Silk Dragon Opp

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

ESTTA Tracking number: ESTTA277973

Filing date: 04/14/2009

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 K. Hansotia & Co.

Granted to Dateof previousextension

04/15/2009

Address 3705 N.W. 115 AvenueMiami, FL 33178UNITED STATES

Attorneyinformation

Peter A. ChiabottiAkerman Senterfitt222 Lakeview Avenue Suite 400West Palm Beach, FL 33401-6147UNITED [email protected], [email protected] Phone:561-653-5000

Applicant Information

Application No 77506347 Publication date 12/16/2008

Opposition FilingDate

04/14/2009 OppositionPeriod Ends

04/15/2009

Applicant Maywood, Albert J7895 Ashbrook DrHaslett, MI 48840UNITED STATES

Goods/Services Affected by Opposition

Class 034. First Use: 2008/05/00 First Use In Commerce: 2008/06/02All goods and services in the class are opposed, namely: Cigar bands; Cigars; Tobacco; Tobacco,cigars and cigarettes

Grounds for Opposition

Priority and likelihood of confusion Trademark Act section 2(d)

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

3597255 Application Date 12/14/2007

Registration Date 03/31/2009 Foreign PriorityDate

NONE

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


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Design Mark

Description ofMark

NONE

Goods/Services Class 034. First use: First Use: 2006/11/00 First Use In Commerce: 2007/07/12

Cigars

U.S. ApplicationNo.


Registration Date NONE Foreign Priority

Date

NONE

Word Mark IMPERIAL DRAGON

Design Mark

Description ofMark

NONE

Goods/Services Class 034. First use:

Cigars

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE

Word Mark ROYAL DRAGON


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Design Mark

Description ofMark

NONE


Cigars

U.S. ApplicationNo.


Registration Date NONE Foreign Priority

Date

NONE

Word Mark RED DRAGON

Design Mark

Description ofMark

NONE


Cigars

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE

Word Mark DRAGON FIRE


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Design Mark

Description ofMark

NONE

Goods/Services Class 034. First use: First Use: 2006/03/05 First Use In Commerce: 2006/03/05

Cigars

Attachments 77352021#TMSN.jpeg ( 1 page )( bytes )

77351977#TMSN.jpeg ( 1 page )( bytes )77351990#TMSN.jpeg ( 1 page )( bytes )77351999#TMSN.jpeg ( 1 page )( bytes )77451704#TMSN.jpeg ( 1 page )( bytes )7473-149 Opp.pdf ( 9 pages )(181030 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 /Peter A. Chiabotti/

Name Peter A. Chiabotti

Date 04/14/2009


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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of U.S. Trademark Application Serial No.: 77/506,347Filed: June 24, 2008For the mark: Silk Dragon CigarsPublished in the Official Gazette: December 16, 2008

K. Hansotia & Co., Inc.,a corporation of Florida,

Opposerv.

Albert J. Maywood,an individual,

Applicant.

Opposition No.

NOTICE OF OPPOSITION

K. Hansotia & Co. Inc., a corporation of Florida, having a place of business at 3705

N.W. 115 Avenue Bay #5, Miami, Florida 33178 ( KHC or Opposer), believes it will be

damaged by the issuance of a trademark registration to Albert J. Maywood, an individual,

who has an address of 7895 Ashbrook Drive, Haslett, Michigan 48840 ( Applicant or

Maywood), for U.S. Trademark Application No. 77/506,347 for SILK DRAGON CIGARS

and hereby opposes registration under the provisions of 15 U.S.C. 1063 of the Trademark

Act of 1946, as amended (the Lanham Act). U.S. Trademark Application No. 77/506,347

published for opposition in the Official Gazette on December 16, 2008 and the Trademark

Trial and Appeal Board granted one Request for Extension of Time to Oppose, pursuant to

which the Notice of Opposition submission deadline now is April 15, 2009. Accordingly,

this Notice of Opposition is timely filed.

As grounds for the opposition, Opposer alleges that:

1. On June 24, 2008, Applicant filed U.S. Trademark Application No.

77/506,347 for SILK DRAGON CIGARS for cigar bands; cigars; tobacco; tobacco, cigars

and cigarettes under Section 1(a) of the Lanham Act in International Class 34 (the

Application) seeking to obtain registration on the Principal Register.


