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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov ESTTA Tracking number: Filing date:

ESTTA588050 02/19/2014

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 Entity Address Cigars International, Inc. Corporation 1911 Spillman Drive Bethlehem, PA 18015 UNITED STATES Dennis P. McCooe Blank Rome LLP 130 North 18th Street One Logan Square Philadelphia, PA 19103 UNITED STATES McCooe@blankrome.com Phone:215-569-5580 Citizenship Delaware

Attorney information

Applicant Information
Application No Opposition Filing Date Applicant 86097733 02/19/2014 OG Distribution, Inc. 1700 Killarney Northbrook, IL 60062 ISRAEL Publication date Opposition Period Ends 01/21/2014 02/20/2014

Goods/Services Affected by Opposition


Class 034. First Use: 2013/06/15 First Use In Commerce: 2013/06/15 All goods and services in the class are opposed, namely: Electric vaporizers for concentrates, essential oils and loose leaf herbs, namely, smokeless cigarette vaporizer pipe; hand operated vaporizers for household use for concentrates, essential oils and loose leaf herbs, namely, smokeless cigarette vaporizer pipe; electronic smokeless cigarettes for use as an alternative to traditional cigarettes; smokeless cigarette vaporizer pipe

Grounds for Opposition


Priority and likelihood of confusion Trademark Act section 2(d)

Marks Cited by Opposer as Basis for Opposition


U.S. Registration No. Registration Date Word Mark 2721342 06/03/2003 CIGARS INTERNATIONAL Application Date Foreign Priority Date 06/05/2001 NONE

Design Mark

Description of Mark Goods/Services

The mark consists of a unique unshaven smiley face design with a cigar. Class 035. First use: First Use: 1999/04/17 First Use In Commerce: 1999/04/17 Mail-order, catalog, online retail store services, and retail store services featuring cigar and tobacco products and smoking accessories 4116596 03/27/2012 NONE Application Date Foreign Priority Date 01/14/2008 NONE

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

The mark consists of a bearded face smoking a cigar. Class 034. First use: First Use: 1999/06/00 First Use In Commerce: 1999/06/00 CIGARS; CIGAR HUMIDORS; CIGAR LIGHTERS;AND ASHTRAYS Class 035. First use: First Use: 1999/04/17 First Use In Commerce: 1999/04/17 MAIL-ORDER, CATALOG, ONLINE RETAIL STORE SERVICES, AND RETAIL STORE SERVICES FEATURING TOBACCO PRODUCTS AND SMOKING ACCESSORIES

Attachments

78067526#TMSN.gif( bytes ) 77371152#TMSN.jpeg( bytes ) CIGARS OPP. 86097733.pdf(775871 bytes )

Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature Name Date

/Dennis P. McCooe/ Dennis P. McCooe 02/19/2014

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Application of OG Distribution, Inc. Application No.: Filed: 86/097,733 October 22, 2013

Mark: _______________________________ Cigars International Inc., : a Delaware corporation : : : Opposer, : : v. : : OG Distribution, : a Illinois corporation, : : Applicant. : _______________________________ : Hon. Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313-1451 Attn.: Trademark Trial and Appeal Board NOTICE OF OPPOSITION Sir or Madam: Opposer, Cigars International, Inc., a Delaware corporation with an office at 1911 Spillman Drive, Bethlehem, Pennsylvania 18015, believes that it would be damaged by the registration of the mark shown in Application Serial No. 86/097,733 and hereby

Serial No.: 86/097,733 Opposition No.: ______

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opposes the same under the provision of Section 13 of the Trademark Act of July 5, 1946, as amended, 15 U.S.C. 1063. As grounds of opposition, it is alleged that: BACKGROUND ON OPPOSERS MARKS 1. Opposer has made continuous and exclusive use of the

distinctive trademarks

, and

in the United

States (the Smiley Face Marks), which use has developed widespread public recognition and appeal. Opposer has used the

Smiley Face Marks in or in connection with the marketing and sale of cigar and tobacco products, and smoking accessories, as well as related retail services (hereinafter, the Goods). 2. Opposer is the exclusive owner of all rights, title

and interest in and to the Smiley Face Marks in connection with the Goods, and is the owner of United States Registration, U.S. Reg. No. 2,721,342, which is incontestable under Section 15 of the Lanham Act, and U.S. Reg. No. 4,116,596. See printouts from

the United States Patent and Trademark Office database attached as Exhibit A. 3. Opposer's registrations are valid and subsisting and

are conclusive evidence of Opposer's exclusive right to use the Smiley Face Marks in commerce for the Goods and those within the zone of natural expansion.

-2117393.00101/22287925v.2

4.

