-10-13 11:04:46 EDT Mark: EAGLE RARE US Serial Number: 73071853 Application Filing Dec. 15, 1975 Date: US Registration 1065407 Registration Date: May 10, 1977 Number: Register: Principal Mark Type: Trademark TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with the Office. Status: The registration has been renewed. Status Date: May 25, 2017 Mark Information Mark Literal EAGLE RARE Elements: Standard Character No Claim: Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S) Type: Disclaimer: APPLICANT DISCLAIMS THE EXCLUSIVE USE OF "RARE" APART FROM THE MARK AS SHOWN. Goods and Services Note: The following symbols indicate that the registrant/owner has amended the goods/services: Brackets [..] indicate deleted goods/services; Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and Asterisks *..* identify additional (new) wording in the goods/services. For: BOURBON WHISKEY International 033 - Primary Class U.S Class(es):

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