Opp Patron V. Padron
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: Filing date:
ESTTA286822 05/29/2009
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
Patron Spirits International AG
Granted to Date of previous extension
05/30/2009
Address
Spitalstrasse 5 Schaffhausen, 8200 SWITZERLAND
Party who filed Extension of time to oppose
Patrón Spirits International AG
Relationship to party who filed Extension of time to oppose
Opposer's name does not differ from that which was used to previously filed the request for extension of time to oppose. Opposer's name was, and is, Patrón Spirits International AG. However, upon entering its name into the appropriate filed in the automated form, Opposer received the following error message: "Inappropriate value in a field 'Name'. Only values with US-ASCII characters may be accepted." It appears that the automated form rejected Opposer's name because of the accent on the letter "o" in the word "Patrón." In order for the form accept its submission, Opposer had to omit the accent from the "o" in the term "Patrón", which omission accounts for the apparent difference in names.
Attorney information
Jessica C. Bromall Jeffer, Mangels, Butler & Marmaro LLP 1900 Avenue of the Stars, Seventh Floor Los Angeles, CA 90067 UNITED STATES [email protected]
Applicant Information Application No
77295772
Publication date
03/31/2009
Opposition Filing Date
05/29/2009
Opposition Period Ends
05/30/2009
Applicant
Piloto Cigars, Inc. 1575 Southwest 1st Street Miami, FL 33135 UNITED STATES
Goods/Services Affected by Opposition Class 030. All goods and services in the class are opposed, namely: Coffee
Applicant Information
Application No
77295773
Publication date
Opposition Filing Date
05/29/2009
Opposition Period Ends
Applicant
Piloto Cigars, Inc. 1575 Southwest 1st Street Miami, FL 33135 UNITED STATES
03/31/2009
Goods/Services Affected by Opposition Class 033. All goods and services in the class are opposed, namely: Rum
Grounds for Opposition Priority and likelihood of confusion
Trademark Act section 2(d)
Marks Cited by Opposer as Basis for Opposition U.S. Registration No.
1809473
Application Date
07/28/1992
Registration Date
12/07/1993
Foreign Priority Date
NONE
Word Mark
PATRON
Design Mark Description of Mark
NONE
Goods/Services
Class 033. First use: First Use: 1990/08/00 First Use In Commerce: 1990/08/00 tequila
U.S. Registration No.
3469828
Application Date
05/09/2006
Registration Date
07/15/2008
Foreign Priority Date
NONE
Word Mark
PATRON
Design Mark
Description of Mark
NONE
Goods/Services
Class 030. First use: First Use: 2007/09/28 First Use In Commerce: 2007/10/04 preparations made from flour, namely, cakes sold in retail channels of trade
U.S. Registration No.
1950491
Application Date
08/10/1994
Registration Date
01/23/1996
Foreign Priority Date
Word Mark
PATRON XO CAFE
NONE
Design Mark
Description of Mark
NONE
Goods/Services
Class 033. First use: First Use: 1994/05/01 First Use In Commerce: 1994/05/01 coffee liqueur with tequila
U.S. Application No.
78879559
Application Date
05/09/2006
Registration Date
NONE
Foreign Priority Date
NONE
Word Mark
PATRON
Design Mark
Description of Mark
NONE
Goods/Services
Class 030. First use: pastries; confectionery, namely candy, chocolate candies; sauces, namely chocolate dessert sauces; coffee
Attachments
78980243#TMSN.jpeg ( 1 page )( bytes ) 74559311#TMSN.gif ( 1 page )( bytes ) 78879559#TMSN.jpeg ( 1 page )( bytes ) Notice of Opposition.pdf ( 5 pages )(12794 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
/jessica c. bromall/
Name
Jessica C. Bromall
Date
05/29/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
PATRÓN SPIRITS INTERNATIONAL AG, Opposer,
Opposition No.: ___________________ Application Serial No.: 77/295,772 MARK: PADRÓN
v. PILOTO CIGARS, INC.,
Application Serial No.: 77/295,773 Mark: PADRÓN
Applicant.
Published for Opposition: March 31, 2009 Atty. Ref. No.: 57062-0130
Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313-1451
NOTICE OF OPPOSITION Opposer Patrón Spirits International AG, a Swiss company ("Opposer"), having the address of Spitalstrasse 5, 8200 Schaffhausen, Switzerland, believes that it will be damaged by the registration on the Principal Register of PADRÓN in connection with coffee in Int. Cl. 30 and rum in Int. Cl. 33. The mark PADRÓN is the subject of federal trademark application Serial Nos. 77/295,772 and 77/295,773, allegedly owned by Piloto Cigars, Inc. ("Applicant"), and Opposer hereby opposes the registrations thereof. As grounds for this Opposition, it is alleged that: 1.
