Chivas Opp

8/8/2019 Chivas Opp

1/14

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

ESTTA Tracking number: ESTTA379073

Filing date: 11/17/2010

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE 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 Chivas Holdings (IP) Limited

Entity Limited Company Citizenship United Kingdom

Address 111-113 Renfrew Road PaisleyRenfrewshire, PA34DYUNITED KINGDOM

Attorneyinformation

Louis S. EdererArnold & Porter LLP399 Park AvenueNew York, NY 10022UNITED [email protected] Phone:212-715-1000

Applicant Information

Application No 85047777 Publication date 10/26/2010

Opposition FilingDate

11/17/2010 OppositionPeriod Ends

11/25/2010

Applicant Cigars By Chivas Inc.58 S. DelaceyPasadena, CA 91105UNITED STATES

Goods/Services Affected by Opposition

Class 035.All goods and services in the class are opposed, namely: Retail store services featuring tobaccoproducts, cigars, lighters, humidors, and ashtrays

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)

Dilution Trademark Act section 43(c)

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

309456 Application Date 09/12/1933

Registration Date 01/16/1934 Foreign PriorityDate

NONE

Word Mark CHIVAS
http://estta.uspto.gov/http://estta.uspto.gov/

8/8/2019 Chivas Opp

2/14

Design Mark

Description ofMark

NONE

Goods/Services Class U049 (International Class 033). First use: First Use: 1801/00/00 First UseIn Commerce: 1801/00/00WHISKEY



Registration Date 02/14/2006 Foreign Priority

Date

NONE

Word Mark CHIVAS

Design Mark

Description ofMark

NONE

Goods/Services Class 033. First use: First Use: 1801/00/00 First Use In Commerce: 1801/00/00Potable distilled spirits




NONE

Word Mark CHIVAS REGAL

Design MarkDescription ofMark

NONE

Goods/Services Class U049 (International Class 033). First use: First Use: 1891/00/00 First UseIn Commerce: 1891/00/00WHISKY



8/8/2019 Chivas Opp

3/14


10/16/2003

Word Mark THIS IS THE CHIVAS LIFE

Design Mark

Description ofMark

NONE

Goods/Services Class 033. First use:Alcoholic beverages, namely, whisky, malt whisky, and whisky liqueurs




11/19/2003

Word Mark CHIVAS REGAL GOLD SIGNATURE

Design Mark

Description ofMark

NONE

Goods/Services Class 033. First use:Alcoholic beverages, namely, Scotch whisky and Scotch whisky based liqueurs




08/01/2007

Word Mark CHIVAS

Design Mark

Description of

Mark

The mark consists of the shape of a bottle along the words "CHIVAS",

"TREIBHIREAS", "BHO 1801" and "BUNAITEACHD", and the designsappearing on the bottle comprising a banner, scroll, staff and shield devicecontaining a crowned man mounted on a horse holding a sword.

Goods/Services Class 033. First use:Alcoholic beverages, namely, distilled spirits and liqueurs




NONE

8/8/2019 Chivas Opp

4/14

Word Mark CHIVAS REGAL BLENDED SCOTCH WHISKEY PRODUCE OF SCOTLANDFOUNDED 1801

Design Mark

Description ofMark

NONE

Goods/Services Class U049 (International Class 033). First use: First Use: 1951/06/00 First UseIn Commerce: 1951/06/00SCOTCH WHISKY




02/25/2009

Word Mark CHIVAS REGAL BLENDED SCOTCH WHISKEY AGED 12 YEARS

Design Mark

Description ofMark

The mark consists of the three-dimensional configuration of a fanciful bottledesign and labels. The bottle design has a bulging neck and the wording "ESTD1801" embossed on the bottle below the neck. The label features consists of agold and copper shield with a large brown outline with scalloped edges. Acrossthe top of the brown outline is the wording "CHIVAS BROS. LTD KEITHSCOTLAND". Across the front of the shield are two crossed silver swords. At thetop of the shield appears a coat of arms in blue and red with a black outline andwith white leaves surrounding it and with the wording "TREIBHIREAS

BUNAITEACHD" in black on a white scroll above the coat of arms and thewording "FOUNDED 1801" in black on a white scroll below the coat of arms.Below the coat of arms appears the wording "PRINCE OF WHISKIES" in black.Below the coat of arms and across the front of the shield are three banners. Thetop and middle banners are in red and black with gold outline with the wording"CHIVAS REGAL" in white on the top banner and "BLENDED SCOTCHWHISKEY" in gold on the middle banner. The bottom banner is in gold withsilver outline and with the wording "40% ALC./VOL. 700 ML" in black across theleft side of the banner, "BLENDED AND BOTTLED IN SCOTLAND BY CHIVASBROTHERS LTD", "DISTILLERS KEITH AB55 5BS SCOTLAND" in back acrossthe middle of the banner, and "40% VOL 40G.L. 70 CL E" in black across the

8/8/2019 Chivas Opp

5/14

right side of the banner. Between the top and middle banners appears an oval inred and black with gold outline and the wording "AGED 12 YEARS" in white.Between the middle and bottom banners appears the wording "PRODUCE OFSCOTLAND" in black." At the top bottle is a neck wrapper in red with a goldband. Inside the gold band is the wording "PREMIUM WHISKY" in gold and afanciful design of a lion in gold surrounded by a brown rectangle.