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Opposition No. _____________Application Serial No.: 77/506,347Notice of OppositionDocket: 7473-149Page 2 of 5

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2. Prior to Applicants stated May of 2008 first use date and prior to Applicantsstated June 2, 2008 first use in commerce date, KHC adopted and continuously, without

interruption, used its DRAGON trademark and its DRAGON FIRE trademark in connection

with cigars in interstate commerce by prominently featuring the trademarks on cigars (the

DRAGON Common Law Marks).

3. The DRAGON Common Law Marks, as used by KHC in connection with

cigars, are inherently distinctive, or in the alternative, the DRAGON Common Law Marks,

as used by KHC in connection with cigars, acquired distinctiveness prior to Applicantsstated May of 2008 first use date and prior to Applicants stated June 2, 2008 first use in

commerce date. Thus, the Opposer has priority of common law trademark rights in the

DRAGON Common Law Marks.

4. Opposer has obtained U.S. Trademark Registration No. 3,597,255 for

DRAGON for use in connection with cigars in International Class 34 (the DRAGON

Common Law Marks and U.S. Trademark Registration No. 3,597,255 collectively referred to

as the DRAGON Marks); the foregoing registration is valid, subsisting, and in full force

and effect. See Composite Exhibit A, enclosing current printouts of information from the

electronic database records of the USPTO showing the current status and title of U.S.

Trademark Registration No. 3,597,255 in accordance with 37 C.F.R. 2.122(d)(1).

5. Opposer also has multiple pending Applications for its family of DRAGON

marks, including the following family of marks:

A. U.S. Trademark Application No. 77/351,977 for IMPERIAL

DRAGON for use in connection with cigars in International Class 34, filed December 14,

2007 and having a Notice of Allowance mailed on April 7, 2009;

B. U.S. Trademark Application No. 77/351,990 for ROYAL DRAGON

for use in connection with cigars in International Class 34, filed December 14, 2007 and

having a Notice of Allowance mailed on April 7, 2009;

C. U.S. Trademark Application No. 77/351,999 for RED DRAGON for

use in connection with cigars in International Class 34, filed on December 14, 2007 and

having a Notice of Allowance mailed on April 7, 2009; and


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D. U.S. Trademark Application No. 77/451,704 for DRAGON FIRE foruse in connection with cigars in International Class 34, filed on April 18, 2008 (collectively,

the DRAGON Applications).

6. The DRAGON Marks have been displayed on Opposers products, and

displayed in promotional and advertising materials related thereto, in the United States. As a

consequence, the DRAGON Marks are widely recognized as an indicator of the source of

origin for Opposers goods.

7. The goods set forth in the Application are identical and related to those offeredby Opposer under the DRAGON Marks and the DRAGON Applications. Furthermore, on

information and belief, Applicants goods will be offered to a similar class of consumers who

purchase the goods in connection with which Opposer uses its DRAGON Marks and will be

offered through the same channels of trade.

8. The applied-for mark SILK DRAGON CIGARS is confusingly similar to the

Opposers DRAGON Marks and the DRAGON Applications in terms of its sight, sound,

meaning and overall commercial impression. As a result, it is likely to cause confusion,

mistake, and deception as to an affiliation, connection or association between Opposer and

Applicant, or as to the origin, sponsorship or approval of Applicants goods and other

commercial activities, all to Opposers detriment, thereby causing Opposer damage.

Potential customers are likely to believe that Applicants goods originate from, or are

sponsored or approved by, Opposer, when such is not the case.

9. Applicant is not affiliated with or connected in any way to Opposer and

Opposer has not consented to Applicants use of Opposers DRAGON Marks or the

DRAGON Applications.

10. If Applicant is granted the registration herein opposed, it would thereby obtain

aprima facie exclusive right to the use of the SILK DRAGON CIGARS mark, which would

be a further source of damage to Opposer.

11. WHEREFORE, Opposer believes that it will be damaged by the registration of

the mark SILK DRAGON CIGARS in the Application, and prays that this Opposition be

sustained, that Application Serial No. 77/506,347 be rejected and that the mark applied for

therein be refused registration on that basis.


