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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA324394
Filing date: 12/29/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 77540431
Applicant Cigars International, Inc.Applied for Mark CREMOSA CUBANACorrespondenceAddress
DAVID M. PERRYBLANK ROME LLPONE LOGAN SQUARE , 9TH FLOORPHILADELPHIA, PA 19103-6998UNITED STATES
Submission Applicant's Motion to SuspendAttachments Motion to Suspend - CREMOSA CUBANA.pdf ( 12 pages )(477719 bytes )Filer's Name David M. PerryFiler's e-mail perry@blankrome.com,oleksiuk@blankrome.comSignature /David M. Perry/ Date 12/29/2009
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117393.00101/21841068v.1
1
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Applicant: Cigars International, Inc.
Serial No.: 77/540,431
Mark: CREMOSA CUBANA
Class: 34
Filed: August 6, 2008
To: Commissioner for TrademarksP.O. Box 1451
Alexandria, VA 22313-1451 Attn: Tina Craven, Paralegal Specialist
MOTION FOR SUSPENSION OF APPEAL PROCEEDINGS
Pursuant to T.B.M.P. §§ 510 and 1213, Applicant Cigars
International, Inc. (“CI”), respectfully requests a suspension
of the January 25, 2009 due date for Applicant’s brief in theinstant appeal proceedings until the final determination of a
civil action.
Applicant is currently involved in litigation pending in
the United States District Court for the District of Oregon.
The case is captioned Specialty Cigars International, Inc. v.
Cigars International, Inc., 3:09-cv-00924-HU (D. Or.) (Filed
August 11, 2009). The complaint is attached hereto as
Exhibit A . In this case, Specialty Cigars International, Inc.
(“Speciality”) alleges, inter alia, that CI’s use of CREMOSA
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117393.00101/21841068v.1
2
CUBANA is infringing Specialty’s common law trademark, CREMOSA
CUBANOS. CI must answer the Complaint by January 25, 2010, and
an initial case management conference with the Court is now set
for January 28, 2010, at 9:30 A.M.
Prior to the issuance of the Board's decision in an ex
parte appeal, proceedings with respect to the appeal may be
suspended by the Board upon written request by applicant showing
good cause for the requested suspension. One example of a
situation in which the Board may suspend proceedings in an
appeal, at the request of the applicant, occurs when an
applicant is involved in a civil action that may be dispositive
of the issue(s) involved in the appeal. T.B.M.P. §§ 510.02(a)
and 1213; 37 C.F.R. §§ 2.117.
Given that the civil action referred to above may directly
affect CI’s rights in CREMOSA CUBANA, including potentially its
ability to register the mark, CI respectfully requests that the
Board suspend the instant proceeding until a final determination
of the civil action is made.
Once a final determination of the civil action is made or a
settlement in the civil action is reached, Applicant will
request that this Board proceeding be resumed.
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117393.00101/21841068v.1
3
CIGARS INTERNATIONAL, INC.
Dated: December 29, 2009 By: _______________________David M. Perry
John Paul OleksiukIts Attorneys
BLANK ROME LLPOne Logan SquarePhiladelphia, PA 19103-6998(215) 569-5767
CERTIFICATE OF MAILING
I hereby certify that this correspondence is addressed to the Trademark Trial
and Appeal Board, Hon. Commissioner for Trademarks, P.O. Box 1451, Alexandria,Virginia 22313-1451, and is being deposited via the Electronic System for TrademarkTrials and Appeals (ESTTA) on December 29, 2009.
_______________________________David M. Perry
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Exhibit A
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Kenneth R. Davis II, OSB No. 97113davisk@lanepowell.comMatthew A. Wilson, OSB No. 01102wilsoni@lanepowell.comLANE POWELL PC601 SW Second Avenue, Suite 2100
Portland, Oregon 97204-3158Telephone: 503.778.2100Facsimile: 503.778.2200
Attorneys for Plaintiff Specialty Cigars International, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
SPECIAL TY CIGARS INTERNATIONAL, CV No.INC.,
Plaintiff, COMPLAINT
v. (Federal Unfair Competition, Unfair andDeceptive Trade Practices, Common Law
CIGARS INTERNATIONAL, INC., Trademark Infringement and UnfairCompetition)
Defendant.
