BK RACING, LLC
Land vehicles; motor racing vehicles, namely, racing cars
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
Appln. No. 77/095,125 TM: 83 (Stylized) – Response to OA Issued 11/11/2011
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 Applicants goods from those of others and to indicate the
source of Applicants 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 Applicants
goods from those of others and to indicate the source of Applicants 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.
1. Class 9
A. Proposed Amended Goods
Computer game software, namely, specific features within vehicle racing games.
As a preliminary matter, Applicants 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).
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.
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 drivers 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.
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 owners manual
does not function for racing cars. Applicant thanks the Examining Attorney for taking the time to
discuss this refusal further with Applicants 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 owners 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 owners 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.
This owners 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
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 owners 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
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 Applicants wholly owned
subsidiary, Red Bull Racing, Inc., and Toyota of Cleveland. This agreement specifically anticipates
the sale of the cars shown in the owners 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.
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INSIDE THIS MANUAL
TTHE HISTORY BRAKES
RED BULL RACING TEAM . . . . . . . . . . . . . . . . 5
R OPERATING ABS SYSTEM
PARTS AND PIECES . . . . . . . . . . . . . . . . . . . 17
CHASSIS FAB TO FINAL SETUP . . . . . . . . . . . . 7
DESCRIPTION . . . . . . . . . . . . . . . . . . . . . . . 17
CAMERA POD FLUIDS
FRONT SPLITTER OIL
REAR WING POWER STEERING
ROOF FLAPS RESERVOIRS
SIDE PODS WATER . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
TEATHERS . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
INSTRUMENT PANEL DESCRIPTION . . . . . . . . . . . . . . . . . . . . . . . 19
PROCEDURES . . . . . . . . . . . . . . . . . . . . . . . 11 SAFETY
UNDER THE HOOD GLASS
ENGINE LEG BRACES
TRANSMISSION SEATS / SEATBELTS
PERFORMANCE . . . . . . . . . . . . . . . . . . . . . . 13 WINDOW NETS . . . . . . . . . . . . . . . . . . . . . 21
UNDER THE CAR
DESCRIPTION . . . . . . . . . . . . . . . . . . . . . . . 15 WWW.REDBULLRACINGUSA.COM
OWNERS MANUAL . 3
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 Americas premier form of motorsports.
Red Bulls commitment to motorsports and our unconditional love of competition got us to this point. We have two of NASCARs ?nest young drivers
and a team that roared from mid-pack to the winners 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. Hes 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
OWNERS MANUAL . 5
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.
OWNERS MANUAL . 7
THE BODY CAMERA POD
Introduced in 1994, roof ?aps
help prevent a car from becoming
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.
Via tethers inside the engine
compartment, the hood is attached
to the chassis to help prevent it
from taking off.
The double-frame rail on the drivers 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.
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.
OWNERS MANUAL . 9
7 8 9 10 11 12 13
1 3 5-6
3. RADIATOR ON/OFF 18 20
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
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.
OWNERS MANUAL . 11
UNDER THE HOOD
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):
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
OWNERS MANUAL . 13
UNDER THE CAR
1. FUEL CELL HOUSING
2. TRACK BAR
3. REAR SHOCKS
5. REAR-END HOUSING
6. GEAR 9
8. TRUCK ARMS
OWNERS MANUAL . 15
OPERATING ABS SYSTEM
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
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
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.
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.
FRONT: Brembo 1.375-inch thick,
12.900 diameter, 48 vanes.
REAR: Brembo 1.000-inch thick,
12.300 diameter, straight vane.
FRONT/REAR: Mintex F2 compound
Pro-System pedals with adjustable ratio.
Brembo Master Cylinders
FRONT: 22.00 millimeters
REAR: 22.00 millimeters
CLUTCH: 19.00 millimeters
OWNERS MANUAL . 17
FILL TWO INCHES FROM TOP.
LOCATED IN RIGHT-REAR
CORNER OF ENGINE.
TYPE: 98 Octane
FUEL CELL CAPACITY: 18 gallons
1 FUEL CAPACITY GAUGE: Located
OIL 3 on top of fuel cell in rear of vehicle.
1. OIL CAP
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.
OWNERS MANUAL . 19
FOR DRIVER AND PASSENGER, THE FOAM IS INSERTED
BETWEEN THE ROLL-CAGE BARS AND DOOR PANELS.
TWO ENERGY-ABSORBING ALUMINUM
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.
QUARTER-INCH LEXAN SAFETY GLASS
FOR WINDSHIELD, REAR WINDOWS
AND REAR WINDSHIELD.
OWNERS MANUAL . 21