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DykEMA
May 23,2014
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Dykema Gossett PLLC
Franklin Square, Third Floor West
1300 I Street N.W.
Washington, DC 20005
WWW.DYKEMA.COM
Tel: (202) 906-8600
Fax: (202) 906-8669
Eric T. Fingerhut
Direct Dial: (202) 906-8618
Email: EFINGERHUT@DYKEMA.COM
Mr. Christopher Renzi
P.O. Box 1943
VIA EMAIL AND FIRST CLASS MAIL
East Greenwich, Rhode Island 02818
Email: chris@renzi.cc
Re: Objection to Registration and Use of the Mark CR7
Our Reference: 067137.0016
Dear Mr. Renzi:
FOR SETTLEMENT PURPOSES ONLY
Pursuant to F.R.EVID. 408.
We are trademark. counsel for JBS Textile Group A/S of Denmark ("JBS"). JBS holds an
exclusive, world-wide license to market underwear branded under the marks CR7 and CR7
CRISTIANO RONALDO and has imminent plans to enter the U.S. market. As you undoubtedly
are aware, Cristiano Ronalda is one of the most famous athletes in the world. He has received
numerous accolades during his professional soccer career, including FIFA "Player of the Year."
According to Forbes magazine, Cristiano Ronalda has one of the highest social ranks in the
world, with over 81,000,000 fans on Facebook alone. Ronalda has worn jersey number "7"
throughout his amateur and professional career, and has become known as "CRT' worldwide.
JBS recently learned you registered the mark CR7 for "fashion clothing, namely, jeans and t-
shirts" under U.S. Registration No. 3,637,974. JBS believes you were well aware, of the fame
and reputation ot Cristiano Ronalda, as well as the significant commercial value associated with
the sales of clothing and other products branded under the CR7 and CR7 CRISTIANO
RONALDO marks when you applied to register the mark CR7 on June 25, 2008. Your
registration and use of the mark CR7 falsely suggests a connection with Cristiano Renaldo in
violation of U.S. trademark law, namely, 2(a) of the Trademark Act, 15 U.S.C. 1 052(a).
Neither Cristiano Ronalda nor his exclusive licensee JBS is connected with you or any of the
goods you mark with CR7. Consumers are likely to believe the jeans and t-shirts you sell under
the mark CR7 are sponsored by, affiliated with, or otherwise endorsed by Cristiano Ronalda
and/or JBS, when in fact they are not.
In order to protect its rights in the marks CR7 and CR7 CRISTIANO RONALDO, JBS filed a
Petition to Cancel U.S. Registration No. 3,637,974 on May 22, 2014. A copy of the Petition is
enclosed for your reference. We are hopeful you will agree to voluntarily assign the registration
California I Illinois I Michigan I Texas I Washington D.C.
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DykEMA
Christopher Renzi
May 23,2014
Page2
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to JBS in order to avoid the time and expense of a protracted proceeding. It is clear Cristiano
Ronaldo and JBS, as the exclusive licensee of the marks CR7 and CR7 CRISTIANO
RONALDO, are entitled to register and use these marks in the United States, and your
registration of the CR7 mark is a violation of these rights.
We kindly request that you agree to assign U.S. Registration No. 3,637,974 to JBS on or before
June 6, 2014.
If you have any questions, or wish to discuss via telephone, please contact me at (202) 906-
8618, or respond via writing.
We look forward to receiving your response and amicably resolving this matter.
Sincerely,
Eric T. Fingerhut
ETF:smm
Enclosures
DCOJ\336938.1
JD\SMMC 067137\0016
California I Illinois I Michigan I Texas I Washington D.C.
Case 1:14-cv-00341-M-PAS Document 1-1 Filed 07/28/14 Page 3 of 7 PageID #: 9
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iN THE UNITED STATES PATENT AND TRAD'.EMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the Matter of Registration:
Reg. No.:
Registered:
Registrant:
Mark:
Class:
3,637,974
June 16,2009
Chl'istopher Renzi
CR7
25
JBS TEXTILE GR01JP A/S
Petitioner,
v ..
CHRISTOPHER RENZI
Respondent.
)
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)
)
) Cancellation No. ----
)
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PETITION TQ
JBS Texti.le Group NS ("Petitioner"), an aktieselskab of Denmark, having a physical address of
Bornholmsvej I, 7400 Heming, Denmark, believes it. will be damaged by the continued regisnation, No.
3,637,974, for the mark CR7, registered to Christopher Renzi and hereby petitions to
cancel same.
Tl:te grounds for the cancellation are as lollovvs:
(1) Petitioner is the owner of U.S. Application Serial Nos. 86/239,876 and 86/239,907 for
the marks CR7 and CR7 CRISTIANO RONALDO, respectively. Both applications were filed on Apri\2,
2014 fo1 "clothing, namely, underwear, boxer shorts, boxer briers, dress socks, knitted socks, sports
socks, shirts, t-shilts, polo shitts, sweat shirts, dress shorts, dress suits, outer jackets, t.ies, belts; footwear;
headgear, namely, cap visors, caps a.nd hats," in International Class 25.
(2) Petitioner holds an e:Kclusive, world-wide license to market underwear branded under the
marks CR7 and CR7 CRISTIANO RONALDO. Said goods are sold globally, and are associated with one of
Case 1:14-cv-00341-M-PAS Document 1-1 Filed 07/28/14 Page 4 of 7 PageID #: 10
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the most popular and recognizable professional soccer players in the world- Cristiano Ronalda.