Plaintiff Specialty Cigars International, Inc. ("Specialty Cigars" or "Plaintiff') states the
following for its complaint against defendant Cigars International, Inc. ("Defendant"):
1. This is an action for federal unfair competition, unfair and deceptive trade
practices, common law trademark infringement, and unfair competition arising out of the
Trademark Act of 1946,15 U.S.C. § 1051 et seq. (2002), ("Lanham Act"); the Oregon Unlawful
Trade Practices Act, ORS 646.605-646.656; and the common law.
2. Defendant is marketing and selling cigars under trademarks and/or trade dress that
are confusingly similar to Specialty Cigars' trademarks and/or trade dress as set forth below.
Defendant's use of the trademarks and/or trade dress is likely to cause confusion, mistake, or
PAGE 1 - COMPLAINT
709168.0001/801412.1
LANE POWELL PC601 SW SECOND AVENU, SUITE 2100
PORTLAN, OREGON 97204-3158503778.2100 FAX 503.778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 1 of 8
Cv 09-924-HU
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deception as to the affiiation, connection, or association of Defendant with Specialty Cigars, or
as to the origin of Defendant's services, or as to its sponsorship or approval by Specialty Cigars.
THE PARTIES
3. Specialty Cigars is a corporation duly organized and existing under the laws of
Oregon, whose primary place of business is located within the state of Oregon.
4. Upon information and belief, defendant Cigars International, Inc. is a Delaware
corporation whose primary place of business is located in Bath, Pennsylvania.
JURISDICTION AND VENUE
5. This Court has subject matter jurisdiction over this action under the Lanham Act
pursuant to 15 U.S.C. § 112l and 28 U.S.C. § 1338, and supplemental jurisdiction over the state
claims pursuant to 28 U.S.C. § 1367.
6. This Court has personal jurisdiction over Defendant under 28 U.S.C. § 1331
because, on information and belief, Defendant has distributed or sold merchandise under the
infringing trademarks and/or trade dress in this state, has engaged in acts or omissions within this
state causing injur, has engaged in acts or omissions outside of this state causing injur within
this state, has manufactured or distributed products used or consumed within this state in the
ordinary course of trade, or has otherwise made or established contacts with this state sufficient
to permit the exercise of personal jurisdiction.
7. Venue is proper in this Court pursuant to 28 U.S.c. § 1391 because a substantial
portion of the events giving rise to the claims occurred in this District.
FACTUAL BACKGROUND
8. Specialty Cigars is a national supplier of premium cigars, cigar-related products,
and related services. Specialty Cigars services customers in all 50 states.
9. Specialty Cigars sells its products under a variety of different brands, which
appear on the cigars it sells in the form of a "band," or paper wrapper that is affixed to each
cigar. The bands feature distinctive trademarks, ~oloring, designs, and, in some cases, artwork,
PAGE 2 - COMPLAINT
709168.0001/801412.1
LANE POWELL PC601 SW SECOND AVENU, SUI 2100
PORTLAND, OREGON 97204-3158503.7782100 FAX 503.778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 2 of 8
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which are owned or licensed by Specialty Cigars. The brands also appear in Specialty Cigars'
cigar-related products, as well as its advertising and its website, located at
ww.specialtycigars.com .
10. Two of Specialty Cigars' popular brands are CREMOSA CUBANOS and ZELO
DE CUBA (collectively, the "Specialty Cigars Marks"). Both brands are strongly associated
with Specialty Cigars' premium quality cigars. Each brand is also displayed on the band of each
cigar sold with distinctive coloring, designs, and artwork as displayed below:
11. Defendant is currently selling or in the past has sold knock-off cigars under marks
or signage that are nearly identical, and thus confusingly similar, to one or more of Plaintiffs
marks. Defendant's infringing activities include the use of the marks CREMOSA CUBANA and
ZELO DE CUBA (collectively, the "Infringing Marks") with bands featuring nearly identical
coloring, design, and artwork used by Specialty Cigars as displayed below:
(Remainder of this page intentionally left blank. J
PAGE 3 - COMPLAINT
709168.0001/801412 I
L\ì'E POWELL PC601 SW SECOND AVENUE. SUITE 2100
PORTLAND. OREGON 97204-.1158503.778 2 i 00 FAX 503.778 2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 3 of 8
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Plaintiffs CREMOSA CUBANOS cigar Defendant's CREMOSA CUBANA cigar:
Plaintiffs ZELO DE CUBA cigar: Defendant's ZELO DE CUBA cigar:
12. Defendant's goods sold under the Infringing Marks are displayed on Defendant's
website and/or other advertising that is intended to cause further confusion between them and
Specialty Cigars' own products, including false references to how these same products have been
priced much higher by third parties. In fact, the products are not the same.
