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TrademarkTrialandAppealBoardElectronicFilingSystem.http://estta.uspto.gov

ESTTATrackingnumber:

ESTTA270221

Filingdate:

03/04/2009

INTHEUNITEDSTATESPATENTANDTRADEMARKOFFICEBEFORETHETRADEMARKTRIALANDAPPEALBOARDProceeding91185180PartyDefendantNICARAGUATOBACCOIMPORTS,INC.CorrespondenceAddressJoseGutmanFleit,Gibbons,Gutman,Bongini,PL551N.W.77thStreetBocaRaton,FL33487UNITEDSTATEStmboca@fggbb.comSubmissionOpposition/ResponsetoMotionFiler'sNameJoseGutmanFiler'se-mailtmboca@fggbb.comSignature/JoseGutman/ Date03/04/2009Attachments0_Applicant'sResponseBrief30409.pdf(22pages)(94384bytes)1_Applicant'sResponseBriefandExhibits.pdf(8pages)(1457810bytes)2_Applicant'sResponseBriefandExhibits.pdf(4pages)(1978354bytes)3_Applicant'sResponseBriefandExhibits.pdf(9pages)(870916bytes)4_Applicant'sResponseBriefandExhibits.pdf(13pages)(2575537bytes)5_Applicant'sResponseBriefandExhibits.pdf(19pages)(678028bytes)6_Applicant'sResponseBriefandExhibits.pdf(12pages)(366433bytes)

- 1 -IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ____________________________________/ TATUAJE CIGARS, INC. Opposition No. 91185180Opposer, Appl. Ser. No.: 77/359,141v.NICARAGUA TOBACCO IMPORTS, INC., Mark: TATTOOApplicant. ____________________________________/

APPLICANT’S RESPONSE TOOPPOSER’S MOTION FOR SUMMARY JUDGMENT

Applicant Nicaragua Tobacco Imports, Inc., (“Applicant”), through itsundersigned counsel, hereby responds to the Summary Judgment Motion ofOpposer Tatuaje Cigars, Inc., (“Opposer”) in its Opposition of the Mark TATTOO.(“Applicant’s Mark”).

I. Introduction

Applicant is a well established producer and distributor of cigars thatroutinely develops and promotes new in-house brands of cigars for sale to thegeneral public. Applicant had identified, without actual knowledge of Opposer’smark TATUAJE, the mark TATTOO for cigar products. The USPTO Examinerapproved the mark TATTOO for registration. Once the Applicant’s mark waspublished for opposition, Opposer attempted to contact Applicant regarding theApplicant’s application and the Applicant was contacted by an associate of boththe Applicant and Opposer regarding the Application for the mark TATTOO. Thiswas Applicants first actual knowledge of Opposer’s mark.

- 2 -The Applicant investigated Opposer’s product after this contact. Uponinvestigation, the Applicant noticed that Opposer’s cigars marketed under the“TATUAJE” brand were contained in boxes bearing the “TATUAJE” Mark. TheApplicant further noticed that the boxes containing Opposer’s products also hadother marks adjacent to the “TATUAJE” mark, including the term “PurosCubanos,” which translates to “Pure Cubans,” and a stylized “tobacco leaf stick”logo that has been established by the Cuban Government as an indicator ofGenuine Cuban Cigars. The Applicant was confused by these markings sincethe sale of Genuine Cuban Cigars is illegal in the United States. The Applicantrealized that this was clearly a deceptive sales practice by the Opposer to causepurchasers to believe that these products were Genuine Cuban Cigars, adistinction that, if true, would raise their demand and value among cigaraficionados.

II. Stipulated Facts

1) Applicant agrees that Spanish is a commonly spoken and understoodlanguage in the United States.2) Applicant agrees that the goods and services specified in the FederalRegistration for the TATUAJE mark are similar to the subject trademarkapplication for TATTOO3) The Applicant agrees that the channels of trade commonly used for the goodsspecified in the Federal Registration for the TATUAJE mark are similar to thechannels of trade commonly used for the goods specified in the subjecttrademark application for TATTOO.

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