BK RACING, LLC

Appln. No. 77/095,125 TM: 83 (Stylized) – Response to OA Issued 11/11/2011

BACKGROUND

Applicant, RED BULL GMBH (hereinafter “Red Bull” or “Applicant”), filed a Statement

of Use in connection with Appln. No. 77/095,125 in Classes 9, 12, 16, 21, 25, 28 on October 19,

2011. On November 11, 2011, the Examining Attorney issued the instant Office Action, partially

refusing the Statement of Use in connection with Classes 9 and 12 only1, stating that the applied-for

mark, as used on the specimens submitted with the Statement of Use, does not function as a

trademark to identify and distinguish Applicant’s goods from those of others and to indicate the

source of Applicant’s goods.

For the reasons set forth below, Applicant believes that the already-submitted specimens for

Classes 9 and 12 do, in fact, clearly function as a trademark to identify and distinguish Applicant’s

goods from those of others and to indicate the source of Applicant’s goods. As such, Applicant

respectfully requests that the specimens be accepted for Classes 9 and 12, and that Appln. No.

77/095,125 be approved for registration.

ARGUMENT

1. Class 9

A. Proposed Amended Goods

Computer game software, namely, specific features within vehicle racing games.

B. Explanation

As a preliminary matter, Applicant’s proposed amendment to the goods above should be

found permissible as it further narrows the scope of the goods, rather than impermissibly broadening

it. TMEP §1505.02(a).

1
As the Office Action of November 11, 2011 is a partial refusal only pertaining to the specimens submitted for Classes
9 and 12, it is implied that the Statement of Use has been accepted in connection with the other classes in the application,
namely, Classes 16, 21, 25, and 28.

-1-
In NASCAR, the racing team (the source – or in this case, Applicant) is identified by fans

and consumers by the number of the car, or in this case, the mark in question. See Exhibit A

showing how each driver and team is identified by a specific number so that fans can identify the

team and driver during the NASCAR events. This recognition of the source of the goods and

services offered under the mark by fans and consumers is not limited to the field of racing alone.

Rather it expands to all mediums within which the trademark numbers are used, including video

games. When a consumer purchases a NASCAR racing game and identifies his favorite team/driver

by the trademark number on the car within the game (the same way he would if he were watching

a NASCAR event), he is implicitly identifying the source of the trademark in connection with the

video game. With the proposed limiting amendments to the goods, the mark as featured within the

game identifies Applicant as the owner of that particular feature, namely the 83 car in the video

game, and licensor of the mark for commercial use in connection with video games.

Showing that consumers would identifying the source of the pending mark in connection

with the goods at issue is only one aspect of a valid specimen. The specimen must also show use

of the mark in commerce, 15 U.S.C. § 1051(a)(1); 37 C.F.R. §§ 2.34(a)(1)(iv) and 2.56(a); TMEP

§ 904, which is clear from the specimens submitted with the Statement of Use. Under Trademark

Law, use in commerce is defined very broadly. It is intended to cover any and all commerce that

may lawfully be regulated by Congress and any activity that substantially affects interstate

commerce. 15 U.S.C. § 1127; TMEP § 901.01. Here, the NASCAR video game shown in the

specimen allows the consumer to play as their favorite driver, who is necessarily connected to a

trademarked numbered vehicle. Essentially, the video game is purchased specifically for the

features within it – to give consumers the ability to feel like they, too, are in the driver’s seat as their

favorite driver, sponsored by their favorite team. As consumers purchase the video game for the

specific cars shown within, it is the trademarks featured within the game, such as the mark of Appln.

-2-
No. 77/095,125 (as sponsored by Applicant, and licensed to the video game developer), rather than

the overall idea of the video game that draws in customers and sells the product. Therefore, the

mark of Appln. No. 77/095,125 plays a significant role in substantially affecting interstate commerce

as related to video games, as it is a main reason consumers are drawn to purchase the video game

in the first place.

