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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA270221 Filing date: 03/04/2009 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91185180 Party Defendant NICARAGUA TOBACCO IMPORTS, INC. Correspondence Address Jose Gutman Fleit, Gibbons, Gutman, Bongini, PL 551 N.W. 77th Street Boca Raton, FL 33487 UNITED STATES [email protected] Submission Opposition/Response to Motion Filer's Name Jose Gutman Filer's e-mail [email protected] Signature /Jose Gutman/ Date 03/04/2009 Attachments 0_Applicant's Response Brief 30409.pdf ( 22 pages )(94384 bytes ) 1_Applicant's Response Brief and Exhibits.pdf ( 8 pages )(1457810 bytes ) 2_Applicant's Response Brief and Exhibits.pdf ( 4 pages )(1978354 bytes ) 3_Applicant's Response Brief and Exhibits.pdf ( 9 pages )(870916 bytes ) 4_Applicant's Response Brief and Exhibits.pdf ( 13 pages )(2575537 bytes ) 5_Applicant's Response Brief and Exhibits.pdf ( 19 pages )(678028 bytes ) 6_Applicant's Response Brief and Exhibits.pdf ( 12 pages )(366433 bytes )
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Page 1: Timports r to Msj

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

ESTTA Tracking number: ESTTA270221Filing date: 03/04/2009

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

Proceeding 91185180

Party DefendantNICARAGUA TOBACCO IMPORTS, INC.

CorrespondenceAddress

Jose GutmanFleit, Gibbons, Gutman, Bongini, PL551 N.W. 77th StreetBoca Raton, FL 33487UNITED [email protected]

Submission Opposition/Response to Motion

Filer's Name Jose Gutman

Filer's e-mail [email protected]

Signature /Jose Gutman/

Date 03/04/2009

Attachments 0_Applicant's Response Brief 30409.pdf ( 22 pages )(94384 bytes )1_Applicant's Response Brief and Exhibits.pdf ( 8 pages )(1457810 bytes )2_Applicant's Response Brief and Exhibits.pdf ( 4 pages )(1978354 bytes )3_Applicant's Response Brief and Exhibits.pdf ( 9 pages )(870916 bytes )4_Applicant's Response Brief and Exhibits.pdf ( 13 pages )(2575537 bytes )5_Applicant's Response Brief and Exhibits.pdf ( 19 pages )(678028 bytes )6_Applicant's Response Brief and Exhibits.pdf ( 12 pages )(366433 bytes )

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

____________________________________ /

TATUAJE CIGARS, INC. Opposition No. 91185180 Opposer, Appl. Ser. No.: 77/359,141 v.

NICARAGUA TOBACCO IMPORTS, INC., Mark: TATTOO Applicant. ____________________________________ /

APPLICANT’S RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT

Applicant Nicaragua Tobacco Imports, Inc., (“Applicant”), through its

undersigned counsel, hereby responds to the Summary Judgment Motion of

Opposer 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 that

routinely develops and promotes new in-house brands of cigars for sale to the

general public. Applicant had identified, without actual knowledge of Opposer’s

mark TATUAJE, the mark TATTOO for cigar products. The USPTO Examiner

approved the mark TATTOO for registration. Once the Applicant’s mark was

published for opposition, Opposer attempted to contact Applicant regarding the

Applicant’s application and the Applicant was contacted by an associate of both

the Applicant and Opposer regarding the Application for the mark TATTOO. This

was Applicants first actual knowledge of Opposer’s mark.

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The Applicant investigated Opposer’s product after this contact. Upon

investigation, the Applicant noticed that Opposer’s cigars marketed under the

“TATUAJE” brand were contained in boxes bearing the “TATUAJE” Mark. The

Applicant further noticed that the boxes containing Opposer’s products also had

other marks adjacent to the “TATUAJE” mark, including the term “Puros

Cubanos,” which translates to “Pure Cubans,” and a stylized “tobacco leaf stick”

logo that has been established by the Cuban Government as an indicator of

Genuine Cuban Cigars. The Applicant was confused by these markings since

the sale of Genuine Cuban Cigars is illegal in the United States. The Applicant

realized that this was clearly a deceptive sales practice by the Opposer to cause

purchasers to believe that these products were Genuine Cuban Cigars, a

distinction that, if true, would raise their demand and value among cigar

aficionados.

II. Stipulated Facts

1) Applicant agrees that Spanish is a commonly spoken and understood

language in the United States.

2) Applicant agrees that the goods and services specified in the Federal

Registration for the TATUAJE mark are similar to the subject trademark

application for TATTOO

3) The Applicant agrees that the channels of trade commonly used for the goods

specified in the Federal Registration for the TATUAJE mark are similar to the

channels of trade commonly used for the goods specified in the subject

trademark application for TATTOO.

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III. Contested Facts

The Applicant asserts that Summary Judgment is improper in this case due

to the number of outstanding contested facts that require further fact finding and

adjudication. The contested facts in this matter by issue are listed below and

discussed in detail thereafter.

A. Contested Facts Concerning No Confusing Similarity

The Applicant asserts there are contested underlying facts to support a

finding of confusing similarity between Applicant’s mark TATTOO and Opposer’s

mark TATUAJE, and in particular underlying facts to be used in a proper analysis

under the Doctrine of Foreign Equivalents. These facts include:

a) Whether the connotations of TATTOO and TATUAJE are sufficiently

similar, given the multiple translations of TATUAJE into English (and also

the multiple translations of TATTOO into Spanish), to cause confusion to

an observer in the marketplace.

b) Even assuming a sufficient similarity of connotation between TATTOO

and TATUAJE, would a consumer stop and think to translate TATUAJE

into TATTOO when encountering the mark TATTOO as they appear in

their channels of commerce before the consumer made a purchase

decision.

c) Whether the “Sight and Sound” of TATTOO and TATUAJE are

sufficiently similar, even when considered in conjunction with any similarity

in their connotation, to be likely to cause confusion.

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B. Contested Facts concerning Affirmative Defense of “Unclean Hands”

1) Does Opposer’s use of “Puros Cubanos,” which translates to “Pure Cubans,”

in close proximity to and in conjunction with the “Tatuaje” mark on their product

unfairly deceives consumers to believe that Opposer’s products are “Pure

Cuban” tobacco cigars?

2) Does Opposer’s use of the stylized “tobacco leaf stick” logo established by the

Cuban Government to identify genuine Cuban cigars, as used in conjunction with

the term “Puros Cubanos,” and in close proximity to and in conjunction with the

“Tatuaje” mark on their product, unfairly deceives consumers to believe that

Opposer’s products are “Pure Cuban” tobacco cigars?

3) Does Opposer’s specimen provided to the USPTO with Opposer’s Statement

of Use to obtain Opposer’s registration of its mark Tatuaje, misrepresent

Opposer’s actual use of its mark Tatuaje such that any registration resulting

therefrom should not be given any legal force; where Opposer’s use of its mark

Tatuaje at the time of its Statement of Use was actually used in close proximity to

and in conjunction with the term “Puros Cubanos” and in close proximity to and in

conjunction with the stylized leaf logo established by the Cuban Government to

identify genuine Cuban cigars, thereby unfairly deceiving consumers to believe

that Opposer’s product is a “Pure Cuban” tobacco cigar product from Cuba?

IV. Background Statement of Facts

A. Applicant Background, Selection and Promotion of Mark

Applicant Nicaragua Tobacco Imports, Inc., has been in the business of

producing and importing cigars for 7 years. Affidavit of Alberto Gutman, Exhibit

A, Paragraph 1. Applicant is listed as the owner of 24 trademark applications for

tobacco cigars and associated products. Id. at Paragraph 3 and Trademark

Electronic Search System printout, Exhibit B. Applicant currently owns 11

trademark registrations for Cigars and Cigar Products. Id. Identifying and

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promoting new brand names for tobacco cigars has been a routine part of

Applicants business for 7 years. Affidavit of Alberto Gutman, Exhibit A,

Paragraph 1.

Applicant identified and began development of the TATTOO name as a

mark for tobacco cigars in December 2007 without knowledge of Opposer’s

brand. Affidavit of Alberto Gutman, Exhibit A, Paragraph 4. Applicant filed the

currently opposed intent-to-use trademark application for the TATTOO mark that

same month. The Applicant then expended considerable effort over the following

six months to develop a product to be marketed under the TATTOO brand and to

register a related Internet domain name, “tattoocigars.com.” Id. At paragraphs 5-

6 and 15. The intent-to-use trademark application that is the subject of this

opposition was approved by the Examiner, who performed a search of the

Trademark records using the word TATTOO, which should have uncovered the

Opposer’s registration. See, Exhibit K, XSearch Search Summary for U. S.

Serial No: 77359141.

