Opp Patron v. Padron

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

ESTTA Tracking number: ESTTA286822Filing date: 05/29/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE 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 Patron Spirits International AG

Granted to Dateof previousextension

05/30/2009

Address Spitalstrasse 5Schaffhausen, 8200SWITZERLAND

Party who filedExtension of timeto oppose

PatrÃ³n Spirits International AG

Relationship toparty who filedExtension of timeto oppose

Opposer's name does not differ from that which was used to previously filed therequest for extension of time to oppose. Opposer's name was, and is, PatrÃ³nSpirits International AG. However, upon entering its name into the appropriatefiled in the automated form, Opposer received the following error message:"Inappropriate value in a field 'Name'. Only values with US-ASCII charactersmay be accepted." It appears that the automated form rejected Opposer's namebecause of the accent on the letter "o" in the word "PatrÃ³n." In order for theform accept its submission, Opposer had to omit the accent from the "o" in theterm "PatrÃ³n", which omission accounts for the apparent difference in names.

Attorneyinformation

Jessica C. BromallJeffer, Mangels, Butler & Marmaro LLP1900 Avenue of the Stars, Seventh FloorLos Angeles, CA 90067UNITED [email protected]

Applicant Information

Application No 77295772 Publication date 03/31/2009

Opposition FilingDate

05/29/2009 OppositionPeriod Ends

05/30/2009

Applicant Piloto Cigars, Inc.1575 Southwest 1st StreetMiami, FL 33135UNITED STATES

Goods/Services Affected by Opposition

Class 030.All goods and services in the class are opposed, namely: Coffee

Applicant Information

http://estta.uspto.gov

Application No 77295773 Publication date 03/31/2009

Opposition FilingDate

05/29/2009 OppositionPeriod Ends

Applicant Piloto Cigars, Inc.1575 Southwest 1st StreetMiami, FL 33135UNITED STATES

Goods/Services Affected by Opposition

Class 033.All goods and services in the class are opposed, namely: Rum

Grounds for Opposition

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

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

1809473 Application Date 07/28/1992

Registration Date 12/07/1993 Foreign PriorityDate

NONE

Word Mark PATRON

Design Mark

Description ofMark

NONE

Goods/Services Class 033. First use: First Use: 1990/08/00 First Use In Commerce: 1990/08/00tequila




NONE

Word Mark PATRON

Design Mark

Description ofMark

NONE

Goods/Services Class 030. First use: First Use: 2007/09/28 First Use In Commerce: 2007/10/04preparations made from flour, namely, cakes sold in retail channels of trade




NONE

Word Mark PATRON XO CAFE

Design Mark

Description ofMark

NONE

Goods/Services Class 033. First use: First Use: 1994/05/01 First Use In Commerce: 1994/05/01coffee liqueur with tequila

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE

Word Mark PATRON

Design Mark

Description ofMark

NONE

Goods/Services Class 030. First use:pastries; confectionery, namely candy, chocolate candies; sauces, namelychocolate dessert sauces; coffee

Attachments 78980243#TMSN.jpeg ( 1 page )( bytes )74559311#TMSN.gif ( 1 page )( bytes )78879559#TMSN.jpeg ( 1 page )( bytes )Notice of Opposition.pdf ( 5 pages )(12794 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.

Signature /jessica c. bromall/

Name Jessica C. Bromall

Date 05/29/2009

6185293v1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

PATRÓN SPIRITS INTERNATIONAL AG,

Opposer,

v.

PILOTO CIGARS, INC.,

Applicant.

Opposition No.: ___________________

Application Serial No.: 77/295,772MARK: PADRÓN

Application Serial No.: 77/295,773Mark: PADRÓN

Published for Opposition: March 31, 2009

Atty. Ref. No.: 57062-0130

Commissioner for TrademarksP.O. Box 1451Alexandria, Virginia 22313-1451

NOTICE OF OPPOSITION

Opposer Patrón Spirits International AG, a Swiss company ("Opposer"), having the

address of Spitalstrasse 5, 8200 Schaffhausen, Switzerland, believes that it will be damaged by

the registration on the Principal Register of PADRÓN in connection with coffee in Int. Cl. 30

and rum in Int. Cl. 33. The mark PADRÓN is the subject of federal trademark application Serial

Nos. 77/295,772 and 77/295,773, allegedly owned by Piloto Cigars, Inc. ("Applicant"), and

Opposer hereby opposes the registrations thereof.