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Authorization is given to charge $300.00 for the filing fee for this Opposition toDeposit Account No. 50-0951. Authorization is also given to charge any deficiencies, or

credit any overpayments, to Deposit Account No. 50-0951 throughout the pendency of this

Opposition.

Please direct all notices, pleadings and process regarding this matter to:

Peter A. Chiabotti, Esq.AKERMAN SENTERFITT

222 Lakeview Avenue, Suite 400

West Palm Beach, FL 33401-6183Main: 561.653.5000Fax: 561.659.6313

Respectfully submitted

AKERMAN SENTERFITT

Date: April 14, 2009 /Peter A. Chiabotti/Pablo Meles, Reg. No. 33,739Peter A. Chiabotti, Reg. No. 54,603

Mammen ("Roy") P. Zachariah, Jr.222 Lakeview Avenue, Suite 400West Palm Beach, FL 33401-6183Main: 561.653.5000Fax: 561.659.6313

Attorneys for Opposer


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CERTIFICATE OF SERVICE

I HEREBY CERTIFY that a true and complete copy of the foregoing Notice OfOpposition has been served on Albert J. Maywood by mailing said true and complete copyon the 14th of April, 2009, via First Class Mail, postage prepaid to:

Albert J. Maywood7895 Ashbrook DriveHaslett, MI 48840-8852

A courtesy true and complete copy of the foregoing Notice Of Opposition has beenserved on G. Sal Gani by mailing said true and complete copy on the 14th of April, 2009, viaFirst Class Mail, postage prepaid to:

G. Sal GaniG. Sal Gani PC1005 S Washington Ave.Lansing, MI 48910

/Mammen P. Zachariah/Mammen ("Roy") P. Zachariah, Jr.


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Composite Exhibit A


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Thank you for your request. Here are the latest results from the TARR web server.

This page was generated by the TARR system on 2009-04-14 15:18:05 ET

Serial Number: 77352021Assignment Information Trademark Document Retrieval

Registration Number:3597255

Mark

(words only): DRAGON

Standard Character claim: Yes

Current Status: Registered.

Date of Status: 2009-03-31

Filing Date: 2007-12-14

Transformed into a National Application: No

Registration Date: 2009-03-31

Register: Principal

Law Office Assigned: LAW OFFICE 109

If you are the applicant or applicant's attorney and have questions about this file, please contact the Trademark AssistanceCenter at [email protected]

Current Location: 650 -Publication And Issue Section

Date In Location: 2009-03-31

LAST APPLICANT(S)/OWNER(S) OF RECORD

1. K. Hansotia & Co., Inc.

Address:K. Hansotia & Co., Inc.

3705 N.W. 115 Avenue, Bay #5

Miami, FL 33178

United States

Legal Entity Type: Corporation

State or Country of Incorporation: Florida

GOODS AND/OR SERVICES

International Class: 034

Class Status: Active

Cigars

Basis: 1(a)

t Status Info http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=7

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First Use Date: 2006-11-00

First Use in Commerce Date: 2007-07-12

ADDITIONAL INFORMATION

(NOT AVAILABLE)

MADRID PROTOCOL INFORMATION

(NOT AVAILABLE)

PROSECUTION HISTORY

NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown near the top of this

page.

2009-03-31 - Registered - Principal Register

2009-01-13 - Published for opposition

2008-12-24 - Notice of publication

2008-12-10 - Law Office Publication Review Completed

2008-12-08 - Assigned To LIE

2008-12-03 - Approved for Pub - Principal Register (Initial exam)

2008-08-04 - Final refusal mailed

2008-08-03 - Final Refusal Written

2008-06-12 - Teas/Email Correspondence Entered

2008-06-12 - Communication received from applicant

2008-06-12 - TEAS Response to Office Action Received

2007-12-27 - Non-final action mailed

2007-12-26 - Non-Final Action Written

2007-12-21 - Assigned To Examiner

2007-12-19 - New Application Entered In Tram

ATTORNEY/CORRESPONDENT INFORMATION

Attorney of RecordPablo Meles

Correspondent

PABLO MELES

AKERMAN SENTERFITT

222 LAKEVIEW AVE 4TH FL

WEST PALM BEACH, FL 33401-6147

Phone Number: (561) 653-5000

Fax Number: (561) 659-6313

t Status Info http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=7

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Silk Dragon Opp

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Transcript of Silk Dragon Opp