After expending considerable effort over six months to develop the TATTOO

product and to attempt to secure the trademark, Applicant received what were

thought to be unsolicited telephone sales calls from Peter Johnson of Tatuaje

Cigars. Affidavit of Alberto Gutman, Exhibit A, Paragraph 9. Despite Opposer’s

assertion to the contrary, Applicant was completely unfamiliar with Tatuaje

Cigars. Applicant did not return these calls from the unknown caller. Id.

Opposer then contacted Applicant through Jonathan Drew, a person known to

the Applicant. Jonathan Drew explained the Opposer’s position and concerns

regarding the TATTOO mark. Id. at paragraph 10.

After discussions in settlement negotiations with Opposer, the Applicant

sought to investigate the TATUAJE brand. Applicant visited Opposer’s web site

“tatuajecigars.com” and found only one store listed in the Miami area that sells

Tatuaje cigars, “SABOR HAVANA CIGARS.” This store is far from Miami’s “Little

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Havana” area and is not located in a geographic area that cigar aficionados

would visit to investigate cigars. Id. at paragraph 21.

Opposer asserts that “it is a virtual certainty that Applicant had actual

knowledge of Opposer’s rights as well.” Motion for Summary Judgment, page 3,

third paragraph. Despite the “small world” that forms the cigar industry, Applicant

does not know all of the participants, especially a participant with one retailer

located in the cigar aficionado rich Miami area.

B. Opposer’s Unclean Hands

Opposer, and its predecessor in interest Mr. Peter Hassell Johnson, as

early as 2006, and to the present time, have been using the trademark TATUAJE

on cigar boxes with the mark being visible to consumers in close proximity to and

in conjunction with a stylized “tobacco leaf stick” logo and the term “PUROS

CUBANOS”. Affidavit of Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27;

and see also Exhibits F, I, and L. The term “PUROS CUBANOS” means “PURE

CUBANS”. Affidavit of Alberto Gutman, Exhibit A, paragraph 30. The placement

of the words “PUROS CUBANOS” on the cigar box and in close proximity to the

trademark TATUAJE, as shown in Exhibits F, I, and L, is aimed to create an

image in the consumer’s mind that the TATUAJE cigar box contains PURE

CUBAN tobacco cigars.

The Cuban Government, by its commercial enterprise HABANOS, S.A.,

has engaged in a trademark strategy since 1993 to certify products as being

genuine and legitimate by locating in close proximity to, and in conjunction with,

its cigar trademarks a stylized “tobacco leaf stick” logo and optionally also the

term “HABANOS”. Affidavit of Alberto Gutman, Exhibit A, paragraph 29; and see

also Exhibits R and S. Also see Declaration of Jose Gutman, Exhibit M,

paragraph 2; and see also Exhibit N, on page 6, fourth paragraph. The

trademark TATUAJE located on Opposer’s cigar box in close proximity to the

same stylized “tobacco leaf stick” logo mark to the left of the words “PUROS

CUBANOS” is aimed by Opposer to unfairly deceive consumers to believe that

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Opposer’s cigar product sold under the trademark TATUAJE is a “Pure Cuban”

tobacco cigar product from Cuba. Opposer’s cigars sold in the box under the

trademark TATUAJE are not “Pure Cuban” tobacco cigars and they are not from

Cuba. Affidavit of Alberto Gutman, Exhibit A, paragraph 28; and see also Exhibit

T. This intentional tactic by Opposer is intended to deceive consumers regarding

the geographic origin, character, quality, composition, and/or source of the

Opposer’s cigars sold under the trademark TATUAJE. This continuous

deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE

for at least nearly four years (since 2006 to present), precludes Opposer from

seeking relief from this Board under the equitable doctrine of “unclean hands”.

Additionally, due to this continuous deceptive, or deceptively

misdescriptive, use of its mark TATUAJE for at least nearly four years (since

2006 to present), and subject to Applicant completing its discovery on Opposer,

there is a continuous pattern of this deceptive use that, is reasonable to infer,

was likely ongoing as early as 2004 (on or about when Mr. Peter Hassell

Johnson was granted the registration of the trademark TATUAJE) and as early

as 2003 (on or about when Mr. Peter Hassell Johnson submitted its specimen of

actual use along with the application for registration of its trademark TATUAJE).

Opposer’s specimen provided to the USPTO did not show the deceptive

certification marks, i.e., the stylized “tobacco leaf stick” logo mark to the left of

the words “PUROS CUBANOS”. Opposer’s specimen, and signed application,

provided to the USPTO, and being relied upon by the USPTO up until the date of

registration of the mark Tatuaje, misrepresented Opposer’s actual use of its

mark Tatuaje thereby precluding Opposer from now seeking relief from this

Board under the equitable doctrine of “unclean hands”.

C. Opposer’s Misrepresentations to Applicant

Applicant contacted Opposer and discussed a settlement to the dispute

regarding the TATTOO mark. Affidavit of Alberto Gutman, Exhibit A, Paragraph

13. Opposer and Opposer’s Attorney, in communications directly to the

Applicant and in their Motion for Summary Judgment, continue to falsely assert

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that since it is the owner of a registered trademark for “TATUAJE,” it also

“already owns trademark rights in the mark TATTOO.” Opposer’s Motion for

Summary Judgment, Exhibit J, e-mail from Brian Swain to Applicant, first

paragraph; also referred to in Motion for Summary Judgment, page 3, section “B”

second paragraph and last paragraph continuing onto page 4. This is clearly a

misrepresentation since Opposer owns no rights in TATTOO itself.

Although Applicant disagrees with the validity of the assertion presented in

the instant Opposition proceeding, the most Opposer can assert is that TATTOO

could be found confusingly similar to its TATUAJE mark whereby Opposer could

halt others from using the TATTOO mark.

D. Discovery Conference Agreements

Opposer’s motion for Summary Judgment mentions an agreement made

during the discovery conference in this action. Opposer’s Motion for Summary

Judgment, page 4, first full paragraph. In response to Opposer’s transmitted

case law, the Applicant did not supply further legal research to Opposer since the

cases Opposer sent to Applicant’s attorneys already explained the legal theories

the Applicant intended to rely upon.

V. Argument

A. Proper Analysis for the Doctrine of Foreign Equivalents

Opposer asserts that the TATTOO mark is confusingly similar to the

“TATUAJE” mark primarily based upon a similarity of connotation as recognized

under the Doctrine of Foreign Equivalents. Motion for Summary Judgment,

pages 7-8. Opposer asserts that “it is likely that a significant portion of American

consumers would stop and translate Opposer’s Mark into its English equivalent”

and that “[t]he translated meaning of TATUAJE is not obscure.” Id.

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Applicant asserts that Opposer’s arguments misstate the analysis to be

performed under the Doctrine of Foreign Equivalents and also misstate certain

facts concerning the translation of TATUAJE and TATTOO.

To begin, the Applicant agrees with Opposer’s assertion that Spanish is a

commonly understood language in the United States. However, the Applicant

disagrees with Opposer’s assertions regarding the uncontestable facts

underlying the analysis required under the Doctrine of Foreign Equivalents.

The Doctrine of Equivalents is used to evaluate the similarity of connotation

between foreign word and English word marks. Palm Bay Imports v. Veuve

Clicquot Ponsardin, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005).

“When it is unlikely that an American buyer will translate the foreign mark and will

take it as it is, then the doctrine of foreign equivalents will not be applied.” Id.

Words from modern languages are generally translated to English under the

doctrine of foreign equivalents, but the doctrine “is not an absolute rule and

should be viewed merely as a guideline.” Id.

Even when determining similarity of connotation under the Doctrine of

Foreign Equivalents, a complete inquiry into the likelihood of confusion between

a foreign word mark and an English word mark requires one to “consider the

marks in their entireties in terms of sound, appearance, meaning and commercial

impression.” In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).

1. Issues of Fact concerning whether “consumers would stop and translate TATUAJE upon seeing the TATTOO mark

Opposer seems to assert that simply because Spanish is a commonly

understood and spoken language in the United States, “a significant portion of

American consumers would stop and translate Opposer’s Mark into its English

equivalent.” Opposer’s Motion for Summary Judgment, page 7, last paragraph.

The Applicant asserts that this is not the proper test to apply under the Doctrine

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of Foreign Equivalents. The Applicant further asserts that a proper analysis

using test required under the Doctrine of Foreign Equivalents requires resolution

of disputed underlying facts.

The Applicant asserts that TATUAJE is not common Spanish word and

that a Spanish speaking consumer would not typically “stop and translate” the

word mark TATUAJE into English. See, Affidavit of Alberto Gutman, paragraphs

2 and 16.