Opposer has obtained the necessary extension of time in which to file this Notice
of Opposition. 2.
®
Opposer is the source of the well known PATRON brand of premium tequila.
Opposer has enjoyed tremendous success in selling, either directly or through its licensees,
6185293v1
®
PATRON tequila and related products, including coffee flavored liqueur and cakes, throughout ®
the United States. Opposer has continuously sold its successful PATRON tequila and related products in the United States since at least as early as August 1990. As a result, Opposer has common law rights in the PATRON trademark. 3.
In addition, Opposer owns several registrations for its PATRON mark. Opposer
is the owner of record of U.S. Reg. No. 1,809,473, issued on December 7, 1993 for the mark PATRON, as well as the business and goodwill connected therewith. The mark PATRON has been used in commerce in connection with “tequila” in Int. Cl. 33, as identified in aforementioned registration. Opposer’s registration is unrevoked and uncancelled. 4.
Opposer is also the owner of record of U.S. Reg. No. 3,469,828, issued on July
15, 2008, for the mark PATRON, as well as the business and goodwill connection therewith. The mark PATRON has been used in commerce in connection with “preparations made from flour, namely, cakes sold in retail channels of trade” in Int. Cl. 30, as identified in the aforementioned registration. 5.
Opposer is also the owner of record of U.S. Reg. No.1,950,491, issued on January
23, 1996, for the mark PATRON XO CAFÉ, as well as the business and goodwill connected therewith. The mark PATRON XO CAFÉ has been used in commerce in connection with “coffee liqueur with tequila” in Int. Cl., as identified in the aforementioned registration. Opposer’s registration is unrevoked and uncancelled. 6.
Opposer is the owner of record of U.S. Application Serial No. 78/879,559, filed
on May 9, 2006, for the mark PATRON for use in connection with “pastries; confectionery, namely candy, chocolate candies; sauces, namely chocolate dessert sauces; coffee” in Int. Cl. 30.
2 6185293v1
7.
On information and belief, Applicant is a Florida corporation having its principal
place of business at 1575 Southwest 1st Street, Miami, Florida 3313. 8.
On information and belief, Applicant is the owner of record of the intent-to-use
trademark application Serial No. 77/295,772 for registration of the mark PADRÓN for use in connection with “coffee” in Int. Cl. 30. 9.
On information and belief, Applicant is the owner of record of the intent-to-use
trademark application Serial No. 77/295,773, for registration of the mark PADRÓN for use in connection with “rum” in Int. Cl. 33. 10.
Since long prior to October 4, 2007, the filing date of Applicant's applications,
Opposer has widely advertised and promoted each of its marks identified above (collectively referred to herein, as the "PATRON Marks") in connection with its goods with the result that the PATRON Marks have become well known and associated with Opposer in the United States. 11.
The mark PADRÓN, the subject of Applicant’s foregoing applications
(“Applicant’s Mark”), so resembles PATRON as to be likely, when used in connection with the goods identified in those applications (“Applicant’s Goods”), as to cause confusion, or mistake, or deception. 12.
If Applicant is granted the registrations herein opposed, such registrations would
cause damage to Opposer. /// /// /// /// ///
3 6185293v1
WHEREFORE, in accordance with Section 13 of the Trademark Act (15 U.S.C. § 1063), Opposer prays that this Opposition be sustained and that application Serial No. 77/391,984 be refused. Respectfully submitted, Dated: May 29, 2009
/s/ Jessica C. Bromall Bernard R. Gans Jessica C. Bromall JEFFER, MANGELS, BUTLER & MARMARO LLP 1900 Avenue of the Stars, Seventh Floor Los Angeles, CA 90067 (310) 203-8080 E-mail: [email protected] Attorneys for Opposer Patrón Spirits International AG
4 6185293v1
CERTIFICATE OF SERVICE I hereby certify that one (1) copy of this document has been deposited with the United States Postal Service as First Class Mail, postage affixed, in an envelope addressed to the correspondent address of record, as follows: Mitchell H. Stabbe Dow Lohnew Pllc. 1200 New Hampshire Ave. NW Suite 800 Washington, DC 20036-6805
Date: May 29, 2009
JEFFER, MANGELS, BUTLER & MARMARO 1900 Avenue of the Stars, Seventh Floor Los Angeles, CA 90067 Phone: (310) 203-8080 Fax: (310) 203-0567 www.jmbm.com
______________________________________ Joel Drake
LLP
5 6185293v1
ESTTA286822 05/29/2009
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
Patron Spirits International AG
Granted to Date of previous extension
05/30/2009
Address
Spitalstrasse 5 Schaffhausen, 8200 SWITZERLAND
Party who filed Extension of time to oppose
Patrón Spirits International AG
Relationship to party who filed Extension of time to oppose
Opposer's name does not differ from that which was used to previously filed the request for extension of time to oppose. Opposer's name was, and is, Patrón Spirits International AG. However, upon entering its name into the appropriate filed in the automated form, Opposer received the following error message: "Inappropriate value in a field 'Name'. Only values with US-ASCII characters may be accepted." It appears that the automated form rejected Opposer's name because of the accent on the letter "o" in the word "Patrón." In order for the form accept its submission, Opposer had to omit the accent from the "o" in the term "Patrón", which omission accounts for the apparent difference in names.
