Trademark Trial and Appeal Board Electronic Filing

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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA324394

Filing date: 12/29/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 77540431

Applicant Cigars International, Inc.Applied for Mark CREMOSA CUBANACorrespondenceAddress

DAVID M. PERRYBLANK ROME LLPONE LOGAN SQUARE , 9TH FLOORPHILADELPHIA, PA 19103-6998UNITED STATES

Submission Applicant's Motion to SuspendAttachments Motion to Suspend - CREMOSA CUBANA.pdf ( 12 pages )(477719 bytes )Filer's Name David M. PerryFiler's e-mail [email protected],[email protected] /David M. Perry/ Date 12/29/2009

http://estta.uspto.gov/

http://estta.uspto.gov/



117393.00101/21841068v.1

1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Applicant: Cigars International, Inc.

Serial No.: 77/540,431

Mark: CREMOSA CUBANA

Class: 34

Filed: August 6, 2008

To: Commissioner for TrademarksP.O. Box 1451

Alexandria, VA 22313-1451 Attn: Tina Craven, Paralegal Specialist

MOTION FOR SUSPENSION OF APPEAL PROCEEDINGS

Pursuant to T.B.M.P. §§ 510 and 1213, Applicant Cigars

International, Inc. (“CI”), respectfully requests a suspension

of the January 25, 2009 due date for Applicant’s brief in theinstant appeal proceedings until the final determination of a

civil action.

Applicant is currently involved in litigation pending in

the United States District Court for the District of Oregon.

The case is captioned Specialty Cigars International, Inc. v.

Cigars International, Inc., 3:09-cv-00924-HU (D. Or.) (Filed

August 11, 2009). The complaint is attached hereto as

Exhibit A . In this case, Specialty Cigars International, Inc.

(“Speciality”) alleges, inter alia, that CI’s use of CREMOSA



117393.00101/21841068v.1

2

CUBANA is infringing Specialty’s common law trademark, CREMOSA

CUBANOS. CI must answer the Complaint by January 25, 2010, and

an initial case management conference with the Court is now set

for January 28, 2010, at 9:30 A.M.

Prior to the issuance of the Board's decision in an ex

parte appeal, proceedings with respect to the appeal may be

suspended by the Board upon written request by applicant showing

good cause for the requested suspension. One example of a

situation in which the Board may suspend proceedings in an

appeal, at the request of the applicant, occurs when an

applicant is involved in a civil action that may be dispositive

of the issue(s) involved in the appeal. T.B.M.P. §§ 510.02(a)

and 1213; 37 C.F.R. §§ 2.117.

Given that the civil action referred to above may directly

affect CI’s rights in CREMOSA CUBANA, including potentially its

ability to register the mark, CI respectfully requests that the

Board suspend the instant proceeding until a final determination

of the civil action is made.

Once a final determination of the civil action is made or a

settlement in the civil action is reached, Applicant will

request that this Board proceeding be resumed.



117393.00101/21841068v.1

3

CIGARS INTERNATIONAL, INC.

Dated: December 29, 2009 By: _______________________David M. Perry

John Paul OleksiukIts Attorneys

BLANK ROME LLPOne Logan SquarePhiladelphia, PA 19103-6998(215) 569-5767

CERTIFICATE OF MAILING

I hereby certify that this correspondence is addressed to the Trademark Trial

and Appeal Board, Hon. Commissioner for Trademarks, P.O. Box 1451, Alexandria,Virginia 22313-1451, and is being deposited via the Electronic System for TrademarkTrials and Appeals (ESTTA) on December 29, 2009.

_______________________________David M. Perry



Exhibit A



Kenneth R. Davis II, OSB No. [email protected] A. Wilson, OSB No. [email protected] POWELL PC601 SW Second Avenue, Suite 2100

Portland, Oregon 97204-3158Telephone: 503.778.2100Facsimile: 503.778.2200

Attorneys for Plaintiff Specialty Cigars International, Inc.

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

SPECIAL TY CIGARS INTERNATIONAL, CV No.INC.,

Plaintiff, COMPLAINT

v. (Federal Unfair Competition, Unfair andDeceptive Trade Practices, Common Law

CIGARS INTERNATIONAL, INC., Trademark Infringement and UnfairCompetition)

Defendant.