2. Translation of TATUAJE and the meaning of TATTOO

The Opposer asserts that “it is indisputable that ‘tattoo’ is the English

equivalent of the Spanish word ‘tatuaje.’” Opposer’s Motion for Summary

Judgment, page 7, third full paragraph under section “i.” In contrast to the

Opposer’s assertion, the Applicant points out that “tatuaje” has multiple meanings

in Spanish each with its associated separate translations and that “tattoo” also

has multiple meanings in English, which each translate into different Spanish

word or phrases.

a. TATUAJE has several meanings in Spanish and translations into English

The Opposer asserts that “it is indisputable that ‘tattoo’ is the English

equivalent of the Spanish word ‘tatuaje.’” Opposer’s Motion for Summary

Judgment, page 7, third full paragraph under section “i.” Opposer supplies

several simplified online dictionary translations for “tatuaje.” Opposer’s Motion

for Summary Judgment, Declaration of Brennan C. Swain, paragraph 2, referring

to Motion’s Exhibit H.

In contrast to Opposer’s assertion, the Spanish word “tatuaje” has at least

two meanings, “1. the action and effect of tattooing,” and “2. circle or mark that is

left around the wound from a gun fired in very close proximity.” Affidavit of

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Alberto Gutman, Exhibit A, Paragraph 18. Therefore, “tatuaje” refers to either a

“tattoo” or to a “gun powder burn.”

These two meanings show that the Spanish word “tatuaje” has a broader

meaning than the English word “tattoo.” In English, “the action and effect of

tattooing” and a “gun powder burn” are two very different things. The Applicant

asserts that comparing “tattoo” to “gun powder burn” yields quite dissimilar

connotations, resulting in “tatuaje” and “tattoo” not being “synonyms, much less

exact synonyms.” In re Buckner Enterprises Corp., 6 USPQ2d 1316, 1317

(TTAB 1987). In Buckner, the Board evaluated the similarity of meaning between

the marks PALOMA and DOVE. The meaning of PALOMA was found to include

“dove” and “pigeon.” In comparing “pigeon” to the mark DOVE, the terms were

found to be not exact synonyms. In comparing these two marks, it was held that

“the Board must apply an equally stringent test in judging similarity of meaning

between a foreign word (paloma) and an English word (dove) as it would

between two English words (e.g. pigeon and dove).” Id.

The Applicant further asserts that the multiple meanings of the Spanish

word “tattoo” reduce the strength of the “similarity of connotation” between the

TATUAJE mark and the TATTOO mark. The Applicant asserts that the strength

of the “similarity of connotation” between these marks and the overall analysis of

the likelihood of confusion between these marks therefore at least involves

disputed facts concerning the translation that a consumer would use when

viewing the TATUAJE mark, if in fact such a translation is even made.

b. TATTOO has Several Meanings and Translations into Spanish

In evaluating the similarity of connotation between TATTOO and

TATUAJE, it is also relevant to consider the several meanings that the word

“tattoo” has in the English language. One dictionary identifies the following

definitions of “tattoo:” “1: a rapid rhythmic rapping. 2 a: a call sounded shortly

before taps as notice to go to quarters. b: outdoor military exercise given by

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troops as evening entertainment.” VERB “transitive verb: to beat or rap

rhythmically on: drum on. intransitive verb: to give a series of rhythmic taps”. In

addition, the final definitions are “1 : the act of tattooing : the fact of being

tattooed 2 : an indelible mark or figure fixed upon the body by insertion of

pigment under the skin or by production of scars.” Affidavit of Alberto Gutman,

Exhibit A, Paragraph 17.

c. Multiple Translations Leave Factual Issues Regarding The Similarity Of Connotation

The Applicant asserts that these multiple meanings for “tattoo” similarly

show that the meaning of “tattoo” in English is broader than the meaning of the

Spanish word “tatuaje.” For reasons similar to those enumerated above with

regards to the multiple meanings of the word “tatuaje,” the Applicant asserts that

the comparison between TATUAJE and TATTOO show that these terms do not

have synonymous meanings and therefore there are at least contested issues of

fact regarding which meaning of “tattoo” and “tatuaje” a consumer would use

when encountering these terms as trademarks.

B. Dissimilar Sight and Sound at Least Leave Disputed Issue of Fact

The “confusing similarity” analysis further requires an analysis of the

similarity of the “sight and sound” of the mark, even when comparing similarity of

connotation under the Doctrine of Foreign Equivalent. The Applicant asserts that

the sight and sound of TATUAJE and TATTOO are quite different and that no

likelihood of confusion would exist based on the sight and sound of these marks

alone. TATUAJE has seven (7) letters while TATTOO has six (6) letters clearly

forming two syllables.

The Applicant’s pronunciation of TATUAJE uses three (3) syllables to create

“ta-tüa-je,” as is the common pronunciation by Spanish speakers. Affidavit of

Alberto Gutman, Exhibit A, Paragraph 20. The Applicant points out that in the

common Spanish pronunciation of “tatuaje,” the second syllable of TATUAJE

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ends in an “ah” sound while the second syllable of “tattoo” clearly ends in an ‘oo”

sound.

The Applicant admits that the sound of a mark is not generally limited to the

common pronunciation of a word. However, the Applicant asserts that under the

Doctrine of Foreign Equivalents, the consumer is recognizing a foreign word and

translating it to its English equivalent. The Applicant asserts that in recognizing

this translation, a speaker of the foreign language is very likely to place in his or

her mind the common pronunciation of a foreign word to be translated than would

the case when comparing marks based on English or coined terms.

The Opposer apparently uses a pronunciation of TATUAJE that has four

syllables, dividing the word into “TA-TU” and “A-JE.” The Applicant asserts that a

pronunciation of TATUAJE with four syllables as opposed to the obvious 2

syllables of TATTOO further reduces the similarity of the sound of these marks.

With regards to similarity of sight, the Applicant asserts that TATUAJE and

TATTOO are quite different in sight as is readily noticed by observation. The

Opposer only asserts that the first syllables of the two words, which only contain

three (3) letters, are similar in sight. Opposers Motion for Summary Judgment,

page 8, penultimate paragraph, section “ii.” The remaining four (4) letters of

TATUAJE, over half of the Opposer’s mark, therefore differ from the remaining

three (3) letters of TATTOO.

C. Unclean Hands

1) Opposer’s use of “Puros Cubanos,” in close proximity to and in conjunction with the “Tatuaje” mark on their product unfairly deceives consumers to believe that Opposer’s product is a “Pure Cuban” tobacco cigar product.

Opposer has been using its mark TATUAJE in connection with its cigar

products, on information and belief as early as its date of its application for

trademark registration of the mark in the USPTO, and currently continues to

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similarly use its mark, in close proximity to and in conjunction with the words

“Puros Cubanos”, as shown in the attached Exhibits F, I and L. Affidavit of

Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, l,

and L.

The photo images shown in Exhibits F, I and L represent views of the Opposer’s

cigar box as offered for sale and sold by Opposer at least as early as the year

2006. Exhibit F shows a photo image of Opposer’s cigar box as currently offered

for sale and sold by a local cigar retail store in Miami. Affidavit of Alberto

Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, I, and L.

As illustrated in Exhibits F, I, and L, the words “Puros Cubanos” are prominently

visible in close proximity to the Opposer’s mark TATUAJE on the same side of

the cigar box containing Opposer’s cigars. Note in particular that the photo

image shown in Exhibit I also includes a signature on the box. This is the

signature of Peter Johnson who was the applicant and registrant of the

trademark TATUAJE.

The words “Puros Cubanos” translate from Spanish to English as “Pure

Cubans”. Affidavit of Albereto Gutman, Exhibit A, paragraph 30. The indication

of these words on Opposer’s cigar box and in close proximity to Opposer’s

trademark TATUAJE is that the cigars contained in the box and sold under the

trademark TATUAJE are “Pure Cuban” tobacco cigars. That is, the Opposer

sells its Tatuaje cigars as pure Cuban tobacco cigars from Cuba. Cigars from

Cuba are world known for being of high quality tobacco and craftsmanship.

Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure

Cuban” tobacco cigars. These cigars are not from Cuba since selling Cuban

cigars is illegal in the United States. Affidavit of Alberto Gutman, Exhibit A,

paragraphs 28.

Opposer’s affirmative designation of its cigar product as being “PURE

CUBANS” is an intentional tactic by Opposer to unfairly deceive consumers to

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believe that Opposer’s product sold under the trademark TATUAJE is a “Pure

Cuban” tobacco cigar product. That is, the trademark TATUAJE located in close

proximity to the words “PUROS CUBANOS” is aimed by Opposer to deceive

customers and consumers regarding the geographic origin, character, quality,

composition, and/or source of the Opposer’s cigars sold under the trademark

TATUAJE. This continuous deceptive, or deceptively misdescriptive, use by

Opposer of its mark TATUAJE for at least nearly four years (since 2006 to

present), precludes Opposer from seeking relief from this Board under the

equitable doctrine of “unclean hands”.

