101 V Room101 Opp

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

ESTTA292890 07/01/2009

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

Notice of Opposition Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information Name

BBK Tobacco & Foods, Inc.

Granted to Date of previous extension

07/11/2009

Address

3315 W. Buckeye Rd., Ste. B Phoenix, AZ 85009 UNITED STATES

Attorney information

Edward L. Earle HBI International Legal Department 3315 W. Buckeye Rd., Ste. B Phoenix, AZ 85009 UNITED STATES [email protected] Phone:602-955-6688

Applicant Information Application No

77620013

Publication date

05/12/2009

Opposition Filing Date

07/01/2009

Opposition Period Ends

07/11/2009

Applicant

THE 101 CORPORATION 137 North Larchmont Boulevard, Suite 123 Los Angeles, CA 90004 UNITED STATES

Goods/Services Affected by Opposition Class 034. All goods and services in the class are opposed, namely: Cigars, cigarettes, humidors, lighters not of precious metal, ashtrays not of precious metal; lighters and ashtrays of precious metal

Grounds for Opposition Deceptiveness

Trademark Act section 2(a)

False suggestion of a connection

Trademark Act section 2(a)

Priority and likelihood of confusion

Trademark Act section 2(d)

Mark Cited by Opposer as Basis for Opposition U.S. Registration No.

2899588

Application Date

05/20/2003

Registration Date

11/02/2004

Foreign Priority Date

NONE

Word Mark

101

Design Mark Description of Mark

NONE

Goods/Services

Class 034. First use: First Use: 2001/01/10 First Use In Commerce: 2001/01/10 cigarette rolling papers, smoking tobacco

Attachments

Notice of Opposition.pdf ( 8 pages )(54789 bytes )

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

Signature

/Edward L. Earle/

Name

Edward L. Earle

Date

07/01/2009

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

BBK Tobacco & Foods, Inc., Opposer,

Mark: ROOM101 Serial No. 77/620,013

v. Filed: November 21, 2008 The 101 Corporation, Applicant. ____________________________________

Published: May 12, 2009 Opposition No. ______________

Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451

NOTICE OF OPPOSITION

BBK Tobacco & Foods, Inc., a corporation, located and doing business at 3315 W. Buckeye Rd., Ste. B, Phoenix, AZ 85009 (“Opposer”) believes that it will be damaged by registration by The 101 Corporation, a corporation, located and doing business at 137 North Larchmont Boulevard, Suite 123, Los Angeles, CA 90004 (“Applicant”) for the mark ROOM101 shown in Application Serial No. 77/620,013 and hereby opposes same. As grounds for opposition, Opposer alleges: 1.

Applicant filed a trademark application assigned Application Serial No.

77/620,013 in the United States Patent and Trademark Office (“USPTO”) on November 21, 2008 (“Applicant’s Application”) to register the mark ROOM101 (“the Applicant’s Mark”) for use in connection with “cigars, cigarettes, humidors, lighters not of precious

metal, ashtrays not of precious metal, lighters and ashtrays of precious metal” (“Applicant’s Goods”). 2.

The Application filed by Applicant on November 21, 2008 (“Applicant’s

Filing Date”) is based on Applicant’s bona fide intention to use Applicant’s Mark with Applicant’s Goods at some point in the future. 3.

The Application for the Applicant’s Mark was published for opposition in

the Official Gazette on May 12, 2009. On May 12, 2009 the Opposer timely filed a request for a 30-day extension of time to oppose Applicant’s Application for Applicant’s Mark, which was granted until July 11, 2009. 4.

The Opposer is a well-known wholesaler/distributor of tobacco and other

tobacco products. The other tobacco products, include, but are not limited to, tobacco and tobacco accessories, namely cigarette rolling papers and cigarette smoking tobacco (“Opposer’s Goods”). Opposer’s Goods are offered for sale in a wide range of sizes, flavors, color and designs 5.

Opposer provides information about its tobacco products and other

tobacco related goods and services on the Internet on various websites. A sample of websites that are sponsored by Opposer that provide the aforementioned information, include but are not limited to, www.zensmoke.com, www.hbiinternational.com, www.rollingsupreme.com, www.juicyjays.com and www.alliedtobacco.com. Websites of

third

parties,

including

but

not

limited

to,

www.rollingpapers.net

and

www.rollingpaperwarehouse.com, also include information about Opposer’s goods and its other tobacco related goods (“Third Party Websites”).

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OPPOSER’S 101 REGISTERED TRADEMARK

6.

