• Embed Doc
  • Copy Link
  • Readcast
  • Collections
  • CommentGo Back
Download
 
Trademark Trial and Appeal Board Electronic Filing System.http://estta.uspto.gov 
ESTTA Tracking number:
ESTTA263329
Filing date:
01/28/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDProceeding 91185180PartyPlaintiffPeter H.JohnsonCorrespondenceAddressBrennan C. SwainJeffer Mangels Butler & Marmaro LLP1900 Avenue of the Stars, 7th FloorLos Angeles, CA 90067UNITED STATEStrademarkdocket@jmbm.comSubmission Motion for Summary JudgmentFiler's Name Jessica C. BromallFiler's e-mail trademarkdocket@jmbm.comSignature /jessica c. bromall/ Date 01/28/2009Attachments Motion for Summary Judgment.pdf ( 94 pages )(3627415 bytes )
 
5718997v1
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDTATUAJE CIGARS INC.,Opposer,v.NICARAGUA TOBACCO IMPORTS,INC.,Applicant.Opposition No. 91/185,180Application Serial No.: 77/359,141Mark: TATTOOPublished for Opposition: May 20, 2008Atty. Ref. No.: 68692-0003Commissioner for TrademarksP.O. Box 1451Alexandria, VA 22313-1451
OPPOSER'S MOTION FOR SUMMARY JUDGMENT
Opposer Tatuaje Cigars, Inc. ("Opposer"), through its undersigned counsel,hereby moves pursuant to Rule 56 of the Federal Rules of Civil Procedure and 37 C.F.R. 2.127of the Trademark Rules of Practice of entry of summary judgment in its favor and againstapplicant Nicaragua Tobacco Imports, Inc. ("Applicant").
MEMORANDUM OF POINTS AND AUTHORITIESI. INTRODUCTION
Opposer is a well-established and well-respected member of the cigar industry. Morethan four years ago, Opposer began building his TATUAJE brand of cigars. In that short periodof time, he has gained the respect of the industry and his TUTUAJE brand cigars have beenhonored as some of the best cigars in the country.Looking to trade on Opposer's goodwill, Applicant seeks to obtain rights to use the word"TATTOO", which word is the English equivalent of Opposer's mark TATUAJE, as a trademark for his own brand of cigars and cigar-related products.
 
5718997v1
2Based on the uncontroverted facts set forth below, as a matter of law, Applicant'sproposed trademark TATTOO for cigars and cigar-related accessories is confusingly similar toOpposer's trademark TATUAJE, also for cigars and cigar-related accessories. No genuine issueof material fact exists with respect to this issue.For this and all the other reasons set forth below, Opposer is entitled to judgment as amatter of law and Applicant's application should be rejected.
II. STATEMENT OF FACTSA. Opposer Owns the Trademark TATUAJE
Opposer Tatuaje Cigars, Inc. is in the business of selling cigars and cigar relatedaccessories throughout the United States. See Declaration of Peter H. Johnson, filedconcurrently herewith ("Johnson Decl.") ¶ 3. Since at least as early as May 27, 2003, Opposerand its predecessor in interest, founder Peter H. Johnson, have used the mark TATUAJE toidentify Opposer's cigars. Id.Opposer's TATUAJE cigars were first released in 2003. Id. Shortly after beingintroduced into the market, Opposer's TATUAJE cigars garnered recognition in the cigarcommunity. See id. at ¶ 4 & Exh. B. After only a year, TATUAJE cigars were recognized asone of the best cigars of the year by
Cigar Aficionado
magazine. Id. at ¶ 5 & Exh. C.Committed to excellence, TATUAJE brand cigars have appeared on the top 25 list nearly everyyear since 2004. See id. at ¶ 6 & Exhs. D - F.Opposer's TATUAJE mark is also the subject of U.S. Trademark RegistrationNo. 2,836,665, filed on April 27, 2004. Id. at ¶ 2, Exh. A. Opposer's registration is valid andsubsisting. Id. As noted in Opposer's registration, TATUAJE is the Spanish word for "tattoo."Id.; see also Declaration of Brennan C. Swain ("Swain Decl.") ¶ 2, Exh. H.
of 00

Leave a Comment

You must be to leave a comment.
Submit
Characters: ...
You must be to leave a comment.
Submit
Characters: ...