2) Opposer’s use of the stylized “tobacco leaf stick” logo, also used in conjunction with the term “Puros Cubanos”, and in close proximity to and in conjunction with the “Tatuaje” mark on their product, unfairly deceives consumers to believe that Opposer’s product is a “Pure Cuban” tobacco cigar product from Cuba.

Opposer has been using its mark TATUAJE in connection with its cigar

products as early as 2006, and currently continues to similarly use its mark, in

close proximity to and in conjunction with a “tobacco leaf stick” logo, as shown in

the attached Exhibits F, I, and L. Affidavit of Alberto Gutman, Exhibit A,

paragraphs 23, 26 and 27, describing Exhibits F, I and L. In the photo images

shown in Exhibits F, I, and L, the “tobacco leaf stick” logo is prominently visible

(on the left side of the words “Puros Cubanos”) in close proximity to the

Opposer’s mark TATUAJE on the same side of the cigar box containing

Opposer’s cigars. Id.

A number of years before Opposer’s date of first use of its mark

TATUAJE, the stylized “tobacco leaf stick” logo trademark was established and

has been in notorious use, by the Cuban Government and its commercial

enterprise HABANOS, S.A., in close proximity and in conjunction with its most

valuable tobacco cigar trademarks to certify its genuine Cuban cigar trademarks

worldwide. Declaration of Jose Gutman, Exhibit M, paragraph 2, and see also

Exhibit N, for example on page 5, second paragraph. Exhibit N is a copy of a

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- 16 -

paper dated November 22 and 23, 2007, and presented by Mr. Adargelio Garrigo

de la Grana, who was at the time the legal Director of Habanos, S.A., and the

trademark attorney for Cubatabaco, a governmental enterprise of the Cuban

Government, and a 50% owner of Habanos, S.A. This paper details the Cuban

Government’s trademark strategy to certify legitimate use of its most valuable

trademarks used in connection with sales of Cuban tobacco cigars. The Cuban

Government’s certification mark includes the stylized “tobacco leaf stick” logo

trademark. It also includes the word HABANOS. Declaration of Jose Gutman,

Exhibit M, paragraph 2; and see also Exhibit N, for example at bottom of page 4,

and also see page 6, fourth paragraph. The paper, on page 6, fourth paragraph,

refers to the stylized “tobacco leaf stick” logo trademark as the “tobacco leaf of

Vuelta Abajo appellation of origin, the best in the world.” See also Exhibit R,

which shows an example of the stylized “tobacco leaf stick” logo as registered by

HABANOS, S.A., in USPTO Registration No. 2,177,837. Affidavit of Alberto

Gutman, Exhibit A, paragraph 29. See also Exhibit S which shows an example

of the Cuban Government’s use of its certification mark in close proximity and in

conjunction with one of its valuable tobacco cigar trademarks. Affidavit of Alberto

Gutman, Exhibit A, paragraph 29.

A direct comparison of the stylized “tobacco leaf stick” logo mark

located to the left side of the word HABANOS as shown in Exhibits R and S,

against the Opposer’s use of the stylized “tobacco leaf stick” logo mark to the

left of the words “PUROS CUBANOS”, as shown in Exhibits F, I, and L,

highlights the striking similarity of these two marks.

The indication of the stylized “tobacco leaf stick” logo mark to the left of

the words “PUROS CUBANOS” on Opposer’s cigar box and in close proximity to

Opposer’s trademark TATUAJE is that the cigars contained in the box and sold

under the trademark TATUAJE are “Pure Cuban” tobacco cigars. That is, the

Opposer sells its Tatuaje cigars as pure Cuban tobacco cigars from Cuba.

Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure

Page 18: Timports r to Msj

- 17 -

Cuban” tobacco cigars. These cigars are not from Cuba. Affidavit of Alberto

Gutman, Exhibit A, paragraph 28.

Opposer’s affirmative designation of its cigar product with the stylized

“tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS” and

in close proximity and in conjunction with its trademark TATUAJE is an

intentional tactic by Opposer to unfairly deceive consumers to believe that

Opposer’s cigar product sold under the trademark TATUAJE is a “Pure Cuban”

tobacco cigar product. That is, the trademark TATUAJE located in close

proximity to the stylized “tobacco leaf stick” logo mark to the left of the words

“PUROS CUBANOS” is aimed by Opposer to deceive customers and consumers

regarding the geographic origin, character, quality, composition, and/or source of

the Opposer’s cigars sold under the trademark TATUAJE. This continuous

deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE

for at least nearly four years (since 2006 to present), precludes Opposer from

seeking relief from this Board under the equitable doctrine of “unclean hands”.

3) It is reasonable to infer that Opposer’s specimen and application provided to the USPTO to obtain Opposer’s registration of its mark Tatuaje, misrepresented Opposer’s actual use of its mark Tatuaje thereby precluding Opposer from seeking relief from this Board under the equitable doctrine of “unclean hands”.

The continuous deceptive, or deceptively misdescriptive, use by Opposer

of its mark TATUAJE for at least nearly four years (since 2006 to present), as

discussed above, demonstrates a continuous pattern of deceptive use that,

subject to Applicant completing its discovery on Opposer, is reasonable to infer,

was likely ongoing as early as April 27, 2004 (on or about when Mr. Peter Hassell

Johnson was granted the registration of the trademark TATUAJE) and as early

as June 15, 2003 (on or about when Mr. Peter Hassell Johnson submitted its

specimen of actual use along with the application for registration of its trademark

TATUAJE.

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- 18 -

Opposer’s specimen of actual use of its mark TATUAJE that was

submitted to the USPTO was required to show Opposer’s actual use of its mark

in connection with its tobacco cigar box. Opposer’s specimen of actual use of its

mark TATUAJE in connection with Opposer’s tobacco cigar box did not show the

“tobacco leaf stick” logo or the words “PUROS CUBANOS”. Declaration of Jose

Gutman, Exhibit M, paragraph 3; and see also Exhibit P.

Mr. Peter Hassell Johnson, as the Owner, signed the Trademark

Application for TATUAJE on June 15, 2003. Declaration of Jose Gutman, Exhibit

M, paragraph 3; and see also Exhibit O and Exhibit Q. Mr. Peter Hassell

Johnson made a statement in its signed Trademark Application with Declaration

as follows: “[t]he applicant is submitting or will submit one specimen for each

class showing the mark as used in commerce on or in connection with any

item in the class of listed goods and/or services, consisting of a(n) Tatuaje Cigar

box lid and cigar band.” (Emphasis added.)

By Peter Hassell Johnson providing the specimen of a Tatuaje Cigar box

lid along with the signed Trademark Application with Declaration, he made an

affirmative statement that represented to the USPTO while the application was

pending at the USPTO up until the time of registration of the trademark

TATUAJE that the actual use of the trademark TATUAJE in connection with the

cigar box did not include in close proximity to the mark TATUAJE the “tobacco

leaf stick” logo and the words “PUROS CUBANOS”. Mr. Peter Hassell Johnson

in the Trademark Application and the submitted specimen of actual use made an

affirmative statement relied upon by the USPTO until the date of registration of

the trademark TATUAJE (in June 2004), and in view of Opposer’s continuous

pattern of deceptive use of the trademark TATUAJE from as early as 2006, it is

reasonable to infer, that this affirmative statement misrepresented to the

USPTO, while the application was pending at the USPTO up until the time of

registration of the trademark TATUAJE, the actual use of the trademark

Page 20: Timports r to Msj

- 19 -

TATUAJE in connection with the cigar box. The signed Declaration warned Mr.

Peter Hassell Johnson that

“willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, . . .; 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.”

See also Exhibit Q.

Due to the material misrepresentation and false statement in the

application signed by Mr. Peter Hassell Johnson, as is reasonable to infer and

subject to the Applicant completing its discovery on Opposer, the Opposer is

therefore precluded from seeking relief from this Board under the equitable

doctrine of “unclean hands”. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46

(Fed Cir. 1986), (applicant submitted a specimen label that was not then in

use) (“Fraud in procuring a trademark registration or renewal occurs when an

applicant knowingly makes false, material representations of fact in connection

with his application. . . . ”[T]he obligation which the Lanham Act imposes on an

applicant is that he will not make knowingly inaccurate or knowingly misleading

statements in the verified declaration forming a part of the application for

registration.””); also see General Car & Truck Leasing Sys. Inc. v. General Rent-

a-Car Inc., 17 USPQ2d 1398, 1491 (S.D. Fla. 1990), and Medinol v. Neuro Vasx,

Inc., 67 USPQ2d 1205 (TTAB 2003), (the objective standard to determine

deceptive intent is whether the applicant “knew or should have known” that a

statement is materially incorrect. Fraud can occur without subjective intent.); and

also see Bose Corporation v. Hexawave, Inc., Opposition No. 91/157,315, (“a

use statement in a Section 8/9 renewal is a material representation; without use

on all of the goods, the affidavit of continued use would not have been accepted.”