Attorney information
Jessica C. Bromall Jeffer, Mangels, Butler & Marmaro LLP 1900 Avenue of the Stars, Seventh Floor Los Angeles, CA 90067 UNITED STATES [email protected]
Applicant Information Application No
77295772
Publication date
03/31/2009
Opposition Filing Date
05/29/2009
Opposition Period Ends
05/30/2009
Applicant
Piloto Cigars, Inc. 1575 Southwest 1st Street Miami, FL 33135 UNITED STATES
Goods/Services Affected by Opposition Class 030. All goods and services in the class are opposed, namely: Coffee
Applicant Information
Application No
77295773
Publication date
Opposition Filing Date
05/29/2009
Opposition Period Ends
Applicant
Piloto Cigars, Inc. 1575 Southwest 1st Street Miami, FL 33135 UNITED STATES
03/31/2009
Goods/Services Affected by Opposition Class 033. All goods and services in the class are opposed, namely: Rum
Grounds for Opposition Priority and likelihood of confusion
Trademark Act section 2(d)
Marks Cited by Opposer as Basis for Opposition U.S. Registration No.
1809473
Application Date
07/28/1992
Registration Date
12/07/1993
Foreign Priority Date
NONE
Word Mark
PATRON
Design Mark Description of Mark
NONE
Goods/Services
Class 033. First use: First Use: 1990/08/00 First Use In Commerce: 1990/08/00 tequila
U.S. Registration No.
3469828
Application Date
05/09/2006
Registration Date
07/15/2008
Foreign Priority Date
NONE
Word Mark
PATRON
Design Mark
Description of Mark
NONE
Goods/Services
Class 030. First use: First Use: 2007/09/28 First Use In Commerce: 2007/10/04 preparations made from flour, namely, cakes sold in retail channels of trade
U.S. Registration No.
1950491
Application Date
08/10/1994
Registration Date
01/23/1996
Foreign Priority Date
Word Mark
PATRON XO CAFE
NONE
Design Mark
Description of Mark
NONE
Goods/Services
Class 033. First use: First Use: 1994/05/01 First Use In Commerce: 1994/05/01 coffee liqueur with tequila
U.S. Application No.
78879559
Application Date
05/09/2006
Registration Date
NONE
Foreign Priority Date
NONE
Word Mark
PATRON
Design Mark
Description of Mark
NONE
Goods/Services
Class 030. First use: pastries; confectionery, namely candy, chocolate candies; sauces, namely chocolate dessert sauces; coffee
Attachments
78980243#TMSN.jpeg ( 1 page )( bytes ) 74559311#TMSN.gif ( 1 page )( bytes ) 78879559#TMSN.jpeg ( 1 page )( bytes ) Notice of Opposition.pdf ( 5 pages )(12794 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
/jessica c. bromall/
Name
Jessica C. Bromall
Date
05/29/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
PATRÓN SPIRITS INTERNATIONAL AG, Opposer,
Opposition No.: ___________________ Application Serial No.: 77/295,772 MARK: PADRÓN
v. PILOTO CIGARS, INC.,
Application Serial No.: 77/295,773 Mark: PADRÓN
Applicant.
Published for Opposition: March 31, 2009 Atty. Ref. No.: 57062-0130
Commissioner for Trademarks P.O. Box 1451 Alexandria, Virginia 22313-1451
NOTICE OF OPPOSITION Opposer Patrón Spirits International AG, a Swiss company ("Opposer"), having the address of Spitalstrasse 5, 8200 Schaffhausen, Switzerland, believes that it will be damaged by the registration on the Principal Register of PADRÓN in connection with coffee in Int. Cl. 30 and rum in Int. Cl. 33. The mark PADRÓN is the subject of federal trademark application Serial Nos. 77/295,772 and 77/295,773, allegedly owned by Piloto Cigars, Inc. ("Applicant"), and Opposer hereby opposes the registrations thereof. As grounds for this Opposition, it is alleged that: 1.