Plaintiff Specialty Cigars International, Inc. ("Specialty Cigars" or "Plaintiff') states the

following for its complaint against defendant Cigars International, Inc. ("Defendant"):

1. This is an action for federal unfair competition, unfair and deceptive trade

practices, common law trademark infringement, and unfair competition arising out of the

Trademark Act of 1946,15 U.S.C. § 1051 et seq. (2002), ("Lanham Act"); the Oregon Unlawful

Trade Practices Act, ORS 646.605-646.656; and the common law.

2. Defendant is marketing and selling cigars under trademarks and/or trade dress that

are confusingly similar to Specialty Cigars' trademarks and/or trade dress as set forth below.

Defendant's use of the trademarks and/or trade dress is likely to cause confusion, mistake, or

PAGE 1 - COMPLAINT

709168.0001/801412.1

LANE POWELL PC601 SW SECOND AVENU, SUITE 2100

PORTLAN, OREGON 97204-3158503778.2100 FAX 503.778.2200

Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 1 of 8

Cv 09-924-HU



deception as to the affiiation, connection, or association of Defendant with Specialty Cigars, or

as to the origin of Defendant's services, or as to its sponsorship or approval by Specialty Cigars.

THE PARTIES

3. Specialty Cigars is a corporation duly organized and existing under the laws of

Oregon, whose primary place of business is located within the state of Oregon.

4. Upon information and belief, defendant Cigars International, Inc. is a Delaware

corporation whose primary place of business is located in Bath, Pennsylvania.

JURISDICTION AND VENUE

5. This Court has subject matter jurisdiction over this action under the Lanham Act

pursuant to 15 U.S.C. § 112l and 28 U.S.C. § 1338, and supplemental jurisdiction over the state

claims pursuant to 28 U.S.C. § 1367.

6. This Court has personal jurisdiction over Defendant under 28 U.S.C. § 1331

because, on information and belief, Defendant has distributed or sold merchandise under the

infringing trademarks and/or trade dress in this state, has engaged in acts or omissions within this

state causing injur, has engaged in acts or omissions outside of this state causing injur within

this state, has manufactured or distributed products used or consumed within this state in the

ordinary course of trade, or has otherwise made or established contacts with this state sufficient

to permit the exercise of personal jurisdiction.

7. Venue is proper in this Court pursuant to 28 U.S.c. § 1391 because a substantial

portion of the events giving rise to the claims occurred in this District.

FACTUAL BACKGROUND

8. Specialty Cigars is a national supplier of premium cigars, cigar-related products,

and related services. Specialty Cigars services customers in all 50 states.

9. Specialty Cigars sells its products under a variety of different brands, which

appear on the cigars it sells in the form of a "band," or paper wrapper that is affixed to each

cigar. The bands feature distinctive trademarks, ~oloring, designs, and, in some cases, artwork,

PAGE 2 - COMPLAINT

709168.0001/801412.1

LANE POWELL PC601 SW SECOND AVENU, SUI 2100

PORTLAND, OREGON 97204-3158503.7782100 FAX 503.778.2200




which are owned or licensed by Specialty Cigars. The brands also appear in Specialty Cigars'

cigar-related products, as well as its advertising and its website, located at

ww.specialtycigars.com .

10. Two of Specialty Cigars' popular brands are CREMOSA CUBANOS and ZELO

DE CUBA (collectively, the "Specialty Cigars Marks"). Both brands are strongly associated

with Specialty Cigars' premium quality cigars. Each brand is also displayed on the band of each

cigar sold with distinctive coloring, designs, and artwork as displayed below:

11. Defendant is currently selling or in the past has sold knock-off cigars under marks

or signage that are nearly identical, and thus confusingly similar, to one or more of Plaintiffs

marks. Defendant's infringing activities include the use of the marks CREMOSA CUBANA and

ZELO DE CUBA (collectively, the "Infringing Marks") with bands featuring nearly identical

coloring, design, and artwork used by Specialty Cigars as displayed below:

(Remainder of this page intentionally left blank. J

PAGE 3 - COMPLAINT

709168.0001/801412 I

L\ì'E POWELL PC601 SW SECOND AVENUE. SUITE 2100

PORTLAND. OREGON 97204-.1158503.778 2 i 00 FAX 503.778 2200




Plaintiffs CREMOSA CUBANOS cigar Defendant's CREMOSA CUBANA cigar:

Plaintiffs ZELO DE CUBA cigar: Defendant's ZELO DE CUBA cigar:

12. Defendant's goods sold under the Infringing Marks are displayed on Defendant's

website and/or other advertising that is intended to cause further confusion between them and

Specialty Cigars' own products, including false references to how these same products have been

priced much higher by third parties. In fact, the products are not the same.

l3. Defendant's activities are likely to cause confusion, mistake, and deception as to

the affliation, connection, or association of Defendant with Plaintitl~ and as to the origin,

sponsorship, or approval of Defendant's services or commercial activities.

14. By causing such a likelihood of confusion, mistake, and deception, Defendant is

inflicting irreparable harm to the goodwill symbolized by the Specialty Cigars Marks, for which

Specialty Cigars has no adequate remedy at law.

PAGE 4 - COMPLAINT

709168.00011801412 1

LAì'E POWELL PC601 SW SECOND AVENUE, SUITE 2100

PORTLAND, OREGON 97204-3158503.7782100 FAX 503778.2200




FIRST CLAIM FOR RELIEF

(Federal Unfair Competition-I5 U.S.c. § 1125(a))

15. Plaintiff realleges each of the allegations set forth in paragraphs 1 through 14

above.

16. Defendant's infringement of the Specialty Cigars Marks constitutes a false

designation of origin, or a false or misleading description or representation of fact, which is

likely to cause confusion, or to cause mistake, or to deceive as to the affiiation, connection, or

association of Defendant with Specialty Cigars, or as to the origin of Defendant's services, or as

to the sponsorship or approval of Defendant's services by Specialty Cigars.

17. Upon information and belief, Defendant has intentionally and wilfully used the

Infringing Marks in disregard of Specialty Cigars' rights.

18. Specialty Cigars is being damaged by Defendant's use of the Infringing Marks,

and will continue to be damaged unless Defendant is restrained.

SECOND CLAIM FOR RELIEF

(Unfair and Deceptive Trade Practices-ORS 646.605-646.656)


above.

20. Defendant has been and is passing off its goods as those of Specialty Cigars,

causing a likelihood of confusion or misunderstanding as to the source, sponsorship, or approval

of Defendant's goods, causing a likelihood of confusion as to Defendant's affiliation,

connection, or association with Specialty Cigars, and otherwise damaging to the public.

Defendant's conduct constitutes unfair and deceptive acts or practices in the course of a business,

trade, or commerce in violation of Oregon's Unlawfl Trade Practices Act, ORS 646.605 to

646.656 (2003).

PAGE 5 - COMPLAINT

709168.0001/801412.1

LANE POWELL PC601 SW SECOND AVENU, SUITE 2100

PORTLAN, OREGON 97204-3158503.7782100 FAX 503.7782200




21. Defendant's unauthorized use of confusingly similar imitations of the

Specialty Cigars Marks has caused and is likely to continue to cause substantial injur to the

public and to Specialty Cigars, and Specialty Cigars is entitled to injunctive relief and to recover

damages, costs, and reasonable attorneys' fees.

THIRD CLAIM FOR RELIEF

(Common Law Trademark Infringement and Unfair Competition)


above.

23. Defendant's acts constitute common law trademark infringement and unfair

competition, and have created and wil continue to create a likelihood of confusion to the

irreparable injury of Specialty Cigars and the Specialty Cigars Marks unless restrained by this

Court, as Specialty Cigars has no adequate remedy at law for this injury.

24. On information and belief, Defendant acted with full knowledge of

Specialty Cigars' use of, and statutory and common law rights to, the Specialty Cigars Marks

and without regard to the likelihood of confusion of the public created by Defendant's activities.