Goods/Services Class 033. First use:

Whisky; Whisky based drinks including whisky based alcoholic cocktails




05/18/2005


Design Mark

Description ofMark

NONE

Goods/Services Class 033. First use:ALCOHOLIC BEVERAGES, NAMELY DISTILLED SPIRITS; DISTILLEDALCOHOLIC BEVERAGES, NAMELY WHISKY, MALT WHISKY, WHISKYLIQUEURS; BEVERAGES MADE FROM OR CONTAINING WHISKY




05/18/2005


Design Mark

Description ofMark

NONE

Goods/Services Class 033. First use:ALCOHOLIC BEVERAGES, NAMELY DISTILLED SPIRITS; DISTILLED

8/8/2019 Chivas Opp

6/14

ALCOHOLIC BEVERAGES, NAMELY WHISKY, MALT WHISKY, WHISKYLIQUEURS; BEVERAGES MADE FROM OR CONTAINING WHISKY




01/23/2009

Word Mark CHIVAS REGAL BLENDED SCOTCH WHISKY AGED 12 YEARS PRODUCEOF SCOTLAND BLENDED AND BOTTLED IN SCOTLAND BY CHIVASBROTHERS LTD

Design Mark

Description ofMark

The mark consists of a gold and copper shield with a large brown outline withscalloped edges. Across the front of the shield are two crossed silver swords. Atthe top of the shield appears a coat of arms in blue and red with a black outlineand with white leaves surrounding it and with the wording "TREIBHIREASBUNAITEACHD" in brown on a white scroll above the coat of arms and thewording "FOUNDED 1801" in black on a white scroll below the coat of arms.Below the coat of arms appears the wording "PRINCE OF WHISKIES" in black.Below the coat of arms and across the front of the shield are three banners. Thetop and middle banners are in red and black with gold outline with the wording"CHIVAS REGAL" in white on the top banner and "BLENDED SCOTCHWHISKEY" in gold on the middle banner. The bottom banner is in gold with

silver outline and with the wording "40% ALC./VOL. 700 ML" in black across theleft side of the banner, "BLENDED AND BOTTLED IN SCOTLAND BY CHIVASBROTHERS LTD," "DISTILLERS KEITH AB55 5BS SCOTLAND" in back acrossthe middle of the banner, and "40% VOL 40G.L. 70 CL E" in black across theright side of the banner. Between the top and middle banners appears an oval inred and black with gold outline and the wording "AGED 12 YEARS" in white.Between the middle and bottom banners appears the wording "PRODUCE OFSCOTLAND" in black.

Goods/Services Class 020. First use:Display standsClass 033. First use:Alcoholic beverages except beers; whisky; prepared alcoholic cocktailscontaining whisky




07/14/2009


8/8/2019 Chivas Opp

7/14

Design Mark

Description ofMark

The mark consists of fanciful vines, two lions and bottle containing a shield withscalloped edges. Across the front of the shield are two crossed swords. At thetop of the shield appears a coat of arms with white leaves surrounding it andwith the wording "TREIBHIREAS BUNAITEACHD". Above the coat of armsappears the wording "FOUNDED 1801". Below the coat of arms appears thewording "PRINCE OF WHISKIES". Below the coat of arms and across the frontof the shield are four banners and an oval design. The top banner contains thewording "CHIVAS REGAL". The middle banner contains the wording "BLENDEDSCOTCH", and oval that reads "AGED 12 YEARS", and the third banner

containing the word "WHISKY". The bottom banner contains the wording "40%ALC./VOL. 700 ML", "BLENDED AND BOTTLED IN SCOTLAND BY CHIVASBROTHERS LTD", "DISTILLERS KEITH AB55 5BS SCOTLAND", and "40%VOL 40G.L. 70 CL E" and the wording "PRODUCE OF SCOTLAND".

Goods/Services Class 033. First use:Alcoholic beverages except beers; whisky; prepared alcoholic cocktailscontaining whisky

Attachments 71341525#TMSN.gif ( 1 page )( bytes )78373083#TMSN.jpeg ( 1 page )( bytes )79000216#TMSN.jpeg ( 1 page )( bytes )

79000560#TMSN.jpeg ( 1 page )( bytes )79045063#TMSN.jpeg ( 1 page )( bytes )71657112#TMSN.gif ( 1 page )( bytes )77698533#TMSN.jpeg ( 1 page )( bytes )79012477#TMSN.jpeg ( 1 page )( bytes )79012478#TMSN.jpeg ( 1 page )( bytes )79068688#TMSN.jpeg ( 1 page )( bytes )79072776#TMSN.jpeg ( 1 page )( bytes )Cigars by Chivas - Notice of Opposition.pdf ( 7 pages )(96370 bytes )

Certificate of Service

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

Signature /Louis S. Ederer/

Name Louis S. Ederer

Date 11/17/2010

8/8/2019 Chivas Opp

8/14

8/8/2019 Chivas Opp

9/14

8/8/2019 Chivas Opp

10/14

8/8/2019 Chivas Opp

11/14

8/8/2019 Chivas Opp

12/14

8/8/2019 Chivas Opp

13/14

8/8/2019 Chivas Opp

14/14

Chivas Opp

Documents

Transcript of Chivas Opp