“[P]roof of specific intent to commit fraud is not required.”), and further see

Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008

(June 30, 2008) (precedential) (“false claims of use of the mark on goods or

services, wherever they may appear, . . . are essential to the integrity of the

application and registration process.” It did not matter that the statement of

Page 21: Timports r to Msj

- 20 -

goods and services was not a “verified statement" of goods and services such as

in a statement of use.).

Based on the above, the Applicant respectfully requests that the

Opposer’s Motion for Summary Judgment be dismissed.

Date: March 4, 2009 ___/Jose Gutman/_________ Jose Gutman ___/Jeffrey N. Giunta/______ Jeffrey N. Giunta

Fleit, Gibbons, Gutman, Bongini, & Bianco, PL

551 N.W. 77th Street Boca Raton, FL, 33487 Phone: (561) 989-9811 Fax: (561) 989-9812 e-mail: [email protected] Attorneys for Applicant

Page 22: Timports r to Msj

Exhibit Index

Exhibit A: Affidavit of Alberto Gutman

Exhibit B: Affidavits of Alphonso Alvarez, Rolando Guttierez, and Mauricio Martinez

Exhibit C: Merriam-Webster Dictionary Entry for “Tattoo”

Exhibit D: REAL DICCIONARIO – “Tatuaje”

Exhibit E: Wordreference.com English-Spanish entry for “Tattoo”

Exhibit F: Pictures of Opposer’s TATUAJE Cigar Box

Exhibit G: Receipt for box of TATUAJE cigars

Exhibit H: REAL DICCIONARIO – “Puro” and “Natural de Cuba”

Exhibit I: Internet Advertisement for TATUAJE cigars

Exhibit J: Listing of Applicant’s Trademark Applications and Registrations

Exhibit K: Trademark Examiner’s search for subject Application “Tattoo”

Exhibit L: [Jeff added this exhibit.]

Exhibit M: Declaration of Jose Gutman

Exhibit N: Habanos S.A. Trademark Strategy paper by Adargelio Garrido de la Grana

Exhibit O: Tatuaje Record at USPTO Website

Exhibit P: Tatuaje Specimen at USPTO

Exhibit Q: Tatuaje Application at USPTO

Exhibit R: Habanos & Tobacco Leaf Stick Logo. Trademark Registration No. 2,177,837

Exhibit S: Example of Actual Use By Habanos, S.A., of the Certification Mark

Exhibit T: Photo Image of Bottom of TATUAJE Cigar Box

Page 23: Timports r to Msj

- 21 -

CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of the foregoing APPLICANT’S

RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT has been

served on Brennan C. Swain by mailing said copy on March 4, 2009, via First Class

Priority Mail, postage prepaid to:

Jeffer Mangels Butler & Marmaro LLP Attn: Brennan C. Swain 1900 Avenue of the Stars, 7th Floor Los Angeles, CA 90067 Date: March 4, 2009 ___/Jose Gutman/_________ Jose Gutman ___/Jeffrey N. Giunta/______ Jeffrey N. Giunta

Fleit, Gibbons, Gutman, Bongini, & Bianco, PL

551 N.W. 77th Street Boca Raton, FL, 33487 Phone: (561) 989-9811 Fax: (561) 989-9812 e-mail: [email protected]

Page 24: Timports r to Msj

Exhibit A: Affidavit of Alberto Gutman

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Exhibit B: Affidavit of Alphonso Alvarez, Rolando Guttierez,

and Mauricio Martinez

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Page 34: Timports r to Msj
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Page 36: Timports r to Msj

Exhibit C: Merriam-Webster Dictionary Entry for “Tattoo”

Page 37: Timports r to Msj

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tattoo

4 entries found.

1tattoo (noun)

2tattoo (verb)

3tattoo (transitive verb)

4tattoo (noun)

Free Tattoo Designs

Looking for your perfect Tattoo? View 1000's of Tattoo Designs now.

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1tat�too

\ta-ɑtü\

noun

plural tattoos

alteration of earlier taptoo, from Dutch taptoe, from the phrase tap toe!

taps shut!

circa 1627

1 : a rapid rhythmic rapping

2 a : a call sounded shortly before taps as notice to go to quarters b : outdoor

military exercise given by troops as evening entertainment

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MLA Style

"tattoo." Merriam-Webster Online Dictionary. 2009.

Merriam-Webster Online. 3 March 2009

tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo

1 of 2 3/3/2009 6:16 PM

Page 38: Timports r to Msj

<http://www.merriam-webster.com/dictionary/tattoo>

APA Style

tattoo. (2009). In Merriam-Webster Online Dictionary.

Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo

Products Premium Services Company Info Contact Us Advertising Info Privacy Policy

© 2009 Merriam-Webster, Incorporated

tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo

2 of 2 3/3/2009 6:16 PM

Page 39: Timports r to Msj

Also Visit: Unabridged Visual Britannica Online Encyclopedia ESL: Learner's for Kids: Word Central Spell It!

Search "tattoo" in:

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tattoo

4 entries found.

1tattoo (noun)

2tattoo (verb)

3tattoo (transitive verb)

4tattoo (noun)

Free Tattoo Designs

Looking for your perfect Tattoo? View 1000's of Tattoo Designs now.

TattooSelector.net

3tattoo

transitive verb

Tahitian tatau, noun, tattoo

1769

1 : to mark or color (the skin) with tattoos

2 : to mark the skin with (a tattoo) <tattooed a flag on his chest>

— tat�too�er noun

— tat�too�ist \-ɑtü-ist\ noun

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MLA Style

"tattoo." Merriam-Webster Online Dictionary. 2009.

Merriam-Webster Online. 3 March 2009

<http://www.merriam-webster.com/dictionary/tattoo>

tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B3%5D

1 of 2 3/3/2009 6:19 PM

Page 40: Timports r to Msj

APA Style

tattoo. (2009). In Merriam-Webster Online Dictionary.

Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo

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© 2009 Merriam-Webster, Incorporated

tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B3%5D

2 of 2 3/3/2009 6:19 PM

Page 41: Timports r to Msj

Also Visit: Unabridged Visual Britannica Online Encyclopedia ESL: Learner's for Kids: Word Central Spell It!

Search "tattoo" in:

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Manager, Proper...What started in 1954 with onerestaurant in M...Miami, FL

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Dictionary Thesaurus Spanish/English Medical

tattoo

4 entries found.

1tattoo (noun)

2tattoo (verb)

3tattoo (transitive verb)

4tattoo (noun)

Free Tattoo Designs

Looking for your perfect Tattoo? View 1000's of Tattoo Designs now.

TattooSelector.net

2tattoo

verb

1780

transitive verb

: to beat or rap rhythmically on : drum on

intransitive verb

: to give a series of rhythmic taps

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MLA Style

"tattoo." Merriam-Webster Online Dictionary. 2009.

Merriam-Webster Online. 3 March 2009

<http://www.merriam-webster.com/dictionary/tattoo>

APA Style

tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B2%5D

1 of 2 3/3/2009 6:20 PM

Page 42: Timports r to Msj

tattoo. (2009). In Merriam-Webster Online Dictionary.

Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo

Products Premium Services Company Info Contact Us Advertising Info Privacy Policy

© 2009 Merriam-Webster, Incorporated

tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B2%5D

2 of 2 3/3/2009 6:20 PM

Page 43: Timports r to Msj

Exhibit D: REAL DICCIONARIO – “Tatuaje”

Page 44: Timports r to Msj

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Real Academia Española © Todos los derechos reservados

Page 1 of 1Real Academia Española. Diccionario Usual.

2/23/2009http://buscon.rae.es/draeI/SrvltGUIBusUsual?TIPO_BUS=1&LEMA=tatuaje

Page 45: Timports r to Msj

Exhibit E: Wordreference.com English-Spanish entry for

“Tattoo”

Page 46: Timports r to Msj

WordReference.com English-Spanish Dictionary

Look up: English-Spanish Buscar

In other languages: French | Italian | Portuguese | German | Russian | Polish | Romanian | Czech | Greek | Turkish | Chinese | Japanese | Korean

Add WordReference search box to your Google homepage:

Pocket Oxford Spanish Dictionary © 2005 Oxford University Press:

tattoo 1 /tæ'tu:/ sustantivo (pl -toos )

1. (picture) tatuaje m 2. (display) espectáculo militar con música

tattoo 2 verbo transitivo -toos, -tooing, -tooed tatuar(conj.� )

Subscribe to the Oxford Concise or Unabridged dictionary for more translations, meanings and examples.