l3. Defendant's activities are likely to cause confusion, mistake, and deception as to
the affliation, connection, or association of Defendant with Plaintitl~ and as to the origin,
sponsorship, or approval of Defendant's services or commercial activities.
14. By causing such a likelihood of confusion, mistake, and deception, Defendant is
inflicting irreparable harm to the goodwill symbolized by the Specialty Cigars Marks, for which
Specialty Cigars has no adequate remedy at law.
PAGE 4 - COMPLAINT
709168.00011801412 1
LAì'E POWELL PC601 SW SECOND AVENUE, SUITE 2100
PORTLAND, OREGON 97204-3158503.7782100 FAX 503778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 4 of 8
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FIRST CLAIM FOR RELIEF
(Federal Unfair Competition-I5 U.S.c. § 1125(a))
15. Plaintiff realleges each of the allegations set forth in paragraphs 1 through 14
above.
16. Defendant's infringement of the Specialty Cigars Marks constitutes a false
designation of origin, or a false or misleading description or representation of fact, which is
likely to cause confusion, or to cause mistake, or to deceive as to the affiiation, connection, or
association of Defendant with Specialty Cigars, or as to the origin of Defendant's services, or as
to the sponsorship or approval of Defendant's services by Specialty Cigars.
17. Upon information and belief, Defendant has intentionally and wilfully used the
Infringing Marks in disregard of Specialty Cigars' rights.
18. Specialty Cigars is being damaged by Defendant's use of the Infringing Marks,
and will continue to be damaged unless Defendant is restrained.
SECOND CLAIM FOR RELIEF
(Unfair and Deceptive Trade Practices-ORS 646.605-646.656)
19. Plaintiff realleges each of the allegations set forth in paragraphs 1 through 18
above.
20. Defendant has been and is passing off its goods as those of Specialty Cigars,
causing a likelihood of confusion or misunderstanding as to the source, sponsorship, or approval
of Defendant's goods, causing a likelihood of confusion as to Defendant's affiliation,
connection, or association with Specialty Cigars, and otherwise damaging to the public.
Defendant's conduct constitutes unfair and deceptive acts or practices in the course of a business,
trade, or commerce in violation of Oregon's Unlawfl Trade Practices Act, ORS 646.605 to
646.656 (2003).
PAGE 5 - COMPLAINT
709168.0001/801412.1
LANE POWELL PC601 SW SECOND AVENU, SUITE 2100
PORTLAN, OREGON 97204-3158503.7782100 FAX 503.7782200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 5 of 8
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21. Defendant's unauthorized use of confusingly similar imitations of the
Specialty Cigars Marks has caused and is likely to continue to cause substantial injur to the
public and to Specialty Cigars, and Specialty Cigars is entitled to injunctive relief and to recover
damages, costs, and reasonable attorneys' fees.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
22. Plaintiff realleges each of the allegations set forth in paragraphs 1 through 21
above.
23. Defendant's acts constitute common law trademark infringement and unfair
competition, and have created and wil continue to create a likelihood of confusion to the
irreparable injury of Specialty Cigars and the Specialty Cigars Marks unless restrained by this
Court, as Specialty Cigars has no adequate remedy at law for this injury.
24. On information and belief, Defendant acted with full knowledge of
Specialty Cigars' use of, and statutory and common law rights to, the Specialty Cigars Marks
and without regard to the likelihood of confusion of the public created by Defendant's activities.
25. Defendant's actions demonstrate an intentional, wilful, and malicious intent totrade on the goodwil associated with the Specialty Cigars Marks to the great and irreparable
injury of Specialty Cigars.
