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

ESTTA Tracking number: ESTTA464317

Filing date: 03/28/2012

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 M. Shanken Communications, Inc.

Granted to Dateof previousextension

03/28/2012

Address 387 Park Avenue SouthNew York, NY 10016UNITED STATES

Attorneyinformation

Darren B. CohenReed Smith, LLP599 Lexington AvenueNew York, NY 10022UNITED [email protected] Phone:(212) 549-0346

Applicant Information

Application No 85313872 Publication date 11/29/2011

Opposition FilingDate

03/28/2012 OppositionPeriod Ends

03/28/2012

Applicants Ariel GonzalezApartment 3H 366 Hewes StreetBrooklyn, NY 11211UNITED STATES

Carlos J. PlazaApartment 6B 375 Blake AveBrooklyn, NY 11211UNITED STATES

Goods/Services Affected by Opposition

Class 016.All goods and services in the class are opposed, namely: General feature magazines; Magazines

featuring fashion trends, luxury services and lifestyle advice; Magazines in the field of fashion

Grounds for Opposition

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.

2025421 Application Date 12/11/1995
http://estta.uspto.gov/http://estta.uspto.gov/


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Registration Date 12/24/1996 Foreign PriorityDate

NONE

Word Mark CIGAR AFICIONADO

Design Mark

Description ofMark

NONE

Goods/Services Class 016. First use: First Use: 1992/01/22 First Use In Commerce: 1992/08/25

publications, namely, magazines, books, pamphlets, newsletters, printed charts,journals and guides all on the subject of cigars




NONE


Design Mark

Description ofMark

NONE


Providing on-line magazines in the field of cigars




NONE


Design Mark

Description ofMark

NONE


magazines and books featuring the subject of cigars


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NONE


Design Mark

Description ofMark

NONE


computer services, namely, providing on-line magazines in the field of cigars

Attachments 77408935#TMSN.jpeg ( 1 page )( bytes )75075834#TMSN.gif ( 1 page )( bytes )75075835#TMSN.gif ( 1 page )( bytes )Notice of Opposition - AFICIONADO MAGAZINE.pdf ( 10 pages )(104286 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 /Darren B. Cohen/

Name Darren B. Cohen

Date 03/28/2012


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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

--------------------------------------------------------------------------------xM. Shanken Communications, Inc. :

:

Opposer, : Serial No. 85/313,872: Mark: AFICIONADO MAGAZINE

v. : Published: November 29, 2011:

Carlos J. Plaza and Ariel Gonzalez, : Opposition No. ____________

:Applicants. :

--------------------------------------------------------------------------------x

BOX TTAB - FEE

Commissioner for TrademarksP.O. Box 1451

Alexandria, VA 22313-14513

NOTICE OF OPPOSITION

1. Opposer, M. Shanken Communications, Inc. (hereinafter Opposer), a

corporation duly organized and existing under the laws of New York, and having a place of

business at 387 Park Avenue South, New York, New York 10016, believes that it is or will be

damaged by the registration of Application Serial No. 85/313,872 for the mark AFICIONADO

MAGAZINE and hereby opposes same pursuant to 15 U.S.C. 1052, 1063 and 1125(c).

2. On information and belief, Carlos J. Plaza and Ariel Gonzalez (hereinafter

Applicants), are United States citizens with addresses 375 Blake Avenue, Apartment 6B,

Brooklyn, New York 11211 and 366 Hewes Street, Apartment 3H, Brooklyn, New York 11211,

Carlos J. Plaza and Ariel Gonzalez, respectively.

As grounds for this opposition, Opposer alleges the following:


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3. On May 5, 2011, Applicants filed Application Serial No. 85/313,872 on an intent-

to-use basis under 15. U.S.C. 1051(b) to register the mark AFICIONADO MAGAZINE for use

on or in connection with General feature magazines; Magazines featuring fashion trends, luxury

services and lifestyle advice; Magazines in the field of fashion in International Class 16.