From the Diccionario Espasa Concise © 2000 Espasa Calpe:

tattoo [tæ 'tし ]

From the WordReference Supplement © 2009 WordReference.com: tattoo :

Forum discussions with the word(s) "tattoo" in the title:

” Ask in the forums yourself. ” Visit the Spanish-English Forum.

'tattoo ' also found in these entries:Spanish:tatuar - tatuaje

tattoo: English definition | in French | in Italian | in Portugueseconjugator | in context | images

I verbo transitivo tatuar

II nombre 1 tatuaje 2 Mil espectáculo militar

Compound Forms:

tattoo artist nm tatuadortattoo artist nmf artista del tatuajeReport an error.

El tattoo no es tabú Gang tattoo removal program I am a cartoonist and a tattoo designer as well LLEDAD for a tattoo.... sag (in a tattoo) tap/tattoo and tap/palm tattoo parlor They won't let me get a tattoo.... To get a tattoo To tattoo upon/over/on

Google.comEspañol:

Universal:

Ver También: tastelessness tast ing tasty tat tat ter tat tered tat ters tat t ing tat t le tat t letale tat too tat tooing tat tooist tat ty taught taunt taunt ing taunt ingly taupe Taurus taut

Links: ” Abreviaturas ” Pron. Symbols ” Como buscar ” Foros ” Apoyar WR ” Hacer enlace a WR ” Añadir WR a

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Page 1 of 1tattoo - English-Spanish Dictionary - WordReference.com

2/23/2009http://www.wordreference.com/es/translation.asp?tranword=tattoo

Page 47: Timports r to Msj

Exhibit F: Pictures of Opposer’s TATUAJE Cigar Box

Page 48: Timports r to Msj
Page 49: Timports r to Msj
Page 50: Timports r to Msj

Exhibit G: Receipt for box of TATUAJE cigars

Page 51: Timports r to Msj
Page 52: Timports r to Msj

Exhibit H: REAL DICCIONARIO – “Puro” and “Natural de

Cuba”

Page 53: Timports r to Msj

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Page 1 of 2Real Academia Española. Diccionario Usual.

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Page 54: Timports r to Msj

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Real Academia Española © Todos los derechos reservados

Page 2 of 2Real Academia Española. Diccionario Usual.

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"

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Real Academia Española © Todos los derechos reservados

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Exhibit I: Internet Advertisement for TATUAJE cigars

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Exhibit J: Listing of Applicant’s Trademark Applications and

Registrations

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United States Patent and Trademark Office

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Current Search:S1: (Nicaragua Tobacco Imports)[OW] docs: 24 occ: 72

Serial Number Reg. Number Word Mark Check Status Live/Dead

1 78899717 3222884 CUPIDO TARR LIVE

2 78242915 2973248 LA CAROLINA TARR LIVE

3 78242906 2934273 VEGAS DE TABACALERA ESTELI TARR LIVE

4 78242904 SALAZAR Y HNOS TARR DEAD

5 78242899 2953846 BECK TARR LIVE

6 78241785 2973241 ARTE CUBANO TARR LIVE

7 78241747 2973240 CUBAN CRAFTERS TARR LIVE

8 78230529 3142814 420'S TARR LIVE

9 77429139 3584394 DON QUIJOTE TARR LIVE

10 77361657 ONEOFF CIGARS TARR LIVE

11 77421758 CONTRABAND TARR LIVE

12 77410795 CIGUARD TARR DEAD

13 77361662 3549231 J.L. SALAZAR Y HERMANOS TARR LIVE

14 77510706 DOMINO TARR LIVE

15 77510705 DOMINO PARK TARR LIVE

16 77510698 LA FLOR DE ALBA TARR LIVE

17 77358959 TONY ALVAREZ TARR DEAD

18 77361556 3526800 CUBAN COPY TARR LIVE

19 77359142 EL LAGUITO TARR DEAD

20 77361550 3523588 EL FENICIO TARR LIVE

21 77359144 NICARAGUA HABANOS TARR LIVE

22 77270508 3494999 J.L. SALAZAR TARR LIVE

23 77359141 TATTOO TARR LIVE

24 77421759 BOUTIQUE PREMIUM CIGARS TARR LIVE

Record List Display http://tess2.uspto.gov/bin/showfield?f=toc&state=4010%3Arl7e85.1.1&p...

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Exhibit K: Trademark Examiner’s search for subject

Application “Tattoo”

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*** User:mpappas ***

# Total Dead Live Live Status/ Search

Marks Marks Viewed Viewed Search

Docs Images Duration

01 13070 N/A 0 0 0:04 *tat${"oue"}*[bi,ti] and live[ld]

02 585 N/A 0 0 0:03 tat${"oue"}*[bi,ti] and live[ld]

03 84 0 84 52 0:02 2 and "034"[cc]

04 372 N/A 0 0 0:01 *tat$oo*[bi,ti] and live[ld]

05 415 N/A 0 0 0:02 *tat$u*[bi,ti] and live[ld]

06 24 0 24 18 0:01 *tat$ew*[bi,ti] and live[ld]

07 159 0 159 92 0:02 (4 5) and "034"[cc]

08 22 0 22 12 0:02 tattoo[fm] and live[ld]

Session started 3/31/2008 2:17:46 PM

Session finished 3/31/2008 2:24:40 PM

Total search duration 0 minutes 17 seconds

Session duration 6 minutes 54 seconds

Defaut NEAR limit=1ADJ limit=1

Sent to TICRS as Serial Number: 77359141

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Exhibit L: Web Archive of Retailer Offer of Opposer’s Cigars

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Exhibit M: Declaration of Jose Gutman

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Exhibit N: Habanos S.A. Trademark Strategy paper by

Adargelio Garrido de la Grana

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Habanos SA: Trademarks and GIs

Working together

My name is Adargelio Garrido de la Grana. I am the legal Director of Habanos S.A., and Cubatabaco’s attorney for matters related to the industrial property. Habanos SA is a Cuban company, owned on a fifty-fifty per cent by Cubatabaco and Altadis SA (an Spanish–French company). Cubatabaco is the owner of the Cuban appellations of origin.

I. I�TRODUCTIO�

Who Are We?

� Habanos, S.A., was founded on September 14, 1994. � On February 4, 2000, Habanos, S.A., became a joint venture, with

Cubatabaco, a Cuban governmental enterprise, holding 50 percent of its shares and Altadis, S.A., the largest company in the world that markets tobacco products, holding the other 50 percent.

� Habanos, S.A., is the world leader sell ing premium cigars. It

• has a portfolio of 32 active brands;

• has more than 6000 brands registered throughout the world;

• uses Cuban tobacco denominations of origin in trade, since it is the only Cuban exporter;

• has a network of sales outlets with over 25 exclusive distributors;

• has a network of franchises with more than 120 sales outlets—Houses of Habanos—throughout the world;

• has estimated annual sales of around US $200 million; and

• is selling in 179 countries. As may be imagined, the brands and exclusive exploitation of the Cuban tobacco denominations of origin are our main assets, whose worth is calculated at billions of dollars. As you know, Geographical indications are objectively recognized in the identification of certain products coming from a region, city or country where there are certain natural and human factors which make them different from others, but those products finally reach the market identified by a trademark. That is, the geographical indications and trademarks reach the market together, through a product which promotes the coincidence of both.

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Now, I will present our experience in managing the trademarks and appellations of origin of Cuban cigars, with regard to creating a single product identity.

II. THE EXPERIE�CE OF CUBA� CIGAR TRADEMARKS A�D

GEOGRAPHICAL I�DICATIO�S

2.1 Cuban tobacco appellations of origin

The origin of Habanos can be traced back to 1492, when Christopher Columbus arrived on the shores of the large island of Cuba. 1492 is certainly a celebrated year in World History, but particularly for us, the Great Discovery was the Habano. Habanos, at that time, consisted on tobacco leaves roughly rolled into a shape and the Indians called it “Cohiba”. These cigars were smoked by the natives; being the “Cohibas” the ancestors of the Habanos.

Why Habanos’ quality?

The quality of the Habano comes from a combination of four factors. The characteristic of the soil is one of these factors. It plays a key role in the differentiation of this product.

The varieties in the kinds of Cuban black tobacco are others. It is very important in the differentiation of the Habano.

Other and a very important element is the climate, which is a result of Cuba’s geographical location. Climatic conditions also influence in the cigar-manufacturing process. Many people even say that the Habanos you smoke in Cuba taste different from the ones you smoke elsewhere. The last factor is the know-how of our farmers and cigar-makers, with the latter creating veritable masterpieces.

It has been proved that, when one of these factors is missing, it’s impossible to make a Habano.