Opposer has obtained the necessary extension of time in which to file this Notice
of Opposition. 2.
®
Opposer is the source of the well known PATRON brand of premium tequila.
Opposer has enjoyed tremendous success in selling, either directly or through its licensees,
6185293v1
®
PATRON tequila and related products, including coffee flavored liqueur and cakes, throughout ®
the United States. Opposer has continuously sold its successful PATRON tequila and related products in the United States since at least as early as August 1990. As a result, Opposer has common law rights in the PATRON trademark. 3.
In addition, Opposer owns several registrations for its PATRON mark. Opposer
is the owner of record of U.S. Reg. No. 1,809,473, issued on December 7, 1993 for the mark PATRON, as well as the business and goodwill connected therewith. The mark PATRON has been used in commerce in connection with “tequila” in Int. Cl. 33, as identified in aforementioned registration. Opposer’s registration is unrevoked and uncancelled. 4.
Opposer is also the owner of record of U.S. Reg. No. 3,469,828, issued on July
15, 2008, for the mark PATRON, as well as the business and goodwill connection therewith. The mark PATRON has been used in commerce in connection with “preparations made from flour, namely, cakes sold in retail channels of trade” in Int. Cl. 30, as identified in the aforementioned registration. 5.
Opposer is also the owner of record of U.S. Reg. No.1,950,491, issued on January
23, 1996, for the mark PATRON XO CAFÉ, as well as the business and goodwill connected therewith. The mark PATRON XO CAFÉ has been used in commerce in connection with “coffee liqueur with tequila” in Int. Cl., as identified in the aforementioned registration. Opposer’s registration is unrevoked and uncancelled. 6.
Opposer is the owner of record of U.S. Application Serial No. 78/879,559, filed
on May 9, 2006, for the mark PATRON for use in connection with “pastries; confectionery, namely candy, chocolate candies; sauces, namely chocolate dessert sauces; coffee” in Int. Cl. 30.
2 6185293v1
7.
On information and belief, Applicant is a Florida corporation having its principal
place of business at 1575 Southwest 1st Street, Miami, Florida 3313. 8.
On information and belief, Applicant is the owner of record of the intent-to-use
trademark application Serial No. 77/295,772 for registration of the mark PADRÓN for use in connection with “coffee” in Int. Cl. 30. 9.
On information and belief, Applicant is the owner of record of the intent-to-use
trademark application Serial No. 77/295,773, for registration of the mark PADRÓN for use in connection with “rum” in Int. Cl. 33. 10.
Since long prior to October 4, 2007, the filing date of Applicant's applications,
Opposer has widely advertised and promoted each of its marks identified above (collectively referred to herein, as the "PATRON Marks") in connection with its goods with the result that the PATRON Marks have become well known and associated with Opposer in the United States. 11.
The mark PADRÓN, the subject of Applicant’s foregoing applications
(“Applicant’s Mark”), so resembles PATRON as to be likely, when used in connection with the goods identified in those applications (“Applicant’s Goods”), as to cause confusion, or mistake, or deception. 12.
If Applicant is granted the registrations herein opposed, such registrations would
cause damage to Opposer. /// /// /// /// ///
3 6185293v1
WHEREFORE, in accordance with Section 13 of the Trademark Act (15 U.S.C. § 1063), Opposer prays that this Opposition be sustained and that application Serial No. 77/391,984 be refused. Respectfully submitted, Dated: May 29, 2009
/s/ Jessica C. Bromall Bernard R. Gans Jessica C. Bromall JEFFER, MANGELS, BUTLER & MARMARO LLP 1900 Avenue of the Stars, Seventh Floor Los Angeles, CA 90067 (310) 203-8080 E-mail: [email protected] Attorneys for Opposer Patrón Spirits International AG
4 6185293v1
CERTIFICATE OF SERVICE I hereby certify that one (1) copy of this document has been deposited with the United States Postal Service as First Class Mail, postage affixed, in an envelope addressed to the correspondent address of record, as follows: Mitchell H. Stabbe Dow Lohnew Pllc. 1200 New Hampshire Ave. NW Suite 800 Washington, DC 20036-6805
Date: May 29, 2009
JEFFER, MANGELS, BUTLER & MARMARO 1900 Avenue of the Stars, Seventh Floor Los Angeles, CA 90067 Phone: (310) 203-8080 Fax: (310) 203-0567 www.jmbm.com
______________________________________ Joel Drake
LLP
5 6185293v1
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