Opposer is the owner of U.S. Registration Number 2,899,588 for the mark

“101” (“Opposer’s Mark”) filed with the USPTO on May 20, 2003 (“Opposer’s Filing Date”) based on its current use of Opposer’s Mark in commerce. The first use date is listed as January 10, 2001 (“Opposer’s First Use Date”) and the first used in commerce date is listed as January 10, 2001 (“Opposer’s First Use in Commerce Date”). This registration is valid and subsisting and in full force and effect. A copy of Reg. No. 2,899,588 is enclosed herewith. 7.

Opposer has used Opposer’s Mark in association with Opposer’s Goods

in interstate commerce throughout the United States since at least as early as January 10, 2001 and the Opposer’s Mark is currently in use in interstate commerce with Opposer’s Goods. 8.

Opposer’s Filing Date, Opposer’s First Use Date and Opposer’s First Use

in Commerce Date for Opposer’s Mark are all earlier than Applicant’s Application Date. 9.

Priority is not an issue in this case because both the Opposer’s Filing Date

and the Opposer’s First Use Date for Opposer’s Mark precede Applicant’s Filing Date. 10.

Opposer has, at great expense, continuously engaged in the sale and

promotion of Opposer’s Goods under and in connection with Opposer’s Mark. 11.

Opposer, at great expense, extensively and continuously offered to the

public high quality goods and services under Opposer’s Mark. On account of such efforts and by virtue of the superiority of the goods and services under Opposer’s Mark, the public and trade have come to recognize Opposer’s Mark as suggestive of Opposer

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and the goods and services offered under Opposer’s Mark. Opposer’s Mark has earned a positive reputation for quality and reliability that has resulted in significant amounts of good will. 12.

The goods and services listed on Applicant’s Application are the same

and/or closely related to Opposer’s Goods. Clearly, where both marks are used in conjunction with similar and/or identical and complimentary goods, a substantial likelihood of confusion must therefore exist. 13.

The mark proposed for registration by Applicant, is confusingly similar in

sight, sound and commercial impression to Opposer’s Mark which has been used in interstate commerce prior to any use or application for trademark registration by Applicant. Furthermore, the goods and services listed under Applicant’s Application and the goods opposed herein are related, and would be promoted through the same channels of trade for sale to, and use by, the same category of purchasers. This would result in further confusion among the public and trade as to the origin of Applicant’s Goods. 14.

Opposer believes it will be damaged by the registration of Applicant’s

Mark in that a significant portion of the purchasing public and/or trade is likely to be confused, or mistakenly believe, that Applicant’s Goods offered under Applicant’s Mark originate from Opposer, or from the same source as the goods and services sold under Opposer’s Mark, or that such goods are sponsored by, endorsed by or affiliated with the source of the goods and services sold under Opposer’s Mark.

Such likelihood of

confusion would result both in lost sales to Opposer and in damage to the good will among the purchasing public and/or the trade that Opposer’s Mark is symbolic of. Persons familiar with Opposer’s Mark would be likely to buy Applicant’s Goods

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mistakenly thinking that they were goods produced or distributed by Opposer. Moreover, any defect, objection or fault found with Applicant’s Goods marketed under Applicant’s Mark would reflect upon and seriously injure the reputation which has been established for the goods and services sold under Opposer’s Mark. 15.

Allowing registration of Applicant’s Mark would result in damages to

Opposer. Registration would allow Applicant to profit from the efforts put forth solely by Opposer. 16.

Based upon the foregoing, the registration of the mark depicted in

Application Serial No. 77/620,013 on the Principal Register of the United States Patent and Trademark Office will cause injury and damage to Opposer. WHEREFORE, Opposer respectfully requests that registration of Applicant’s Mark, Application Serial No. 77/620,013, be denied and that this Opposition be sustained in favor of Opposer.

Dated: July 1, 2009

Respectfully Submitted, Edward L. Earle

By: s/Edward L. Earle/_________________ Attorney for Opposer HBI International Legal Department 3315 W. Buckeye Rd., Ste. B Phoenix, Arizona 85009 Telephone: (602) 955-6688 Facsimile: (602) 955-3330 Email: [email protected]

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Certificate of Service The undersigned hereby certifies that a copy of the foregoing Notice of Opposition has been served upon the Applicant’s Attorney / Correspondent on July 1, 2009 by depositing same in the United States Mail, US Mail postage prepaid, in an envelope addressed as follows: Lucy B. Arant, Esq. MITCHELL SILBERBERG & KNUPP LLP 11377 West Olympic Boulevard Los Angeles, CA 90064-1683

s/Edward L. Earle/ ____________________________________ Edward L. Earle Attorney for Opposer

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EXHBIT A

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