As the specimens submitted for Class 9 clearly show a method for consumers to purchase

the video game, and how the mark of Appln. No. 77/095,125 is featured within the game to entice

consumers to purchase and to represent the source of the feature within, Applicant has satisfied the

two requirements set forth for a valid specimen. Applicant respectfully requests that the proposed

amendments to the goods in Class 9, as well as the previously-submitted specimens be approved.

2. Class 12

The Examining Attorney has refused the submitted specimen in Class 12, stating that it does

not function as a trademark because it does not identify the name or source of the racing cars. More

specifically, “it does not appear that the applicant sells racing cars, accordingly, the owner’s manual

does not function for racing cars.” Applicant thanks the Examining Attorney for taking the time to

discuss this refusal further with Applicant’s Attorney on February 2, 2012. In the telephone

conversation, the Examining Attorney further clarified that the specimen was refused as the use of

the mark in the owner’s manual appears to only show applied-for mark on racing cars while in a

race, indicating that Applicant merely sponsors a racing team and does not actually provide the Class

12 goods to the public. Additionally, the Examining Attorney stated that the owner’s manual

resembled more of promotional material for Red Bull Racing Team, rather than something that

would be provided when a consumer purchases a vehicle. Applicant submits with this response

supplemental evidence to clarify and support the previously-submitted specimen. Applicant is not

replacing the specimen.

-3-
This owner’s manual, the complete version of which is added as supplemental evidence in

Exhibit B, is what is provided with the street-legal racing car when purchased by the public. It

includes detailed information about the modifications Applicant has made to the Toyota Camry for

this publically available street-legal vehicle. It is routinely accepted that when a company modifies

a vehicle to create a special edition, that company becomes an identifiable source of the vehicle.

For example, Eddie Bauer, Inc. obtained U.S. Registration No. 1,447,361 for “trucks, namely, utility

vehicles” when they first introduced the Eddie Bauer edition of the Ford Explorer. The source of

this modified vehicle became two-fold – Eddie Bauer, Inc. and Ford Motor Company. The same

should hold true here. As Applicant has developed and manufactured this highly-modified version

of the Toyota Camry, Applicant has become a source of the vehicle, which is clarified further by the

owner’s manual.

Additionally, the applied-for mark, as shown in the manual and as seen on the cars available

to the public, identifies Applicant as the source, due to the unique nature of the stylized number

logos in NASCAR. As stated above, in NASCAR, the public identifies the source of a vehicle by

the stylized number on the side of the race car. Each driver is assigned one number (no duplicate

numbers exist) and each team designs a highly stylized version of the number to associate the exact

logo with the source. As NASCAR is one of the most highly viewed professional sports in the

United States, the consuming public has a high awareness that the stylized number represents the

source of the car, and seeing such on a street-legal car in interstate commerce would create the same

association – identifying Applicant as the source of the land vehicle. The submitted specimen

clearly shows how the mark is used on the goods to identify Applicant as the source, as the excerpts

from the owner’s manual include clear photos of the mark on a “land vehicle”.

The Examining Attorney also stated that as the photo within the manual only shows the mark

in a racing environment, it does not appear to be available to the public. When a consumer wishes

-4-
to purchase this modified vehicle, it is because of its association with NASCAR. Seeing the exact

vehicle to be purchased in a racing environment, entices the consumer even further into making the

purchase, by showing them that by buying this vehicle, it is as if they, too, participate in NASCAR

events. These kinds of marketing tactics are common used within the car industry (and any industry

for that matter). For example, convertibles are often advertised in year-round warm, sunny

environments, but this does not mean that they are not also sold in colder cities such as Chicago.

Simply because the photos showing the source-identifying mark are taken on a race track is not

indicative of whether Applicant sells these cars, and such an assumption that these cars are not sold

is without basis. As further supplemental evidence showing that the vehicles in question are

available to the public for purchase, Applicant attaches Exhibit C. Exhibit C is a copy of the

relevant portions of the executed Consignment Agreement between Applicant’s wholly owned

subsidiary, Red Bull Racing, Inc., and Toyota of Cleveland. This agreement specifically anticipates

the sale of the cars shown in the owner’s manual by the Toyota of Cleveland dealership in the

ordinary course of business by stating:

The title to the Street Car shall pass directly from RBR to such person or persons to
whom the Street Car shall be sold in the ordinary course of business in the manner
and on the terms contained in this Agreement.

