Cimex Cubita Answer

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

Proceeding

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91189804

Party

Defendant Corporacion CIMEX, S.A.

Correspondence Address

DAVID B. GOLDSTEIN RABINOWITZ, BOUDIN, STANDARD, KRINSKY & 111 BROADWAY SUITE 1102 NEW YORK, NY 10006-1901

Submission

[email protected] Answer

Filer's Name

David B. Goldstein

Filer's e-mail

[email protected]

Signature

/David B. Goldstein/

Date

06/01/2009

Attachments

Cubita.RM Answer.pdf ( 4 pages )(23211 bytes )

ESTTA286995 06/01/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD __________________________________________ ) RUTA MAYA ROYALTY, LTD., ) ) Opposer, ) ) v. ) Opposition No. 91189804 ) Serial No. 77252382 CORPORACION CIMEX, S.A., ) ) Applicant. ) ) ANSWER AND AFFIRMATIVE DEFENSES Applicant CORPORACION CIMEX, S.A., (“Applicant”), by and through its undersigned counsel, hereby files this Answer and Affirmative Defenses to the Notice of Opposition (“Opposition”) of Opposer RUTA MAYA ROYALTY, LTD (“Opposer”), and in support thereof, alleges as follows: 1.

Applicant denies the allegations in the first and only (unnumbered) paragraph in

the Opposition, except admits that “[t]here is a likelihood of confusion between the mark which is being published and the opposer’s mark,” and Applicant further alleges that Applicant’s CUBITA Mark is senior to and has priority over Opposer’s junior mark. FIRST AFFIRMATIVE DEFENSE 2.

Opposer fails to state a claim upon which relief can be granted. SECOND AFFIRMATIVE DEFENSE

3.

Applicant has prior and superior rights in its CUBITA Mark over Opposer’s

junior CUBITA mark.

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THIRD AFFIRMATIVE DEFENSE 4.

Opposer’s identical CUBITA mark for coffee is likely to cause confusion with

Applicant’s CUBITA Mark for coffee, which has priority over Opposer’s junior mark. FOURTH AFFIRMATIVE DEFENSE 5.

The United States and Cuba are both parties to the General Inter-American

Convention for Trade Mark and Commercial Protection, 46 Stat. 2907 (“IAC”), which remains in force between Cuba and the United States as determined by the United States Department of State. 6.

Applicant’s CUBITA Mark for coffee is protected in Cuba in accordance with

Cuban law. 7.

Opposer is applying to register its junior CUBITA mark for coffee on the

Principal Register at the USPTO. 8.

Opposer’s identical CUBITA mark for coffee is an “interfering mark” with

respect to Applicant’s attempt to register its CUBITA Mark for coffee in the USPTO, within the meaning of Article 7 of the IAC. 9.

Opposer had knowledge of the existence and continuous use in Cuba of

Applicant’s CUBITA Mark for coffee prior to Opposer’s first use of or application for the CUBITA mark in the United States. 10.

Pursuant to Article 7 of the IAC, and sections 44(b), (h) of the Lanham Act, 15

U.S.C. § 1126(b), (h), Applicant has priority over Opposer to register the mark CUBITA in IC 30 for coffee in the United States. 11.

Applicant has complied with the requirements established by the domestic

legislation of the United States for registration of its CUBITA Mark, and Applicant is entitled to 2

registration of its CUBITA Mark in IC 30 for coffee. FIFTH AFFIRMATIVE DEFENSE 12.

Opposer has abandoned its CUBITA mark. SIXTH AFFIRMATIVE DEFENSE

13.

Opposer made a material misrepresentation of fact to the USPTO in its

application for the CUBITA mark, when it falsely declared that its CUBITA mark was in use in commerce as early as March 1, 1994. SEVENTH AFFIRMATIVE DEFENSE 14.

Opposer is barred by the doctrine of unclean hands. EIGHTH AFFIRMATIVE DEFENSE

15.

Opposer has no rights, priority or claims to rights or priority in its CUBITA mark,

because Opposer’s CUBITA mark for coffee does not come from Cuba, and is geographically deceptive and primarily geographically deceptively misdescriptive, pursuant to sections 2(a), (e)(3) of the Lanham Act, 15 U.S.C. § 1052(a), (e)(3). NINTH AFFIRMATIVE DEFENSE 16.

Applicant states that it intends to rely upon such other and further affirmative

defenses and any other defenses, at law or in equity, that may become available or apparent in the future based on further proceedings in this case or any other factual investigation and hereby reserves the right to amend its Answer to assert such defenses.

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PRAYER FOR RELIEF WHEREFORE, Applicant Corporacion CIMEX, S.A. prays that the Notice of Opposition be dismissed. Dated: New York, New York June 1, 2009 Respectfully submitted, /David B. Goldstein/ DAVID B. GOLDSTEIN RABINOWITZ, BOUDIN, STANDARD, KRINSKY & LIEBERMAN, P.C. 111 Broadway, Suite 1102 New York, New York 10006-1901 Tel: (212) 254-1111 Fax: (212) 674-4614 [email protected] Attorneys for Applicant Corporation CIMEX, S.A.

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