As grounds for this Opposition, it is alleged that:

1. Opposer has obtained the necessary extension of time in which to file this Notice

of Opposition.

2. Opposer is the source of the well known PATRON®

brand of premium tequila.

Opposer has enjoyed tremendous success in selling, either directly or through itslicensees,

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PATRON®

tequila and related products, including coffee flavored liqueur and cakes, throughout

the United States. Opposer has continuously sold its successful PATRON®

tequila and related

products in the United States since at least as early as August 1990. As a result, Opposer has

common law rights in the PATRON trademark.

3. In addition, Opposer owns several registrations for its PATRON mark. Opposer

is the owner of record of U.S. Reg. No. 1,809,473, issued on December 7, 1993 for the mark

PATRON, as well as the business and goodwill connected therewith. The mark PATRON has

been used in commerce in connection with “tequila” in Int. Cl. 33, as identified in

aforementioned registration. Opposer’s registration is unrevoked and uncancelled.

4. Opposer is also the owner of record of U.S. Reg. No. 3,469,828, issued on July

15, 2008, for the mark PATRON, as well as the business and goodwill connection therewith.

The mark PATRON has been used in commerce in connection with “preparations made from

flour, namely, cakes sold in retail channels of trade” in Int. Cl. 30, as identified in the

aforementioned registration.

5. Opposer is also the owner of record of U.S. Reg. No.1,950,491, issued on January

23, 1996, for the mark PATRON XO CAFÉ, as well as the business and goodwill connected

therewith. The mark PATRON XO CAFÉ has been used in commerce in connectionwith

“coffee liqueur with tequila” in Int. Cl., as identified in the aforementioned registration.

Opposer’s registration is unrevoked and uncancelled.

6. Opposer is the owner of record of U.S. Application Serial No. 78/879,559, filed

on May 9, 2006, for the mark PATRON for use in connection with “pastries; confectionery,

namely candy, chocolate candies; sauces, namely chocolate dessert sauces; coffee” in Int. Cl. 30.

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7. On information and belief, Applicant is a Florida corporation having its principal

place of business at 1575 Southwest 1st Street, Miami, Florida 3313.

8. On information and belief, Applicant is the owner of record of the intent-to-use

trademark application Serial No. 77/295,772 for registration of the mark PADRÓNfor use in

connection with “coffee” in Int. Cl. 30.

9. On information and belief, Applicant is the owner of record of the intent-to-use

trademark application Serial No. 77/295,773, for registration of the mark PADRÓNfor use in

connection with “rum” in Int. Cl. 33.

10. Since long prior to October 4, 2007, the filing date of Applicant's applications,

Opposer has widely advertised and promoted each of its marks identified above (collectively

referred to herein, as the "PATRON Marks") in connection with its goods with the result that the

PATRON Marks have become well known and associated with Opposer in the United States.

11. The mark PADRÓN, the subject of Applicant’s foregoing applications

(“Applicant’s Mark”), so resembles PATRON as to be likely, when used in connection with the

goods identified in those applications (“Applicant’s Goods”), as to cause confusion, or mistake,

or deception.

12. If Applicant is granted the registrations herein opposed, such registrations would

cause damage to Opposer.

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WHEREFORE, in accordance with Section 13 of the Trademark Act (15 U.S.C. §1063),

Opposer prays that this Opposition be sustained and that application Serial No. 77/391,984 be

refused.

Respectfully submitted,

Dated: May 29, 2009 /s/ Jessica C. Bromall

Bernard R. GansJessica C. BromallJEFFER, MANGELS, BUTLER & M ARMARO LLP1900 Avenue of the Stars, Seventh FloorLos Angeles, CA 90067(310) 203-8080E-mail: [email protected]

Attorneys for Opposer Patrón Spirits International AG

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CERTIFICATE OF SERVICE

I hereby certify that one (1) copy of this document has been deposited with the

United States Postal Service as First Class Mail, postage affixed, in an envelope addressed to the

correspondent address of record, as follows:

Mitchell H. Stabbe

Dow Lohnew Pllc.

1200 New Hampshire Ave. NW Suite 800

Washington, DC 20036-6805

Date: May 29, 2009 ______________________________________Joel Drake

JEFFER, MANGELS, BUTLER & M ARMARO LLP

1900 Avenue of the Stars, Seventh FloorLos Angeles, CA 90067Phone: (310) 203-8080Fax: (310) 203-0567www.jmbm.com

Opp Patron v. Padron

Documents

Transcript of Opp Patron v. Padron