Per the above argument, Applicant respectfully requests that the originally submitted

specimen be accepted for Class 12.

-5-
Exhibit A

-6-
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Exhibit B

-7-
OWNER’S MANUAL
INSIDE THIS MANUAL
TTHE HISTORY BRAKES
RED BULL RACING TEAM . . . . . . . . . . . . . . . . 5
R OPERATING ABS SYSTEM
PARTS AND PIECES . . . . . . . . . . . . . . . . . . . 17
AASSEMBLY
CHASSIS FAB TO FINAL SETUP . . . . . . . . . . . . 7
C TIRES
DESCRIPTION . . . . . . . . . . . . . . . . . . . . . . . 17
TTHE BODY
CAMERA POD FLUIDS
FRONT SPLITTER OIL
REAR WING POWER STEERING
ROOF FLAPS RESERVOIRS
SIDE PODS WATER . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
TEATHERS . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
FUEL
INSTRUMENT PANEL DESCRIPTION . . . . . . . . . . . . . . . . . . . . . . . 19
DESCRIPTION
PROCEDURES . . . . . . . . . . . . . . . . . . . . . . . 11 SAFETY
ENERGY-ABSORBING FOAM
UNDER THE HOOD GLASS
ENGINE LEG BRACES
TRANSMISSION SEATS / SEATBELTS
PERFORMANCE . . . . . . . . . . . . . . . . . . . . . . 13 WINDOW NETS . . . . . . . . . . . . . . . . . . . . . 21

UNDER THE CAR
DESCRIPTION . . . . . . . . . . . . . . . . . . . . . . . 15 WWW.REDBULLRACINGUSA.COM

OWNER’S MANUAL . 3
THE HISTORY
RED BULL RACING TEAM
In the early days of Red Bull Racing Team, we were clearing out cobwebs in a vacated race shop and focused on booking hotel rooms and getting to
the track. But four short years later, here we are competing against the elite organizations in America’s premier form of motorsports.
Red Bull’s commitment to motorsports and our unconditional love of competition got us to this point. We have two of NASCAR’s ?nest young drivers
and a team that roared from mid-pack to the winner’s circle and into championship contention. In the ?rst three seasons, Red Bull Racing Team went
from NASCAR newborn to leading laps, winning a race and making the Chase.
As owner and operator of a two-car Sprint Cup Series team, Red Bull Racing Team is an ambitious effort that shows the commitment to American
motorsports and dedication to the Red Bull brand.
For our geeks, engineering means everything. For the greasers, so does the simple task of installing a steering wheel. They all work together, and the
combined effort produces as much speed and power as we can ?t into a single frame. Indeed, our minds are tuned to getting the Red Bull Toyotas
over the ?nish line ?rst.
In the silver No. 82 is Scott Speed, a former Formula One pilot who turned to stock cars in 2007. He’s in his second Sprint Cup season. His teammate
is Brian Vickers, the 2003 Nationwide Series champion, two-time Cup race winner and 2009 Chase participant who drives the blue No. 83.

NO. 83 DRIVER BRIAN VICKERS AT THE START OF THE 3M PERFORMANCE 400
08.17.08 MICHIGAN INTERNATIONAL SPEEDWAY

OWNER’S MANUAL . 5
ASSEMBLY
TASK DATES DESCRIPTION

CHASSIS FABRICATION 02.13.10 – 02.23.10 FIXTURING, FITTING AND WELDING TOGETHER THE TUBE STRUCTURE. MOUNTING
BRACKETS, SHEET METAL AND PRE-BODY IS COMPLETE. CAR IS READY FOR BODY BUILD.