Five different types of leaves are required to make a Habano:

The long filler: the inner part, which it is a blend of three leaves with three different characteristics: Ligero: for strength and flavour Seco: for aroma Volado: for good combustion The binder: this leaf secures and wraps the long filler leaves. Long filler and binder together form the “Bunche”.

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The wrapper: this leaf dresses the Habano and determines its appearance.

2.1.1 Measures to protect the prestige of the cigar coming from Cuba

In view of the recognized prestige of the tobacco coming from Cuba, in the early of XIX Century, the international tobacco market began to be invaded by different kinds of products that used names of Cuban origin in one way or another.

At the beginning, the geographical name “Habana” was acknowledged internationally as identifying the origin of the best cigars in the world. It is said that the origin of its use is linked to the port of Havana, from which the prestigious cigars were shipped. Therefore, ever and since the last century, Cuban cigar-makers have included the word “Habana” in the design and advertising of all their trademarks, so that the origin of the well-known cigars in the world would be recognized. For its part, the word “Habano”—the term used for the very best cigars made in Cuba—stemming from “Habana.” It began to be used in the Spanish-speaking countries in the 1920s. Now, the term “Habano” is an example of a social or historic appellation of origin, for it has achieved recognition on its own merits, rather than as the name of a region, locality or country. Early in the 20th century, Cuban authorities—aware of the danger— they began taking measures to protect this product. They include the following: � the creation of the National Warranty Seal of Origin, in 1912, to protect the

product’s Cuban origin; � the creation of the National Commission of Advertising and the Defense of

Habano Cigars, in 1927; � the signing of bilateral agreements with several countries to protect our

appellations, among them, those signed with France and Germany—which are still in force—and especially important;

� the creation of the Revista Tabacalera Habano (Habano Cigar Magazine), in 1935; in addition to containing the name “Habano” in its title, this publication has always used this term when referring to Cuban cigars; and

� the protection of 18 appellations of origin—including Cuba, Habana, Habanos, Vuelta Abajo, San Luis, San Juan y Martínez, Vuelta Arriba, Remedios, El Corojo and Cuchillas de Barbacoa, according to the Lisbon Agreement.

The Cuba’s decision for signing the Lisbon Agreement was a key for the protection of our intangible assets, because, even though the Agreement has a limited operating range, being a signatory of it implies respect and recognition, even, in non-member countries. Since the above was proved insufficient, a legal offensive to protect our products’ appellations of origin begun in 1981. Lawsuits were brought to Europe, our main

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market, because many infringing products were sold there. Now, we are bringing suits in other continents, as well. We concentrate on the well-known appellations of origin (Cuba, Habanos, Habana and Vuelta Abajo).

The first lawsuit we brought was in France, on February 17, 1981. It was against the Neos Handzame Company, from Belgium, due to the sales of Cubanitos trademark cigars in France.

We have also brought other lawsuits in Belgium, France, Germany and Spain. The most important ones were the suits we won against Gloria de Cuba and Wilde Havana trademarks. The latter had the largest sales on the non premium market.We also obtained favorable decisions in France, with courts ordering Aramis to withdraw its Havana trademark of perfume as well as another company that was using in perfume the denomination Cuba. The protection of the term Habanos, as Appellation of Origin, Trademark or Certification Trademark is the following one:

As Appellation of

Origin

As a trademark As a certification

trademark

Registrations 26 countries ( 25 members of Lisbon + Dominican Rep.)

35

Applications 29 ( 27 UE + Uruguay + Ecuador)

27 (Members OAMI) 2 ( USA + Canada)

Total 55 62 2

2.1.2 Marketing Strategy Linked to the Protection of Appellations of Origin

Along with the lawsuits, a marketing strategy was drawn up in the ’80s for supporting and complementing our efforts to obtain legal protection.

Our first decision was to establish our communications strategies based on the Habano appellation of origin, the reasons are as follows: � it was a unique product; � the Habano denomination of origin had to be protected against the danger of

becoming a generic term; and, � because it was a rather all-encompassing term, it was being applied to all of the

cigars made in Cuba. From the communications point of view and as one more steps along the path toward consolidating the corporate image of the product, in 1991 it was decided to unify the various versions of the logo and design for Habano that existed in other languages and to use just one: Habanos. Thus, from then on, Habanos logo has the same image all over the world. This meant to make two changes at the same time. One was to eliminate the word “cigar”; the other was to use the Spanish term “Habanos.” The transition from the translation to the Spanish term was to be made over a period of up to ten years.

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Since that period, we have established a unique corporate image of our Appellation of Origin Habanos: The Smoke image. In 1993, we created a stick with the Habanos Appellation of Origin in order to include it in all the packaging of our products. At the end of this year 2007 it will be create the Consejo Regulator of the Habanos Appellation of Origin and the other Cuban Tobacco Appellations of Origin, which will agglutinate all the physical and juridical peoples that are part of the agricultural and industrial chain of the Habanos, in order to developing even more the this appellation of origin.

2.2 Cuban Cigar Trademarks

The first Cuba cigar private factory was established in 1796. Very soon the quantity of small workshops for making cigars increased. In the 1830-40’s these small factories became prosperous workshops, which were frequently visited by agents and traders of New York, Philadelphia, London, Paris, Hamburg, among others, requesting large quantities of the famous Habano. The end of the Spanish Monopoly propitiated a boom in the cigar business. Being the property of individuals, the workshops started to diversify their offers, trying to please the large demand for Cuban cigars. This period marks the origin of the first Habano trademark: “Hijas de Cabañas & Carvajal”.

2.2.1 Trademark classifications

According to the period of creation, we can classify our trademarks in two groups: Pre-Revolution trademarks: Montecristo, Partagás, Romeo y Julieta, H.Upmann, Por Larrañaga, Hoyo de Monterrey, etc. Post-Revolution trademarks: Cohiba, Cuaba, Trinidad, Vegas Robaina, San Cristóbal de La Habana, etc. According to the importance in the market, for several years, we have classified the 32 trademarks that we sell in that moment—keeping in mind how well known they are and their market presence—as follows: Global trademarks. This group of trademarks includes the ones that are present all over the world. They are Cohiba, Montecristo, Romeo y Julieta, Partagás, Hoyo de Monterrey, H.Upmann and José L. Piedra. Multilocal trademarks. These trademarks you may find them in most of countries. They are: Bolivar, Fonseca, Guantanamera, H. Upmann, Punch, Vegas Robaina and Quintero.

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Local trademarks. These trademarks are found in just a few countries. They include Por Larrañaga, Cabañas, Belinda, Sancho Panza, Los Status De Luxe, Troya, La Gloria Cubana, J. Cano, Quai D’Orsay, Juan Lopez, Rafael González, Vegueros, Diplomáticos, Ramón Allones, San Luis Rey and Gispert. �iche trademarks. These are trademarks that were created recently and they were given a special treatment, for allowing us to become them well known trademarks. We include in this group Trinidad, which is a name of a Cuban city and UNESCO has declared thereof as a part of world heritage; Cuaba, is the name of a Cuban tree that catches fire easily and it was used by the Cuban Indians for lighting their pipes (cojibas or cohibas); and San Cristóbal de La Habana, which bears our capital’s first name. Bearing in mind that we are talking about a large number (32) of trademarks, our best resources are used to invest mainly in promoting those that are in the global and niche groups. The trademarks include in the multilocal and local groups are promote by our distributors. All the above mentioned Habanos trademarks are made with tobacco leaf of Vuelta Abajo appellation of origin, the best in the world. These trademarks are considered as premium cigar trademarks.

2.2.2The Defense of Cuban Cigar Trademarks

Taking into account the notoriety of our brands there is in the market much kind of infringements. Infringements come in the form of both registration requests and use in certain countries. In both cases, we find trademarks that are the same or similar to ours, either phonetically or in terms of image. Among all our trademarks, Cohiba although it is the most well-known trademark of cigars in the world, it is, without any doubt, the most frequently attacked. Many courts and patent offices have recognized that this trademark is well known, and, in many cases, they have declared it as a renown trademark.. For example:

Similar Words

The request filed in the Dominican Republic to protect the name “Cojimar” in Class 34 and “Chibas” in class 25 in Spain are an example of a request to register a word similar to “Cohiba.”

Similar Designs

There are many examples of requesting for or the uses of the design of the Cohiba trademark for other appellations, for example, the use of the word Espléndidos, for a German restaurant, which we finally came to an agreement. Cohiba is a cigar trademark in which most of companies try to register or use in all kinds of products and services.

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Foreign courts (in Spain, France, Dominican Republic, Mexico and Taiwan…) have recognized that COHIBA is a well known trademark. But, the main Decision was the judgment of the Southern District Court of New York on March 6, 2004, because COHIBA was recognized as a well known trademark in the United States even when it never was sold in that market because of blockade regulations. Another infringement that it has become quite common in some markets in recent years is the marketing of counterfeit products.

