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ESTTA Tracking number: ESTTA306410
Filing date: 09/16/2009
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 Santa Cruz Tobacco Co., Inc.
Entity Corporation Citizenship Florida
Address 3261 NW 82nd Avenue
Doral, FL 33122
UNITED STATES

Correspondence Jesus Sanchelima, Esq.


information Counsel for Petitioner
Sanchelima and Associates P.A.
235 S.W. Le Jeune Road
Miami, FL 33134
UNITED STATES
paralegal@sanchelima.com Phone:305-447-1617

Registration Subject to Cancellation


Registration No 3066902 Registration date 03/07/2006
Registrant General Cigar Co., Inc.
7300 Beaufont Springs Drive
Richmond, VA 23225
UNITED STATES

Goods/Services Subject to Cancellation


Class 034. First Use: 2003/07/06 First Use In Commerce: 2003/07/06
All goods and services in the class are cancelled, namely: Cigars

Grounds for Cancellation


Torres v. Cantine Torresella S.r.l.Fraud 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
Abandonment Trademark Act section 14
Priority and likelihood of confusion Trademark Act section 2(d)

Mark Cited by Petitioner as Basis for Cancellation


U.S. Application 77129912 Application Date 03/13/2007
No.
Registration Date NONE Foreign Priority NONE
Date
Word Mark GRAN HABANO
Design Mark

Description of NONE
Mark
Goods/Services Class 034. First use: First Use: 1997/07/28 First Use In Commerce: 1997/07/28
cigars made from cuban seed tobacco

Attachments 77129912#TMSN.jpeg ( 1 page )( bytes )


090916v2PetitionCancel .pdf ( 3 pages )(75848 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 /Jesus Sanchelima/


Name Jesus Sanchelima, Esq.
Date 09/16/2009
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Registration No. 3,066,902


Registration date: March 7, 2006
Supplemental Register Date: May 9, 2003
For the Mark: GRAN PURO

SANTA CRUZ TOBACCO CO., INC.


Petitioner,

v. Cancellation No.

GENERAL CIGAR CO.,INC.


Registrant.

________________________________________)

PETITION FOR CANCELLATION

Santa Cruz Tobacco Co., Inc. (Petitioner) a corporation of Florida, having its principal place of
business at 3261 N.W. 82 Avenue, Miami, Florida 33122, believes that it is, and will be, damaged by
the above- identified registration of the mark and hereby petitions to cancel the same.

As grounds for cancellation, it alleges that:

1. Registrant filed its application for the mark GRAN PURO on May 9, 2003.
Registrant alleged first use in commerce as early as July 6, 2003.

2. Registrant’s mark was registered on March 7, 2006.

3. Petitioner has superior rights to the mark based on its prior continuous use in
commerce of the mark GRAN HABANO for “cigars.”

4. Petitioner, has been using the mark GRAN HABANO since, at least as early as July
28, 1997, and in commerce since at least as early as July 28, 1997 to this date.

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5. Registrant's above-identified mark so resembles Petitioner's mark as to be likely,
when used in connection with Registrant's goods cited in its registration, to cause
confusion, or to cause mistake, or to deceive, as to the source or sponsorship of the
goods in question.

7. Petitioner has superior rights to the mark GRAN HABANO as Respondent’s


date of first use is subsequent to Petitioner’s date of first use of the mark in
commerce.

8. Registrant has not used the mark GRAN PURO or GRAN HABANO in
Florida.

9. Upon and information and belief, Registrant has abandoned the mark set
forth in Reg. No. 3,066,902.

10. For the aforesaid reasons, Petitioner is being damaged by the registration of
the mark identified above.

11. Upon information and belief on or about May 9, 2003, Registrant filed a
declaration under 37 C.F.R. § 2.76, and 15 U.S.C., Section 1051 stating that
“he/she believes applicant to be entitled to such mark in commerce; to the
best of his/her knowledge and belief no other person, firm, corporation, or
association has the right to use the mark in commerce, either in the identical
form thereof or in such near resemblance thereto as to be likely, when used
on or in connection with the goods/services of such other person, to cause
confusion, or to cause mistake, or to deceive; and that all statements made of
his/her own knowledge are true; and that all statements made on
information and belief are believed to be true.”

12. Registrant had prior knowledge that another corporation to wit, Santa Cruz Tobacco
Co., Inc.., had the right to use the mark in commerce with the identical
goods/services.

13. Upon information and belief, Registrant’s sworn statements referenced in


Registrant’s filed declaration under 37 C.F.R. § 2.76, and 15 U.S.C., Section 1051

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are intentional, willful, and additionally, Registrant’s registration was fraudulently
procured.

14. For the aforesaid reasons, Petitioner is being damaged by the registration of the mark
identified above.

WHEREFORE, Petitioner prays that said Registration No. 3,066,902 be cancelled.

Attorneys for Petitioner:

_________________________
Jesus Sanchelima, Esq.
Sanchelima & Associates, P.A.
235 S.W. Le Jeune Rd.,
Miami, FL 33134-1762
Telephone: (305) 447-1617
Facsimile: (305) 445-8484