MEDIA BLAST 02.26.10 – 02.27.10 STRIPPING OFF PAINT FROM PREVIOUS PAINT JOB.

BODY FABRICATION 02.28.10 – 02.29.10 INSTALLING BODY PANELS TO NASCAR SPECIFICATIONS.

FINISH FABRICATION 02.30.10 – 03.02.10 COOLING DUCTS, WINDOWS, CRUSH AND FILLER PANELS ARE FABRICATED AND FIT
BETWEEN THE BODY AND CHASSIS STRUCTURES.

ASSEMBLY 03.03.10 – 03.09.10 VEHICLE WAS ASSEMBLED PRIOR TO PAINT TO ENSURE ALL COMPONENTS WILL FIT.

CHASSIS FABRICATION 03.10.10 – 03.10.10 UPDATING OF SHEET METAL.

FINISH FABRICATION 03.11.10 – 03.16.10 STRIPPING AND PREPPING FOR PAINT.

PAINT SHOP 03.17.10 – 03.19.10 WASHING AND TREATING OF BARE METAL. PAINT CHASSIS AND INNER BODY. OUTER BODY
PREPARATION WITH BLOCKING, SANDING AND SMOOTHING TRANSITIONS. PRIME BODY.

FINISH FABRICATION 03.20.10 – 03.22.10 RE-ASSEMBLE POST PAINT.

ASSEMBLY 03.23.10 – 03.25.10 SUSPENSION.

RHINE ENTERPRISE 03.29.10 – 03.29.10 COMPANY THAT CONVERTED CAR TO STREET LEGAL — LIGHTING, ANTI-LOCK BRAKES, ETC.

FINISH FABRICATION 03.30.10 – 03.30.10 FINAL FITTING OF LIGHTS FROM BILL RHINE AND PREP FOR PAINT.

PAINT SHOP 03.31.10 – 03.31.10 BLOCKING, SANDING OF BODY. APPLY BLACK SEALER TO BODY AND BASE COAT OF RED BULL
BLUE. APPLY ALL GRAPHICS AND FINAL CLEAR COAT FOR GLOSSY FINISH.

FINISH FABRICATION 04.04.10 – 04.04.10 FINAL ASSEMBLY POST-PAINT.

ASSEMBLY 04.27.10 – 04.27.10 FINAL CHECK.

SETUP 04.28.10 – 04.29.10 WHEEL ALIGNMENT.

OWNER’S MANUAL . 7
THE BODY CAMERA POD
ROOF FLAPS
Introduced in 1994, roof ?aps
help prevent a car from becoming
REAR WING
An adjustable aerodynamic feature that provides better balance and control in
traf?c, the rear wing replaced the spoiler — a steel blade stripped across the rear
Whether or not a car is carrying in-car action during airborne during a spin. As a car deck lid. The wing reduces turbulent air behind the car, and the angle is adjustable
the telecast, a hockey puck-sized disk is mounted on the rotates and reaches an angle between zero and 16 degrees depending on desired downforce.
roof near the windshield to ensure all cars are equal. where signi?cant lift occurs, the
low pressure above the ?aps
causes them to deploy. The two
?aps generally keep cars on the
racing surface as they spin.

TETHERS
Via tethers inside the engine
compartment, the hood is attached
to the chassis to help prevent it
from taking off.

SIDE PODS
The double-frame rail on the driver’s side has steel
plating on the outside of the roll cage that helps prevent
intrusion during impact. There is also energy-absorbing
foam between the roll-cage door bars and panels.
FRONT SPLITTER
The front splitter — a piece of carbon ?ber-reinforced plastic below the nose — impacts downforce and aerodynamic
balance. The adjustable splitter enables teams to tune the front downforce to suit individual drivers and tracks.