As a result of Opposers longstanding, exclusive and

widespread promotion and use of these Smiley Face Marks, and adherence to strict standards of quality control, the Smiley Face Marks have acquired significant goodwill and have come to be strongly associated with Opposers Goods. APPLICANT'S MARK IS LIKELY TO CAUSE CONFUSION AS TO SOURCE, ORIGIN, SPONSORSHIP, OR AFFILIATION 5. Opposer repeats and realleges the allegations

contained in paragraphs 1 through 4 above, as if fully set forth herein. 6. On October 22, 2013, Applicant filed application No.

86/097,733 for registration of the

mark (hereinafter

"Applicant's Mark") listing its goods as "[e]lectric vaporizers for concentrates, essential oils and loose leaf herbs, namely, smokeless cigarette vaporizer pipe; hand operated vaporizers for household use for concentrates, essential oils and loose leaf herbs, namely, smokeless cigarette vaporizer pipe; electronic smokeless cigarettes for use as an alternative to traditional cigarettes; smokeless cigarette vaporizer pipe. Applicants

Mark was published for opposition in the Official Gazette dated January 21, 2014. See printout from the United States Patent

and Trademark Office database attached as Exhibit B.

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7.

Applicants basis for filing is alleged use, pursuant

to Section 1(a) of the Lanham Act. 8. Opposer's use of the Smiley Face Marks predates both

Applicant's filing date and alleged first use in commerce. 9. Applicant's Mark is highly similar to Opposers Smiley Moreover, Applicants goods are related to

Face Marks.

Opposers Goods, are offered and sold to the same general class of customers, and offered and sold through the same channels of trade as those in which Opposer maintains exclusive rights for its Smiley Face Marks. 10. The use and registration of Applicant's Mark to

identify its goods is likely to cause confusion, mistake and deception as to the source, origin, sponsorship or association of the goods and will injure Opposer in violation of Section 2(d) of the Lanham Act, 15 U.S.C. 1052(d). 11. Any defects, objections or faults found with the goods

sold and rendered by Applicant under Applicant's Mark, because of the false association with Opposer, would inflict upon and seriously injure the reputation of Opposer. 12. The grant of a Certificate of Registration to

Applicant for Applicants Mark would be inconsistent with and in derogation of Opposer's prior rights and would therefore cause damage and injury to Opposer and deception of and confusion to the public.

-4117393.00101/22287925v.2

For the reasons set forth in the foregoing paragraphs one through twelve, Opposer believes that it would be damaged by the registration of Applicant's Mark, and thus Applicant should be denied registration of the mark. WHEREFORE, Opposer prays that this opposition be sustained and that Application Serial No. 86/097,733 be refused registration. Respectfully submitted, CIGARS INTERNATIONAL, INC.,

Date:

February 19, 2014

By: Timothy D. Pecsenye Dennis P. McCooe Joel L. Dion Thomas H. Kelly Its Attorneys

BLANK ROME LLP ONE LOGAN SQUARE, 8th Floor PHILADELPHIA, PA 19103 (215) 569-5619

-5117393.00101/22287925v.2

CERTIFICATE OF SERVICE I, Thomas Harper Kelly, do hereby certify that I have on February 19, 2014, mailed via first class mail, the foregoing Notice of Opposition to the following: Mary Vidal Hays Aronberg, Goldgehn, Davis & Garmisa 330 N. Wabash Avenue, Suite 1700 Chicago, IL 60611-7765

Thomas Harper Kelly

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EXHIBIT A

EXHIBIT B

Side - 1

NOTICE OF PUBLICATION UNDER 12(a)


MAILING DATE: Jan 1, 2014 PUBLICATION DATE: Jan 21, 2014

The mark identified below will be published in the Official Gazette on Jan 21, 2014. Any party who believes they will be damaged by registration of the mark may oppose its registration by filing an opposition to registration or a request to extend the time to oppose within thirty (30) days from the publication date on this notice. If no opposition is filed within the time specified by law, the USPTO may issue a Certificate of Registration. To view the Official Gazette online or to order a paper copy, visit the USPTO website at http://www.uspto.gov/web/trademarks/tmog/ any time within the five-week period after the date of publication. You may also order a printed version from the U.S. Government Printing Office (GPO) at http://bookstore.gpo.gov or 202-512-1800. To check the status of your application, go to http://tarr.uspto.gov/. SERIAL NUMBER: 86097733 MARK: OWNER: Side - 2
UNITED STATES PATENT AND TRADEMARK OFFICE COMMISSIONER FOR TRADEMARKS P.O. BOX 1451 ALEXANDRIA, VA 22313-1451

Miscellaneous Design OG Distribution, Inc.

FIRST-CLASS MAIL U.S POSTAGE PAID

MARY VIDAL HAYS ARONBERG GOLDGEHN DAVIS & GARMISA 330 N WABASH AVE STE 1700 CHICAGO, IL 60611-7765