26. As a result of Defendant's acts, Specialty Cigars has been damaged in an amount
not as yet determined or ascertainable. At a minimum, however, Specialty Cigars is entitled to
injunctive relief, an accounting of Defendant's profits, damages, and costs. Further, in light of
the deliberately fraudulent and malicious use of confusingly similar imitations of the
Specialty Cigars Marks, and the need to deter Defendant from similar conduct in the future,
Specialty Cigars additionally is entitled to punitive damages.
PAGE 6 - COMPLAINT
709168.0001/801412.1
LANE POWELL PC601 SW SECOND AVENU, SUITE 2 I 00
PORTLAND, OREGON 97204-3158503778.2100 FAX: 503.7782200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 6 of 8
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PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for judgment as follows:
1. That Defendant and all of its agents, officers, employees, representatives,
successors, assigns, attorneys, and all other persons acting for, with, by, through, or under
authority from Defendant, or in concert or participation with Defendant, and each of them, be
preliminarily and permanently enjoined from:
a. using Plaintiffs marks, or any confusingly similar variations thereof, in
connection with Defendant's goods or services;
b. using any trademark, service mark, name, logo, design, or source
designation of any kind on or in connection with Defendant's goods or services
that is a copy, reproduction, colorable imitation, or simulation of, or confusingly
similar to, or in any way similar to the trademarks, service marks, names, or logos
of Plaintiff;
c. using any trademark, service mark, name, logo, design, or source
designation of any kind on or in connection with Defendant's goods or services
that is likely to cause confusion, mistake, deception, or public misunderstanding
that such goods or services are produced or provided by Plaintiff, or are sponsored
or authorized by Plaintiff or are in any way connected or related to Plaintiff;
d. using any trademark, service mark, name, logo, design, or source
designation of any kind on or in connection with Defendant's goods or services
that dilutes or is likely to dilute the distinctiveness of the trademarks, service
marks, names, or logos of Plaintiff; and
e. passing off, palming off, or assisting in passing off or palming off,
Defendant's goods or services as those of Plaintiff, or otherwise continuing any
and all acts of unfair competition as alleged in this Complaint.
PAGE 7 - COMPLAINT
709168.0001/801412.1
LANE POWELL PC601 SW SECOND A VENU, SUITE 2 I 00
PORTLAN, OREGON 97204-3 I 58503.7782100 FAX: 503.778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 7 of 8
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2. That Defendant be ordered to recall all products bearing the Infringing Marks, or
any other confusingly similar mark, which have been shipped by Defendant or under its
authority, to any customer, including, but not limited to, any wholesaler, distributor, retailer,
consignor, or marketer, and also to deliver to each customer a copy of this Cour's order as it
relates to said injunctive relief against Defendant.
3. That Defendant be ordered to deliver for impoundment and destruction all goods
or other materials bearing the Infringing Marks.
4. That the Cour order Defendant to abandon any and all U.S. trademark
applications for any mark that contains the words CREMOSA CUBANA and ZELO DE CUBA
or any confusingly similar variation thereof.
5. That Plaintiff be awarded damages in an amount yet to be determined.
6. That Defendant be compelled to account to Plaintiff for all profits derived by
Defendant's actions as alleged herein.
7. That Plaintiff be awarded damages for the injury to Plaintiffs reputation and
goodwil, and damages for the injur from Defendant's false designation of origin, in an amount
up to three times the actual damages sustained, pursuant to 15 U.S.C. § 1 1 17.8. That Plaintiff be awarded its reasonable attorneys' fees, disbursements, and costs
of this action pursuantto 15 U.S.C. § 1117.
9. That Plaintiff be awarded prejudgment interest.
10. That Plaintiff be awarded such other and fuher relief as this Cour deems just
and equitable.
DATED: August 11,2009
LANE PO~LL PC ~ ~BY~~o~o.97i13Matthew A. Wilson, OSB No. 01102Telephone: 503.778.2100
Attorneys for Plaintiff Specialty CigarsInternational, Inc.
PAGE 8 - COMPLAINT
LANE POWELL PC
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 8 of 8