OWNER’S MANUAL . 9
INSTRUMENT PANEL
7 8 9 10 11 12 13

1 3 5-6

2 4

DESCRIPTION
1. START
2. IGNITION
3. RADIATOR ON/OFF 18 20
4. AUXILARY
5-6. TURN SIGNALS
7. WATER TEMPERATURE
8. TACHOMETER 19 21
9. OIL PRESSURE
10. ABS ON/OFF
11. ABS MALFUNCTION
12. ABS BRAKE BIAS
13. MASTER SWITCH
PROCEDURES
14. HIGH BEAMS STARTING CAR: 1. Turn on master switch; 2. Start (START) switch up to engage; 3. Ignition (IGN) switch up to ?re engine; 4. When
15. LOW BEAMS engine ?res, release Start switch; 5. Radiator (RAD) switch up; 6. Driver fan (SEAT) to up – optional or if needed for driver comfort.
16. PARKING LIGHTS TURNING OFF CAR: 1. Ignition (IGN) switch down; 2. Turn off radiator (RAD) switch and driver fan (SEAT) switch, if used; 3. Turn off
14 16 17. WIPERS master power switch.
18. ABS DIAGNOSTIC PLUG-IN WIPERS: 1. Wiper (WIPER) switch up to engage (Note: Wiper located in driver side pouch.).
19. CIRCUIT BREAKER 10 LIGHTS: 1. To engage parking (PARK) lights turn switch up; 2. To engage low beam headlights (LOW BEAM) turn switch up; 3. To engage
20. CIRCUIT BREAKER 25 high beam headlights (HIGH BEAM) turn switch up.
21. CIRCUIT BREAKER 40
15 17 TURN SIGNALS: Left turn signal push lever down on steering column. Right turn signal push lever up on steering column.

OWNER’S MANUAL . 11
UNDER THE HOOD

ENGINE DRIVETRAIN
DISPLACEMENT: 410 cubic inches TRANSMISSION: Manuel four speed (H pattern)
BORE x STROKE: 4.040 x 4.00 inches TRANSMISSION FLUID: 29 ounces of 75-90
BLOCK: Cast iron FR 351 Boss Valvoline
CRANKSHAFT: 4340 Steel Eagle DRIVESHAFT: Dynotech 47.50in long
CONNECTING ROD: H Beam 4340 Eagle with 1350 U-joints
PISTON: Mahle PowerPak -19cc GEARBOX: G-Force single-rail gearbox
CAM: Hyd roller COMP Cams REAR GEAR: 96 ounces of 7590 Valvoline
CAM LIFT: .571 intake/.576 exhaust
CAM DURATION (AT .050 INCHES):
236/240 degrees
PERFORMANCE
CYLINDER HEAD: Edelbrock Victor Jr. CAPABILITIES
VALVE SIZE: 2.055 intake/1.60 exhaust HEIGHT/WEIGHT: 53.5 inches/3,400 pounds
VALVE SPRING: Manley Performance WHEELBASE: 110 inches
COMPRESSION RATIO: 10.2:1 FIRST GEAR: 45 mph (72 kmh), 2.93:1
ROCKER ARMS: SS Jesel SECOND GEAR: 71 mph (114 kmh), 1.87:1
ROCKER ARM RATIO: 1.6 THIRD GEAR: 104 mph (167 kmh), 1.28:1
RECOMMENDED FUEL: 108 Octane FOURTH GEAR: 133 mph (214 kmh), 1.00:1
FUEL CAPACITY: 68 liters (18 gallons) FINAL DRIVE: 4.11:1 (Visteon ring and pinion)
IGNITION TIMING: 32 degrees HORSEPOWER: 510 bhp at 6,100 rpms
at 3,000 rpms TORQUE: 505 ft./lbs. at 4,600 rpms
IGNITION: MSD REV LIMIT: 6,600 rpms
CARBURETOR: AED 750 HO (no choke) ACCELERATION: 0-60 mph in 3.4 seconds
INTAKE MANIFOLD: Victor Jr. QUARTER-MILE TIME: 11.7 seconds at 118

OWNER’S MANUAL . 13
UNDER THE CAR
2 1

3
4
5

6
7
8

DESCRIPTION
1. FUEL CELL HOUSING
2. TRACK BAR
3. REAR SHOCKS
4. SPRINGS
5. REAR-END HOUSING
(HOLDS AXLES)
6. GEAR 9
7. DRIVESHAFT
8. TRUCK ARMS
9. EXHAUST

