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

gov
ESTTA Tracking number: ESTTA253300
Filing date: 12/05/2008
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Petition for Cancellation


Notice is hereby given that the following party requests to cancel indicated registration.

Petitioner Information
Name Altadis U.S.A. Inc.
Entity Corporation Citizenship Delaware
Address 5900 North Andrews Avenue
Fort Lauderdale, FL 33309
UNITED STATES

Attorney Charles W. Grimes


information Grimes & Battersby, LLP
488 Main Avenue
Norwalk, CT 06851
UNITED STATES
schlesinger@gandb.com, grimes@gandb.com Phone:203-849-8300

Registration Subject to Cancellation


Registration No 3233835 Registration date 04/24/2007
Registrant MILLER, WENTWORTH E.
501 Broad St., Ste. 201
Sewickley, PA 15143
UNITED STATES

Goods/Services Subject to Cancellation


Class 034. First Use: 2003/11/00 First Use In Commerce: 2003/11/00
All goods and services in the class are cancelled, namely: cylindrical tube with removable caps at
one or both ends for enclosing and extinguishing by oxygen deprivation a lighted cigarette, cigar, or
similar smokable product

Grounds for Cancellation


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

Mark Cited by Petitioner as Basis for Cancellation


U.S. Registration 2414999 Application Date 07/06/1998
No.
Registration Date 12/26/2000 Foreign Priority NONE
Date
Word Mark CIGAR SAVOR
Design Mark

Description of NONE
Mark
Goods/Services Class 034. First use: First Use: 1987/08/31 First Use In Commerce: 1987/08/31
SMOKER'S ARTICLES, NAMELY, TUBES NOT OF PRECIOUS METAL FOR
EXTINGUISHING AND STORING CIGARS; CIGAR CANISTERS NOT OF
PRECIOUS METAL; LIGHTERS; ASHTRAYS NOT OF PRECIOUS METAL;
CIGAR HUMIDORS; CIGAR TRIMMERS; CIGAR PUNCHES; AND CIGAR
CUTTERS

Attachments 75513225#TMSN.gif ( 1 page )( bytes )


Petition for Cancellation CIGARETTESAVER.pdf ( 9 pages )(280720 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 Overnight Courier on this date.

Signature /sms/
Name Susan M. Schlesinger
Date 12/05/2008
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Registration No. 3,233,835


Issued on April 24, 2007
---------------------------------------------------------------X
Altadis U.S.A. Inc., :
:
Petitioner, :
:
v. : Cancellation No.:
:
Wentworth E. Miller, :
:
Registrant. :
---------------------------------------------------------------X

PETITION FOR CANCELLATION

Altadis U.S.A. Inc. (“Altadis” or “Petitioner”) believes that it is being damaged by U. S.

Trademark Registration No. 3,233,835 and hereby petitions to cancel same on the following

grounds:

1. Altadis is a corporation organized and existing under the laws of the State of

Delaware, having its principal place of business at 5900 North Andrews Avenue, Fort

Lauderdale, Florida 33309.

2. Altadis is a major United States manufacturer of cigars, tobacco, tobacco related

products and smoker’s articles.

3. Max Rohr, Inc. (“Max Rohr”) is a wholly owned subsidiary of Altadis.

4. Max Rohr is the owner of U.S. Trademark Registration No. 2,414,999 for CIGAR

SAVOR in International Class 34 for “smoker’s articles, namely, tubes not of precious metal for

extinguishing and storing cigars; cigar canisters not of precious metal; lighters; ashtrays not of

precious metal; cigar humidors; cigar trimmers; cigar punches; and cigar cutters.”
5. Attached as Exhibit A is a true and correct printout from the U.S. Patent and

Trademark Office’s electronic database showing current status and title of Registration No.

2,414,999.

6. Altadis brings this cancellation proceeding on behalf of itself as the exclusive

licensee of the CIGAR SAVOR trademark and on behalf of its wholly owned subsidiary, Max

Rohr, the registered trademark owner.

7. Upon information and belief, Wentworth E. Miller (“Registrant”) is an individual

located at 501 Broad Street, Sewickley, Pennsylvania 15143 and is the owner of U.S. Trademark

Registration No. 3,233,835 for CIGARETTESAVER in International Class 34 for “cylindrical

tube with removable caps at one or both ends for enclosing and extinguishing by oxygen

deprivation a lighted cigarette, cigar, or similar smokable product.”