25. Defendant's actions demonstrate an intentional, wilful, and malicious intent totrade on the goodwil associated with the Specialty Cigars Marks to the great and irreparable

injury of Specialty Cigars.

26. As a result of Defendant's acts, Specialty Cigars has been damaged in an amount

not as yet determined or ascertainable. At a minimum, however, Specialty Cigars is entitled to

injunctive relief, an accounting of Defendant's profits, damages, and costs. Further, in light of

the deliberately fraudulent and malicious use of confusingly similar imitations of the

Specialty Cigars Marks, and the need to deter Defendant from similar conduct in the future,

Specialty Cigars additionally is entitled to punitive damages.

PAGE 6 - COMPLAINT

709168.0001/801412.1

LANE POWELL PC601 SW SECOND AVENU, SUITE 2 I 00

PORTLAND, OREGON 97204-3158503778.2100 FAX: 503.7782200




PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for judgment as follows:

1. That Defendant and all of its agents, officers, employees, representatives,

successors, assigns, attorneys, and all other persons acting for, with, by, through, or under

authority from Defendant, or in concert or participation with Defendant, and each of them, be

preliminarily and permanently enjoined from:

a. using Plaintiffs marks, or any confusingly similar variations thereof, in

connection with Defendant's goods or services;

b. using any trademark, service mark, name, logo, design, or source

designation of any kind on or in connection with Defendant's goods or services

that is a copy, reproduction, colorable imitation, or simulation of, or confusingly

similar to, or in any way similar to the trademarks, service marks, names, or logos

of Plaintiff;

c. using any trademark, service mark, name, logo, design, or source


that is likely to cause confusion, mistake, deception, or public misunderstanding

that such goods or services are produced or provided by Plaintiff, or are sponsored

or authorized by Plaintiff or are in any way connected or related to Plaintiff;

d. using any trademark, service mark, name, logo, design, or source


that dilutes or is likely to dilute the distinctiveness of the trademarks, service

marks, names, or logos of Plaintiff; and

e. passing off, palming off, or assisting in passing off or palming off,

Defendant's goods or services as those of Plaintiff, or otherwise continuing any

and all acts of unfair competition as alleged in this Complaint.

PAGE 7 - COMPLAINT

709168.0001/801412.1

LANE POWELL PC601 SW SECOND A VENU, SUITE 2 I 00

PORTLAN, OREGON 97204-3 I 58503.7782100 FAX: 503.778.2200




2. That Defendant be ordered to recall all products bearing the Infringing Marks, or

any other confusingly similar mark, which have been shipped by Defendant or under its

authority, to any customer, including, but not limited to, any wholesaler, distributor, retailer,

consignor, or marketer, and also to deliver to each customer a copy of this Cour's order as it

relates to said injunctive relief against Defendant.

3. That Defendant be ordered to deliver for impoundment and destruction all goods

or other materials bearing the Infringing Marks.

4. That the Cour order Defendant to abandon any and all U.S. trademark

applications for any mark that contains the words CREMOSA CUBANA and ZELO DE CUBA

or any confusingly similar variation thereof.

5. That Plaintiff be awarded damages in an amount yet to be determined.

6. That Defendant be compelled to account to Plaintiff for all profits derived by

Defendant's actions as alleged herein.

7. That Plaintiff be awarded damages for the injury to Plaintiffs reputation and

goodwil, and damages for the injur from Defendant's false designation of origin, in an amount

up to three times the actual damages sustained, pursuant to 15 U.S.C. § 1 1 17.8. That Plaintiff be awarded its reasonable attorneys' fees, disbursements, and costs

of this action pursuantto 15 U.S.C. § 1117.

9. That Plaintiff be awarded prejudgment interest.

10. That Plaintiff be awarded such other and fuher relief as this Cour deems just

and equitable.

DATED: August 11,2009

LANE PO~LL PC ~ ~BY~~o~o.97i13Matthew A. Wilson, OSB No. 01102Telephone: 503.778.2100

Attorneys for Plaintiff Specialty CigarsInternational, Inc.

PAGE 8 - COMPLAINT

LANE POWELL PC


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Trademark Trial and Appeal Board Electronic Filing