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

ESTTA Tracking number: ESTTA588050

Filing date: 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 Cigars International, Inc.

Entity Corporation Citizenship Delaware

Address 1911 Spillman DriveBethlehem, PA 18015UNITED STATES

Attorneyinformation

Dennis P. McCooeBlank Rome LLP130 North 18th Street One Logan SquarePhiladelphia, PA 19103UNITED [email protected] Phone:215-569-5580

Applicant Information

Application No 86097733 Publication date 01/21/2014

Opposition FilingDate

02/19/2014 OppositionPeriod Ends

02/20/2014

Applicant OG Distribution, Inc.1700 KillarneyNorthbrook, IL 60062ISRAEL

Goods/Services Affected by Opposition

Class 034. First Use: 2013/06/15 First Use In Commerce: 2013/06/15All 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 operatedvaporizers for household use for concentrates, essential oils and loose leaf herbs, namely,smokeless cigarette vaporizer pipe; electronic smokeless cigarettes for use as an alternative totraditional 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. RegistrationNo.

2721342 Application Date 06/05/2001

Registration Date 06/03/2003 Foreign PriorityDate

NONE

Word Mark CIGARS INTERNATIONAL
http://estta.uspto.gov/http://estta.uspto.gov/


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Design Mark

Description ofMark

The mark consists of a unique unshaven smiley face design with a cigar.

Goods/Services 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 servicesfeaturing cigar and tobacco products and smoking accessories

U.S. RegistrationNo.

4116596 Application Date 01/14/2008

Registration Date 03/27/2012 Foreign PriorityDate

NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a bearded face smoking a cigar.

Goods/Services 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 RETAILSTORE SERVICES FEATURING TOBACCO PRODUCTS AND SMOKINGACCESSORIES

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 addressrecord by First Class Mail on this date.


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Signature /Dennis P. McCooe/

Name Dennis P. McCooe

Date 02/19/2014


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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application of OG Distribution, Inc.

Application No.: 86/097,733

Filed: October 22, 2013

Mark:

_______________________________

Cigars International Inc., :

a Delaware corporation :

::

Opposer, : Serial No.: 86/097,733

:

v. : Opposition No.: ______

:

OG Distribution, :

a Illinois corporation, :

:

Applicant. :

_______________________________ :

Hon. Commissioner for TrademarksP.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


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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.


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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

Face Marks. Moreover, Applicants goods are related to

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.


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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, 8thFloor

PHILADELPHIA, PA 19103

(215) 569-5619


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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 & Garmisa330 N. Wabash Avenue, Suite 1700

Chicago, IL 60611-7765

Thomas Harper Kelly


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EXHIBIT A


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EXHIBIT B


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Side - 1

NOTICE OF PUBLICATION UNDER 12(a)MAILING DATE: Jan 1, 2014PUBLICATION 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 toregistration 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 ofRegistration.

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: Miscellaneous Design

OWNER: OG Distribution, Inc.

Side - 2

UNITED STATES PATENT AND TRADEMARK OFFICECOMMISSIONER FOR TRADEMARKSP.O. BOX 1451ALEXANDRIA, VA 22313-1451

FIRST-CLASS

MAILU.S POSTAGE

PAID

MARY VIDAL HAYSARONBERG GOLDGEHN DAVIS & GARMISA

330 N WABASH AVE STE 1700CHICAGO, IL 60611-7765

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