8. Altadis and its predecessors-in-interest have been using the CIGAR SAVOR

trademark in interstate commerce since at least as early as August 31, 1987. Registrant, on the

other hand, has claimed a date of first use of its CIGARETTESAVER mark only as of November

2003. Accordingly, rights in connection with the CIGAR SAVOR trademark are prior and

superior to any rights Registrant may claim in connection with its CIGARETTESAVER mark.

9. As a result of the longstanding and widespread use of the CIGAR SAVOR

trademark in connection with smoker’s articles by Altadis and its predecessors-in-interest, the

trademark has acquired great distinctiveness, secondary meaning and extensive goodwill, and is

well known and recognized by consumers and the trade as identifying quality smoker’s articles.

10. Registrant’s goods in International Class 34, namely, “cylindrical tube with

removable caps at one or both ends for enclosing and extinguishing by oxygen deprivation a

lighted cigarette, cigar, or similar smoke product” (emphasis added) are virtually identical to

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Petitioner’s goods of “tubes not of precious metal for extinguishing and storing cigars” as recited

in Registration No. 2,414,999 (emphasis added).

11. Upon information and belief, Registrant’s goods will travel and be promoted

through the same channels of trade for sale to, and use by, the same class of purchasers as

Petitioner’s goods.

12. Registrant’s use of CIGARETTESAVER in connection with a tube which

extinguishes cigars and cigarettes is likely to cause confusion, mistake or deception as to the

source of origin of Registrant’s goods in that the public, the trade and others are likely to believe

that Registrant’s goods are provided by, sponsored by, approved by, licensed by, affiliated with

or in some other way legitimately connected to Petitioner and/or to its CIGAR SAVOR products.

13. During prosecution of the CIGARETTESAVER trademark application,

Registration No. 2,414,999 was cited against it for a likelihood of confusion. Petitioner submits

that the arguments asserted by Registrant in support of its “Response to and Appeal from July

30, 2003 Office Action, Serial Number 76/494,031” (“Response”) that no likelihood of

confusion exists were spurious and erroneous.

14. In its Response, Registrant argued that cigars are “very different” products from

cigarettes. Yet, in Registrant’s own description of its goods, Registrant very clearly equates a

“cigar” to a “cigarette” as the products which are intended for use in connection with

Registrant’s goods.

15. Registrant also incorrectly stated in its Response that the use of the CIGAR

SAVOR trademark is as of “2000” and that Registrant relied on the Trademark Office’s records

for such date. However, Petitioner’s first date of use in commerce is stated as of “August 31,

1987” in the Trademark Office’s records. How this inaccuracy could have been put forth by

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Registrant and not caught by the Examining Attorney is a mystery. That having been said, the

bottom line is that Registrant’s arguments should have been disregarded, a likelihood of

confusion should have been found, and the rejection of the application during prosecution should

have been sustained.

16. Registrant did, however, acknowledge in its Response that “the owner of CIGAR

SAVOR would be the appropriate vehicle for making a determination as to the appropriateness

of CIGARETTESAVER being registered.” Petitioner, on behalf of its wholly owned subsidiary

Max Rohr, and as exclusive licensee of the CIGAR SAVOR mark is now objecting to the

appropriateness of the registration of CIGARETTESAVER as a trademark.

WHEREFORE, Petitioner believes that it is being damaged by Registration No.

3,233,835 and respectfully requests that this Petition for Cancellation be granted in favor of

Petitioner and that Registration No. 3,233,835 be cancelled.

Dated: December 5, 2008 Respectfully submitted,

/Charles W. Grimes/
Charles W. Grimes
Russell D. Dize
Susan M. Schlesinger
Attorneys for Petitioner
GRIMES & BATTERSBY, LLP
488 Main Avenue
Norwalk, Connecticut 06851-1008
Telephone No.: (203) 849-8300
Facsimile No.: (203) 849-9300
Attorney Docket No.: CSE017USL3

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CERTIFICATE OF SERVICE AND FILING

The undersigned hereby certifies that a copy of the foregoing Petition for Cancellation was

served on the Registrant/Correspondent of Record on the date indicated below by depositing the

same with overnight courier to:

Wentworth E. Miller
501 Broad Street, Suite 201
Sewickley, PA 15143

and further certifies that the aforementioned Petition for Cancellation was filed with the

Trademark Trial and Appeal Board on the date indicated below online through the ESTTA

system of the United States Patent and Trademark Office.

Dated: December 5, 2008

/Susan M. Schlesinger/
Susan M. Schlesinger

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EXHIBIT A