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

ESTTA Tracking number: ESTTA474721

Filing date: 05/25/2012

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 Oliva Cigar Co,

Granted to Dateof previousextension

05/27/2012

Address 13955 NW 60th AvenueMiami Lakes, FL 33014UNITED STATES

Correspondenceinformation

Ury FischerAttorney of Record, a Florida Bar memberPost Office Drawer 141098Coral Gables, FL 33014UNITED [email protected], [email protected], [email protected]:305-448-7089

Applicant Information

Application No 85400359 Publication date 11/29/2011

Opposition FilingDate

05/25/2012 OppositionPeriod Ends

05/27/2012

Applicant National Tobacco Company, L.P.5201 Interchange WayLouisville, KY 40229UNITED STATES

Goods/Services Affected by Opposition

Class 034.All goods and services in the class are opposed, namely: Smoking tobacco; Tobacco; Tobacco,namely, 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.

3875110 Application Date 05/08/2009

Registration Date 11/09/2010 Foreign PriorityDate

NONE

Word Mark CAIN
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: 2010/07/01 First Use In Commerce: 2010/07/01

Humidors and lighters not of precious metal

U.S. RegistrationNo.

3866032 Application Date 05/08/2009

Registration Date 10/19/2010 Foreign Priority

Date

NONE

Word Mark CAIN

Design Mark

Description ofMark

NONE

Goods/Services Class 034. First use: First Use: 2010/07/01 First Use In Commerce: 2010/07/01

Cigars

Attachments 77732918#TMSN.jpeg ( 1 page )( bytes )77732911#TMSN.jpeg ( 1 page )( bytes )BLACK_CANE_Notice of Opposition_AsFiled_052512.pdf ( 4 pages )(38065bytes )

Certificate of Service

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

Signature /Ury Fischer/

Name Ury Fischer

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Date 05/25/2012

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LOTT & FISCHER, PL P.O. Drawer 141098 Coral Gables, Florida 33114-1098

Telephone: (305) 448-7089 Facsimile: (305) 446-6191

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Oliva Cigar Co.,a Florida corporation,

Opposer,

v.

National Tobacco Company, L.P., a

Delaware limited partnership,Applicant.

Opposition No. ___________________Application Serial No.: 85/400,359

Date of Publication: November 29, 2011

Mark: BLACK CANE

NOTICE OF OPPOSITION

Opposer, Oliva Cigar Co. (Opposer), a Florida corporation with a principal

place of business at 13955 NW 60th

Avenue, Miami Lakes, Florida 33014, believes it will

be damaged by the registration of Application Serial No. 85/400,359 (Application),

and, pursuant to 15 U.S.C. 1063(a) and TBMP 303.01, hereby opposes same.

As grounds for opposition, Opposer alleges:

1. Upon information and belief, National Tobacco Company, L.P.

(Applicant), a Delaware limited partnership with a principal place of business at 5201

Interchange Way, Louisville, KY 40229, is the owner of trademark application serial No.

85/400,359 filed on August 17, 2011, for the mark BLACK CANE (Applicants

Trademark).

2. Applicant seeks registration of Applicants Trademark on the Principal

Register based on the purported bona fide intent to use Applicants Trademark in

commerce in connection with the following services:

Smoking tobacco; Tobacco; Tobacco, namely, cigars and cigarettes, in

International Class 34.

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Opposition No.Mark: BLACK CANESerial No. 85/400,359

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3. Opposer believes that it will be damaged by registration of Applicants

Trademark.

4. Opposer has made use in interstate commerce of the mark CAIN

(Opposers Trademark)in respect of:

a. Humidors and lighters not of precious metal, in International Class 34; and

b. Cigars, in International Class 34.

5. Opposers use in interstate commerce of the mark CAIN commenced at

least as early as July 1, 2010 and such use has been continuous since its commencement.

6. Opposer is the owner of federal trademark registration Nos. 3,875,110 and

3,866,032 (Opposers Registrations), registration dates of November 9, 2010 and

October 19, 2010, respectively, for CAIN in respect of:

a. Humidors and lighters not of precious metal, in International Class 34 (Reg.

No. 3,875,110); and

b. Cigars, in International Class 34 (Reg. No. 3,866,032).

7. As the Application is an intent-to-use application and Opposers use of

Opposers Trademark commenced at least as early as July 1, 2010, Opposer is

undoubtedly the senior user.

8. Opposers Trademark is a well-known and distinctive trademark which

Opposer has advertised, promoted, and used since at least as early as July 1, 2010.

9. Applicants Trademark is confusingly similar to OpposersTrademark.

Specifically, both Applicants Trademark and Opposers Trademark include the

phonetically identical term CANE/CAIN. Moreover, the goods offered under

Applicants proposed mark are highly similar to the goods offered under Opposers

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Trademark. In fact, Applicants goods, cigars, under its proposed mark are identical to

Opposers goods, cigars, under Opposers trademark registration No. 3,866,032.

10. In view of the similarity of the parties respective marks and the

overlapping nature of the parties respective goods, Applicants mark so resembles

Opposers mark so as to be likely to cause the public to be confused, mistaken, or

deceived into believing that Applicants goods originate from Opposer or are in some

way related to, associated with, or sponsored by Opposer.

11. Accordingly, registration of Applicants Trademark is barred by the

provisions of Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), in that Applicants

Trademark consists of or comprises a mark which so resembles a mark previously used in

the United States by Opposer in respect of related goods so as to be likely to cause the

public to be confused, mistaken or deceived.

12. Registration of the Applicants Trademark would be a source of damage to

Opposer because relevant end users are likely to attribute the source or sponsorship of

Applicants goods to Opposer.

PRAYER FOR RELIEF

WHEREFORE, Opposer respectfully requests that the instant opposition be

granted and that Application Serial No. 85/400,359 be denied registration.

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Date: May 25, 2012 Respectfully submitted,

LOTT & FISCHER, PL

/Ury Fischer/Ury Fischer, Esq.

Leslie J. Lott, Esq.355 Alhambra Circle

Suite 1100

P.O. Drawer 141098

Coral Gables, FL 33114-1098(305) 448-7089 telephone

(305) 446-6191 facsimile

Email: [email protected]

Attorneys for OpposerOliva Cigar Co.

CERTIFICATE OF SERVICE

WE HEREBY CERTIFY that the foregoing NOTICE OF OPPOSITION was

served upon Applicant by delivering true and correct copies of same to Applicant and

counsel for Applicant via Federal Express on May 25, 2012 as follows:

National Tobacco Company, L.P.

5201 Interchange WayLouisville, KY 40229

Brian W. Chellgren, Esq.Bingham Greenebaum Doll LLP

101 S 5th Street

Louisville, KY 40202-3157

/Ury Fischer/Ury Fischer, Esq.

cain opp

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