The most import thing to take into consideration in this kind of infringement is that when somebody uses a trademark linked with an appellation of origin, it is also counterfeiting the appellation of origin.

III. A QUESTIO� AS CO�CLUSIO�.

Just to finish, I would like to talk about Who Influences to Whom? Does the

Trademark Influence the Geographical Indication, or vice versa? I think that, generally, geographical indications influence trademarks, so that the creation of a trademark linked to a geographical indication gives the trademark great probability of success. We have examples of cigar trademarks that attained world fame linked to the Habano appellation of origin and whose fame declined when they change the origin. The case would be different if the trademark was born outside the area protected by the geographical indication—or even in a group of products different from those protected by the geographical indications—and then were added to the products protected by it. I should emphasize that trademarks which are related to geographical indications may be considered privileged, especially in the case of appellations of origin that are internationally known. Naturally, when I say that the trademark is largely boosted by the geographical indication, this is not absolute, because we cannot forget the role that marketing plays in the birth of a new trademark. If a trademark that is protected by a geographical indication is launched on the market without a good marketing strategy, it is doomed to failure. We have examples of this, too: Caney (named for one of the typical houses of Cuban Indians) Siboney (named for one of the three Cuban tribes of Indians and also for a famous song written by the Cuban composer Ernesto Lecuona) For certain strategic reasons, the names of these two trademarks didn’t stick in clients’ minds; as a result, they are no longer sold. So, according to our experience, these kind of products with a connection between Trademarks and Geographical Indications, should have very linked both strategies: It means, the Trademark strategy and the Geographical Indication strategy.

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That is the reason why, from the point of view of communication, we will continue in two ways: (1) to maintain our institutional campaigns (dedicated only to the Appellation of Origin Habanos) and (2) advertising our trademarks including the Appellation of Origin Habanos’ stick. So, when we communicate trademarks we also communicate the Habanos Appellation of Origin and the same in the contrary way. On the other hand, as I already said, we always use the same logo of our Habanos Appellation of Origin in all of our packaging, because the product is the most important advertising.

Adargelio Garrido de La Grana 22 & 23 of November 2007 Agadir, Marruecos

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Exhibit O: Tatuaje Record at USPTO Website

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Typed Drawing

United States Patent and Trademark Office

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Trademarks > Trademark Electronic Search System (TESS)

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Logout

Word Mark TATUAJE

Translations The foreign wording in the mark translates into English as "TATTOO".

Goods and Services

IC 034. US 002 008 009 017. G & S: Cigars. FIRST USE: 20030527. FIRST USE IN COMMERCE: 20030527

Mark Drawing Code (1) TYPED DRAWING

Serial Number 78262622

Filing Date June 15, 2003

Current Filing Basis

1A

Original Filing Basis

1A

Published for Opposition

February 3, 2004

Registration Number

2836665

Registration Date April 27, 2004

Owner (REGISTRANT) Johnson, Peter Hassell INDIVIDUAL UNITED STATES 2169 Stanley Hills Drive Los Angeles CALIFORNIA 90046

(LAST LISTED OWNER) TATUAJE CIGARS, INC. CORPORATION CALIFORNIA 2169 STANLEY HILLS DRIVE LOS ANGELES CALIFORNIA 90046

Assignment Recorded

ASSIGNMENT RECORDED

Type of Mark TRADEMARK

Register PRINCIPAL

Live/Dead Indicator LIVE

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Exhbit P: Tatuaje Specimen at USPTO

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TDR Home

Document Description: Specimens Mail / Create Date: 15-Jun-2003

Previous Page Next PageNext Page You are currently on page of 2 2

This document may be displayed as a PDF file containing images without text. You may view online or save the entire document by clicking on the file download icon in the upper right corner of this page. [required PDF viewer] FAQ: Are you seeing only the first page of this PDF document? If you need help:

� General trademark information: Please e-mail [email protected], or telephone either 571-272-9250 or 1-800-786-9199.

� Technical help: For instructions on how to use TDR, or help in resolving technical glitches, please e-mail [email protected]. If outside of the normal business hours of the USPTO, please e-mail Electronic Business Support, or call 1-800-786-9199.

� Questions about USPTO programs: Please e-mail USPTO Contact Center (UCC).

NOTE: Within any e-mail, please include your telephone number so we can talk to you directly, if necessary. Also, include the relevant serial number or registration number, if existing.

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Exhibit Q: Tatuaje Application at USPTO

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Document Description: Application Mail / Create Date: 15-Jun-2003

Previous PagePrevious Page Next Page You are currently on page of 1 3

Trademark/Service Mark Application, Principal Register, with Declaration

Serial Number: 78262622 Filing Date: 06/15/2003

The table below presents the data as entered.

PTO Form 1478 (Rev 4/2000)

OMB Control #0651-0009 (Exp. 08/31/2004)

Input Field Entered

MARK TATUAJE

OWNER

NAME Johnson, Peter, Hassell

INTERNAL ADDRESS Unit # 204

STREET 1025 North Kings Road

CITY West Hollywood

STATE CA

ZIP/POSTAL CODE 90069

COUNTRY USA

PHONE 310-365-3842

FAX 323-650-9163

EMAIL [email protected]

AUTHORIZED EMAIL COMMUNICATION Yes

LEGAL ENTITY

TYPE INDIVIDUAL

COUNTRY OF CITIZENSHIP United States

CORRESPONDENCE

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NAME Johnson, Peter, Hassell

FIRM NAME DBA Havana Cellars

INTERNAL ADDRESS Unit # 204

STREET 1025 North Kings Road

CITY West Hollywood

STATE CA

ZIP/POSTAL CODE 90069

COUNTRY USA

EMAIL [email protected]

AUTHORIZED EMAIL COMMUNICATION Yes

GOODS AND/OR SERVICES

DESCRIPTION TEXT Cigars

FILING BASIS Section 1(a)

FIRST USE ANYWHERE DATE 05/27/2003

FIRST USE IN COMMERCE DATE 05/27/2003

SPECIMEN FILE NAME(S)\\ticrs\EXPORT5\IMAGEOUT5\782\626\78262622\xml1\APP0002.JPG

SPECIMEN DESCRIPTION Tatuaje Cigar box lid and cigar band.

ADDITIONAL STATEMENTS

TRANSLATIONThe foreign wording in the mark translates into English as Tattoo.

SIGNATURE INFORMATION

SIGNATURE /peterhjohnson/

SIGNATURE DATE 06/15/2003

SIGNATORY NAME Peter Hassell Johnson

SIGNATORY POSITION Owner

PAYMENT

NUMBER OF CLASSES 1

NUMBER OF CLASSES PAID 1

SUBTOTAL AMOUNT 335

TOTAL AMOUNT 335

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RAM SALE NUMBER 548

RAM ACCOUNTING DATE 06/16/2003

FILING INFORMATION

SUBMIT DATE Sun Jun 15 18:28:39 EDT 2003

TEAS STAMP

USPTO/BAS-663112153- 20030615182839079046 -78262622-200e27841c 4eadbc4847f6176cb4e2 f2e-CC-548-200306151 81333375426

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Trademark/Service Mark Application, Principal Register, with Declaration

Serial Number: 78262622 Filing Date: 06/15/2003

To the Commissioner for Trademarks:

MARK: TATUAJE The applicant, Peter, HassellJohnson, a citizen of United States, residing at Unit # 204, 1025 North Kings Road, West Hollywood, CA USA 90069, requests registration of the trademark/service mark shown on the drawing page in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended. The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists below the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. International Class : Cigars In International Class : the mark was first used at least as early as 05/27/2003, and first used in commerce at least as early as 05/27/2003, and is now in use in such commerce. The applicant is submitting or will submit one specimen for each class showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n) Tatuaje Cigar box lid and cigar band.. Specimen - 1 "The foreign wording in the mark translates into English as Tattoo." A fee payment in the amount of $335 will be submitted with the application, representing payment for 1 class(es).

Declaration The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm,

PTO Form 1478 (Rev 4/2000)

OMB Control #0651-0009 (Exp. 08/31/2004)

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TDR Home

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. Signature: /peterhjohnson/ Date: 06/15/2003 Signatory's Name: Peter Hassell Johnson Signatory's Position: Owner Mailing Address: Johnson, Peter, Hassell Unit # 204 1025 North Kings Road West Hollywood, CA 90069 RAM Sale Number: 548 RAM Accounting Date: 06/16/2003 Serial Number: 78262622 Internet Transmission Date: Sun Jun 15 18:28:39 EDT 2003 TEAS Stamp: USPTO/BAS-663112153-20030615182839079046-78262622-200e27841c4eadbc4847f6176cb4e2f2e-CC-548-20030615181333375426

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Exhibit T: Photo Image of Bottom of TATUAJE Cigar Box

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