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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/8/12/2019 Smiles everyone, Smiles!
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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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-1-117393.00101/22287925v.2
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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-2-117393.00101/22287925v.2
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