4. Opposer is the owner of the following trademark registrations in the U.S.

Patent and Trademark Office (USPTO) for the mark CIGAR AFICIONADO

(Opposers Mark), the registrations of which are valid and in full force and effect:

Trademark Reg. No. Goods/Services Registration DateCIGAR AFICIONADO 2,025,421 (Intl Class: 16) Publications, namely,

magazines, books, pamphlets,

newsletters, printed charts, journals andguides all on the subject of cigars

December 24, 1996

CIGAR AFICIONADO 3,614,669 (Int'l Class: 41) Providing on-linemagazines in the field of cigars

May 5, 2009

CIGAR AFICIONADO(Stylized)

2,054,780 (Int'l Class: 16) Magazines and booksfeaturing the subject of cigars

April 22, 1997

CIGAR AFICIONADO(Stylized)

2,131,128 (Int'l Class: 42) Computer services,namely, providing on-line magazines inthe field of cigars

January 20, 1998

Copies of the Certificates of Registration are attached hereto as Exhibit A and

incorporated herein.

5. Opposer has continuously used and continues to use Opposers Mark in

interstate commerce on or in connection with its products since at least as early as

January 1992.

6. The goods and services sold and rendered under Opposers Mark are

known by consumers, prospective consumers and throughout the publishing and related

multi-media industries as consistent, high-quality products and services.

7. Opposers Mark, through Opposers long and extensive use, has come to

exclusively identify the high quality products and services of Opposer and to distinguish


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them from products and services emanating from other publishers. As a result of

Opposers extensive advertising and marketing efforts and use for over 20 years,

Opposers Mark has become famous and represents goodwill of tremendous value to

Opposer.

8. Applicants Mark is confusingly similar to Opposers Mark.

9. The goods in Application Serial No. 85/313,872 are closely related to

Opposers goods and services.

10. Upon information and belief, Applicants goods intended to be sold under

Applicants Mark represent the same or highly similar subject matter and genre of

publication as that of Opposer under Opposers Mark, and will be aimed at the same

consumer base and targeted demographic as those of Opposer.

11. Opposers use and registration of Opposers Mark predates any priority

date that can validly be claimed by Applicants for Applicants Mark, including the filing

date of Application Serial No. 85/313,872.

12. If Applicants are permitted to use and register the subject mark for its

goods specified in the application herein opposed, confusion in trade resulting in damage

and injury to Opposer would result. Persons familiar with Opposers Mark would likely

confuse Applicants goods as being sold by or originating from Opposer, or as being in

some way associated with, connected with, sponsored by, licensed by, or otherwise

authorized by Opposer, all to the detriment of Opposer, unless this Opposition is

sustained. Any such confusion in trade would inevitably result in loss of sales to

Opposer. Furthermore, any defects, objections, or faults found with the goods sold by


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Applicants under Applicants Mark would adversely reflect upon and seriously injure the

reputation of Opposer by association.

13. In view of, without limitation, the similarity of the respective marks, similarity of

the class of purchasers and the close related nature of the goods and services offered and/or

intended to be sold or rendered by the respective parties, the mark in Application Serial No.

85/313,872 so resembles Opposers Mark as to be likely to cause confusion, or to cause mistake,

or to deceive as to the source of Applicants goods by suggesting that Applicants goods are

associated with or approved, endorsed, affiliated, authorized, or sponsored by Opposer.

14. In view of the fame of Opposers Mark, any use by Applicants of Applicants

Mark will dilute the distinctive nature of Opposer's Mark and is thus unlawful and actionable

under the Federal Anti-Dilution Statute enumerated in Section 43(c) of the Lanham Act, 15

U.S.C. 1125(c).

WHEREFORE, Opposer prays that Application Serial No. 85/313,872 be rejected, that

no registration be issued thereon to Applicants and that this Opposition be sustained in favor of

Opposer.

Respectfully submitted,

REED SMITH LLP

Date: March 28, 2012 By:Darren B. Cohen

599 Lexington Avenue

New York, New York 10022Tel: (212) 549-0346

Email: [email protected]

Attorneys for Opposer


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Certificate of Service

I hereby certify that a copy of the foregoing Notice of Opposition was mailed first-class

mail postage prepaid to Carlos J. Plaza at Blake Avenue, Apartment 6B, Brooklyn, New York

11211 and Ariel Gonzalez at 366 Hewes Street, Apartment 3H, Brooklyn, New York 11211 this28th day of March 2012.

Ibis M. Vega

Assistant to Attorney for Opposer


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EXHIBIT A


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