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ESTTA474721 05/25/2012
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 Granted to Date of previous extension Address Oliva Cigar Co, 05/27/2012
13955 NW 60th Avenue Miami Lakes, FL 33014 UNITED STATES Ury Fischer Attorney of Record, a Florida Bar member Post Office Drawer 141098 Coral Gables, FL 33014 UNITED STATES ufischer@[Link], nlajevardi@[Link], jzambrano@[Link] Phone:305-448-7089
Correspondence information
Applicant Information
Application No Opposition Filing Date Applicant 85400359 05/25/2012 Publication date Opposition Period Ends 11/29/2011 05/27/2012
National Tobacco Company, L.P. 5201 Interchange Way Louisville, KY 40229 UNITED STATES
Goods/Services Affected by Opposition
Class 034. All goods and services in the class are opposed, namely: Smoking tobacco; Tobacco; Tobacco, namely, cigars and cigarettes
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 3875110 11/09/2010 CAIN Application Date Foreign Priority Date 05/08/2009 NONE
Design Mark
Description of Mark Goods/Services
NONE Class 034. First use: First Use: 2010/07/01 First Use In Commerce: 2010/07/01 Humidors and lighters not of precious metal 3866032 10/19/2010 CAIN Application Date Foreign Priority Date 05/08/2009 NONE
U.S. Registration No. Registration Date Word Mark Design Mark
Description of Mark Goods/Services
NONE Class 034. First use: First Use: 2010/07/01 First Use In Commerce: 2010/07/01 Cigars
Attachments
77732918#[Link] ( 1 page )( bytes ) 77732911#[Link] ( 1 page )( bytes ) BLACK_CANE_Notice of Opposition_AsFiled_052512.pdf ( 4 pages )(38065 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 Overnight Courier on this date.
Signature Name
/Ury Fischer/ Ury Fischer
Date
05/25/2012
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Oliva Cigar Co., a Florida corporation, Opposer, v. National Tobacco Company, L.P., a Delaware limited partnership, Applicant.
Opposition No. ___________________ Application Serial No.: 85/400,359
Date of Publication: November 29, 2011 Mark: BLACK CANE
NOTICE OF OPPOSITION Opposer, Oliva Cigar Co. (Opposer), a Florida corporation with a principal place of business at 13955 NW 60th Avenue, Miami Lakes, Florida 33014, believes it will be damaged by the registration of Application Serial No. 85/400,359 (Application), and, pursuant to 15 U.S.C. 1063(a) and TBMP 303.01, hereby opposes same. As grounds for opposition, Opposer alleges: 1. Upon information and belief, National Tobacco Company, L.P.
(Applicant), a Delaware limited partnership with a principal place of business at 5201 Interchange Way, Louisville, KY 40229, is the owner of trademark application serial No. 85/400,359 filed on August 17, 2011, for the mark BLACK CANE (Applicants Trademark). 2. Applicant seeks registration of Applicants Trademark on the Principal
Register based on the purported bona fide intent to use Applicants Trademark in commerce in connection with the following services: Smoking tobacco; Tobacco; Tobacco, namely, cigars and cigarettes, in International Class 34.
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098 Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Opposition No. Mark: BLACK CANE Serial No. 85/400,359
3. Trademark. 4.
Opposer believes that it will be damaged by registration of Applicants
Opposer has made use in interstate commerce of the mark CAIN
(Opposers Trademark) in respect of: a. Humidors and lighters not of precious metal, in International Class 34; and b. Cigars, in International Class 34. 5. Opposers use in interstate commerce of the mark CAIN commenced at
least as early as July 1, 2010 and such use has been continuous since its commencement. 6. Opposer is the owner of federal trademark registration Nos. 3,875,110 and
3,866,032 (Opposers Registrations), registration dates of November 9, 2010 and October 19, 2010, respectively, for CAIN in respect of: a. Humidors and lighters not of precious metal, in International Class 34 (Reg. No. 3,875,110); and b. Cigars, in International Class 34 (Reg. No. 3,866,032). 7. As the Application is an intent-to-use application and Opposers use of
Opposers Trademark commenced at least as early as July 1, 2010, Opposer is undoubtedly the senior user. 8. Opposers Trademark is a well-known and distinctive trademark which
Opposer has advertised, promoted, and used since at least as early as July 1, 2010. 9. Applicants Trademark is confusingly similar to Opposers Trademark.
Specifically, both Applicants Trademark and Opposers Trademark include the phonetically identical term CANE/CAIN. Moreover, the goods offered under
Applicants proposed mark are highly similar to the goods offered under Opposers 2
LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098 Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Opposition No. Mark: BLACK CANE Serial No. 85/400,359
Trademark. In fact, Applicants goods, cigars, under its proposed mark are identical to Opposers goods, cigars, under Opposers trademark registration No. 3,866,032. 10. In view of the similarity of the parties respective marks and the
overlapping nature of the parties respective goods, Applicants mark so resembles Opposers mark so as to be likely to cause the public to be confused, mistaken, or deceived into believing that Applicants goods originate from Opposer or are in some way related to, associated with, or sponsored by Opposer. 11. Accordingly, registration of Applicants Trademark is barred by the
provisions of Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), in that Applicants Trademark consists of or comprises a mark which so resembles a mark previously used in the United States by Opposer in respect of related goods so as to be likely to cause the public to be confused, mistaken or deceived. 12. Registration of the Applicants Trademark would be a source of damage to
Opposer because relevant end users are likely to attribute the source or sponsorship of Applicants goods to Opposer. PRAYER FOR RELIEF WHEREFORE, Opposer respectfully requests that the instant opposition be granted and that Application Serial No. 85/400,359 be denied registration.
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LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098 Telephone: (305) 448-7089 Facsimile: (305) 446-6191
Opposition No. Mark: BLACK CANE Serial No. 85/400,359
Date: May 25, 2012
Respectfully submitted, LOTT & FISCHER, PL /Ury Fischer/ Ury Fischer, Esq. Leslie J. Lott, Esq. 355 Alhambra Circle Suite 1100 P.O. Drawer 141098 Coral Gables, FL 33114-1098 (305) 448-7089 telephone (305) 446-6191 facsimile Email: ufischer@[Link] Attorneys for Opposer Oliva Cigar Co.
CERTIFICATE OF SERVICE WE HEREBY CERTIFY that the foregoing NOTICE OF OPPOSITION was served upon Applicant by delivering true and correct copies of same to Applicant and counsel for Applicant via Federal Express on May 25, 2012 as follows: National Tobacco Company, L.P. 5201 Interchange Way Louisville, KY 40229 Brian W. Chellgren, Esq. Bingham Greenebaum Doll LLP 101 S 5th Street Louisville, KY 40202-3157 /Ury Fischer/ Ury Fischer, Esq.
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LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098 Telephone: (305) 448-7089 Facsimile: (305) 446-6191