(3) Petitioner has imminent plans to enter the U.S. market and sell clothing .. related goods under
the marks CR7 and CR7 CRISTIANO RONALI)O.
(4) As a licensee of the marks CR7 and CR7 CRISTIANO RONALDO, all usage of said
marks in connection with the subject goods inures to the benefit of Petitioner.
Count I- False Suggestion of Connection with a Living Person
(5) Soccer is the rnost popular sp01t in the world, and Cristiano Ronaldo one of the most
recognizable figures of the game. He currently plays for the professional soccer team Real Madrid, and is the
highest paid soccet player in the world. In 2007, Cristiano Ronaldo won all of the main Pl'Ofessional
Footballers' Association ("PFA") and Football Wtiters' Association ("FWA") awards, and in 2008, he won
three of the four main PFA and FW A awards. In both 2007 and 2008, Cristiano Ronal do wus named FWA
Footballer of the Year, and in 2008 he was named the Federation lnternationale de Football ("FIFA'') World
Player of !he Year, PlFPro Player of the Y eat', and World Soccer lllayet' of the Year. ln 2008 and 2013, he
won the FIFA/Ballon d'Or aw;ud for the best soccer piRyer in the wodd.
(6) Ronaldl> is well-known throughout the world, including the United States. rn
August of 20 l 0, he became the tlrst non-American to reach ten million ('I 0,000,000) followers on Facebook,
and in October of 2012, he became the first spottsperson to reach fifty million (50,000,000) Facebook
followers. Accotding to Forbes magazine, Cristiano Ronaldo had the. fifth highest social rank in the world in
2012, behind only Lady Gaga, R.ihanna, Justin Bieber, and Katy Perry. magazine rated him as
among the top ten most marketable athletes in the wmld, in both 2012 and 2013. Cristiano Ronalda also was
listed in Time Magazine's 100 World's Most fnfluentia.l People in 2014. There is a wax work of him at
Madame Tussauds London.
(7) With the exception of his first year on the team Real Madtid, Cristiano Ronal do has always
worn the jersey number "7" as a pmfessional and amateur soccer player. As a result, and well pl'ior to the.
June 22, 2008 date of first use alleged in the registration sought to be cancelled herein, Cristiano Ronaldo
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became. known around the \Vorld, including the 1Jnited Stutes, as "CR7."
(8) Upon information and belief; Respondent was well aware of the fame of Cristiano Ronalda
and his CR7 name and identity, as well as the significant commercial vulue associated with 1he sales of
underwear and related goods branded under Petitioner's CR7 and CR7 CRISTIANO RONALD{) marks,
when Respondent applied to register the identical mark CR7 on June 25, 2008.
(9) Neither Crilltia.no Ronalda not P0titioner is conne.decl w\th Respondent or any of the
goods he putports to sell andior activities he has undertaken, in connection with the CR7 designation.
Consumers are likely to believe the clothing-related goods branded under I'Zegislrant' s CR 7 mark are
somehow associated with Cristiano Ronaldo and Petitioner (who holds a world-wide license to marker
underwear under the ern and CR7 CRISTIANO RONALDO marks), when in fa.ct they are not. The CR7
and CR7 CRISTIANO RONALDO marks are so c.losely tied to the fame and re.putation of Cristiano
Renaldo, that a connection with the soccer player would immediately be presumed by the general public
when encountel'ing Registrant's CR7 branded clothing. The CR7 mark points uniquely a.nd unmistakably
to Ctistiano Rona.!do, not Registrant, and the underwear Petitioner licenseg under U1e mark.
(1 0) By reason of the foregoing, Respondent's use and registration of' the CR 7 mark sought
to be cancelled herein falsely suggests a Qormection with a living person, namely, world-renowned soccer
player Cristiano Ronaldo -" CR.7''- in violation of 2(a) of the Trademark Act, !5 U .S.C. J 052(u).
Count U -llnfah Competition
(11) Petitioner restotes and realleges ,l l through I 0 and hereby incorporates same as if
fully stated herein.
(1 2) By reason of his acts as aforesaid, Respondent has committed unfair competition,
en tilling Petiti()ner to l'elief pursuant to 44(g) and (h) of the Trademark Act, l S U .S.C. .I "126 (g) and
(h).
(13) If Respondent is permitted lo the registration sought to be eancelled herein, and
Respondent continue.s to claim such rights as conferred under the Principal Register of the Trademark Act
..,
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of 1946, Respondent will obtain unlawful gain and advantage to which he is not entitled under the
Trademark Act of 1946, to the detriment and harm of Petitioner.
WHEREFORE, Petitioner respectfully requests that:
A. Judgment be entered against Respondent on each of Petitioner's claims, Counts l and 11;
8. The petition for cancellation be granted;, and
C. U.S. Registration No, 3,637,974 be cancelled.
Dated: May 22, 2014 By:
Docket No. 067137.0016
JBS Textile Group A/S
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. , __ __ ,._,_, ___ ._ ... " .. ......
Eric T. Fingerhut "
Marsha Gentner
Shannon Marie McKeon
Attorneys for Petitioner
Dykema Gossett PLLC
1300 1 Street, N.W., Suite 300
Washington, D.C. 20005
Tel: 202.906.8618
Fax: 202.906.8669
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