OWNER’S MANUAL . 15
OPERATING ABS SYSTEM

BRAKES
1. On/off switch turns the system on and off. Manufacturer
suggests to always leave it on.
1 2 3
2. Red light (MAL) signi?es a problem with the system.
Contact Red Bull Racing Team.
3. The adjustment knob has 1-10 adjustment levels. One
(1) is turned counterclockwise or to the left. Ten (10) is
TIRES
turned clockwise or to the right. The manufacturer suggests
leaving it on 6-7. The higher the number the more work
for the computer, therefore a longer breaking distance. The
smaller the number the less work for the computer, therefore
decreasing breaking distance.
4. Diagnostics computer plug-in — to be used only by the
manufacturer if the system has problems or needs to be
programmed.
5-7. The 10, 25, and 40 black buttons are circuit breakers.
They should remain pushed in. If they do get tripped or “pop 4 5-7
out,” push them back in.

DESCRIPTION
PARTS AND PIECES TYPE: Goodyear GT2 Radials
CALIPERS AIR PRESSURE: 44 PSI (maximum)
FRONT: Brembo nickel-plated with 38 MAXIMUM LOAD: 2,149 pounds
and 44 millimeter pistons. WHEELS: Aero
REAR: Brembo dual block with 26 and WHEEL NUT TORQUE: 80 ft./lbs.
30 millimeter pistons.
ROTORS
FRONT: Brembo 1.375-inch thick,
12.900 diameter, 48 vanes.
REAR: Brembo 1.000-inch thick,
12.300 diameter, straight vane.
PADS
FRONT/REAR: Mintex F2 compound
PEDALS
Pro-System pedals with adjustable ratio.
CYLINDERS
Brembo Master Cylinders
FRONT: 22.00 millimeters
REAR: 22.00 millimeters
CLUTCH: 19.00 millimeters

OWNER’S MANUAL . 17
FLUIDS FUEL
1

POWER STEERING
FILL TWO INCHES FROM TOP.

WATER
LOCATED IN RIGHT-REAR
CORNER OF ENGINE.

2

DESCRIPTION
TYPE: 98 Octane
FUEL CELL CAPACITY: 18 gallons
(68 liters)
1 FUEL CAPACITY GAUGE: Located
OIL 3 on top of fuel cell in rear of vehicle.
1. OIL CAP
3
2. OIL CHECK
3. OIL PAN
(UNSCREW BOLT TO DRAIN OIL)

TYPE: 6 quarts RESERVOIRS
of Valvoline 20/50 1. REAR BRAKE (AP600)
2. FRONT BRAKE (AP600)
2 – INSTRUCTIONS: Unscrew 3. CLUTCH
the bolt on the left to check oil
level. Oil level should reach top.

2
OWNER’S MANUAL . 19
SAFETY

ENERGY-ABSORBING FOAM
FOR DRIVER AND PASSENGER, THE FOAM IS INSERTED
BETWEEN THE ROLL-CAGE BARS AND DOOR PANELS.

SEATS
TWO ENERGY-ABSORBING ALUMINUM
RACING SEATS.

SEATBELTS
SABELT FIVE-POINT SAFETY HARNESS
FOR DRIVER AND PASSENGER.

LEG BRACES WINDOW NETS
FOR DRIVER AND PASSENGER, LEGS FOR DRIVER AND PASSENGER SIDE WINDOWS.
ARE CONTAINED ALL THE WAY TO THE
FLOOR. DRIVER HAS PADDING UNDER-
NEATH THE STEERING COLUMN.

GLASS
QUARTER-INCH LEXAN SAFETY GLASS
FOR WINDSHIELD, REAR WINDOWS
AND REAR WINDSHIELD.

OWNER’S MANUAL . 21
WWW.REDBULLRACINGUSA.COM
Exhibit C

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