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ESTTA456330 02/14/2012

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 Granted to Date of previous extension Address FAIRMONT HOLDINGS, INC. 02/15/2012

3400 S.W. 26th Terrace, #A-1 Dania, FL 33312 UNITED STATES Kimberly Kolback LAW OFFICES OF KIMBERLY KOLBACK 1395 BRICKELL AVE STE 800 Miami, FL 33131 UNITED STATES kim@kkolbacklaw.com Phone:305 858 2627

Attorney information

Applicant Information
Application No Opposition Filing Date International Registration No. Applicant 79076226 02/14/2012 0777310 Publication date Opposition Period Ends International Registration Date 10/18/2011 02/15/2012 02/27/2002

MEDI plus TEC Medizinisch-technische; Handelsgesellschaft mbH Baerler Strasse 100 47441 Moers GERMANY

Goods/Services Affected by Opposition

Class 034. All goods and services in the class are opposed, namely: Tobacco products, namely, filter tipped cigarettes; smokers' articles, namely, ashtrays, cigarettes cases, cigarette lighters and cigarette holders; matches

Grounds for Opposition

False suggestion of a connection Priority and likelihood of confusion Dilution Torres v. Cantine Torresella S.r.l.Fraud Other Trademark Act section 2(a) Trademark Act section 2(d) Trademark Act section 43(c) 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986) Priority, likelhood of confusion and dilution of a common law trademark

Marks Cited by Opposer as Basis for Opposition

U.S. Application No. Registration Date Word Mark Design Mark 85097069 NONE EMPIRE STATE CIGARS Application Date Foreign Priority Date 07/30/2010 NONE

Description of Mark Goods/Services

NONE Class 034. First use: Cigars, tobacco, cigar boxes, cigar cutters and cigar tubes 85259500 NONE EMPIRE STATE EDITION Application Date Foreign Priority Date 03/07/2011 NONE

U.S. Application No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 034. First use: First Use: 2010/09/11 First Use In Commerce: 2010/09/11 Cigars, tobacco, cigar boxes, cigar cutters and cigar tubes NONE NONE EMPIRE STATE Cigars, tobacco, cigar boxes, cigar cutters and cigar tubes Application Date NONE

U.S. Application/ Registration No. Registration Date Word Mark Goods/Services

Attachments

85097069#TMSN.jpeg ( 1 page )( bytes ) 85259500#TMSN.jpeg ( 1 page )( bytes ) EMPIRE opposition.pdf ( 2 pages )(80221 bytes )

Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature Name Date

/s/Kimberly Kolback/ Kimberly Kolback 02/14/2012

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD FAIRMONT HOLDINGS, INC., a Florida Corporation, Opposer, vs. MEDI plus TEC Medizinisch-technische; Handelsgesellschaft mbH, a German Limited Liability Company, Applicant. / NOTICE OF OPPOSITION Opposer, FAIRMONT HOLDINGS, INC., a Florida Corporation, by and through its undersigned counsel, hereby files this Notice of Opposition to U.S. Trademark Application Serial Number 79/076226. In support, Opposer states: 1. Since 2010, Opposer has used, advertised, promoted and offered to the

Opposition No. Application Serial No.: 79/076226 Word Mark: EMPIRE

public through various channels of trade and commerce, cigars and tobacco, in addition to cigar related products such as cigar boxes, cigar cutters and cigar tubes, displaying the word Empire State alone, or in combination with other words, including Cigar and Edition. 2. During this time, Opposer has made a substantial investment in developing,

advertising and promoting the services, products and goodwill in relation to Opposers EMPIRE STATE trademarks. 3. Opposers customers and the public in general have come to know and

recognize the EMPIRE STATE marks as used on cigars, tobacco and cigar related products, and to associate these marks with Opposer and the services and goods offered by Opposer.

4.

Opposer has and intends to continue to expand its current services and

products displaying the EMPIRE STATE marks to include new services and products. 5. Pursuant to U.S. Trademark Application Serial Number 79/076226, Applicant

seeks registration of EMPIRE in International Class 034 pursuant to Section 66(a) of the Trademark Act for filter tipped cigarettes, ashtrays, cigarette cases, cigarette lighters, cigarette holders and matches. 6. Opposer will be damaged if Applicant is granted registration of Application

Serial Number 79/076226 because such registration will support and assist Applicant in the confusing and misleading use of Applicants mark sought to be registered, will dilute Opposers EMPIRE STATE marks, and will give color and exclusive statutory right to Applicant in violation and derogation of prior and superior rights of Opposer. 7. Further, upon information and belief, Applicant has not used the EMPIRE

mark in commerce as defined under the Trademark Act on each of the goods recited in its Application, to wit: filter tipped cigarettes, ashtrays, cigarette cases, cigarette lighters, cigarette holders and matches. WHEREFORE, Opposer prays that this opposition be sustained and that registration to Application Serial Number 79/076226 be refused. The appropriate filing fee shall be submitted in conjunction with the filing of this Notice Of Opposition. Dated: February 14, 2012. Respectfully submitted, Law Offices Of Kimberly Kolback Attorney for Opposer 1395 Brickell Ave., Suite 800 Miami, Florida 33131 Phone: (305)858-2627 / Fax: (305)858-8763 By: KIM KOLBACK