UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

P.O. Box 1451
Alexandria, VA 22313-1451

coggins Mailed: September 17, 2009

Opposition No. 91185180

Tatuaje Cigars, Inc.1

v.

Nicaragua Tobacco Imports, Inc.

Before Quinn, Kuhlke, and Mermelstein

Administrative Trademark Judges.

By the Board:

This case now comes up on opposer's motion for summary

judgment (filed January 28, 2009) on the ground of priority and

likelihood of confusion.

A party is entitled to summary judgment when it has

demonstrated that there are no genuine issues as to any

material facts, and that it is entitled to judgment as a matter

of law. Fed. R. Civ. P. 56(c). The evidence must be viewed in

a light favorable to the nonmoving party, and all justifiable

inferences are to be drawn in the nonmovant's favor. Opryland

1
Inasmuch as the pleaded registration was assigned from Peter H.
Johnson to Tatuaje Cigars, Inc. and the assignment was recorded
with the Assignment Services Division of the Office at Reel 3812
Frame 0663 prior to the institution of this proceeding, Tatuaje
Cigars, Inc. should have been listed as the opposer herein.
Board records have been updated to list Tatuaje Cigars, Inc. as
the opposer.
Opposition No. 91185180

USA Inc. v. The Great American Music Show, Inc., 970 F.2d 847,

23 USPQ2d 1471 (Fed. Cir. 1992).

Applicant filed an intent-to-use application on the

Principal Register for the mark TATTOO, in standard character

form, for the following goods2:

Cigar and cigarette boxes; cigar and cigarette boxes

not of precious metal; cigar bands; cigar boxes;
cigar boxes not of precious metal; cigar cases;
cigar cutters; cigar holders; cigar humidifiers;
cigar lighters; cigar tubes; cigars; tobacco, cigars
and cigarettes; cigarillos; in Class 34.

Opposer filed a notice of opposition against the

registration of applicant's mark on the ground of priority and

likelihood of confusion pursuant to Section 2(d) of the

Trademark Act of 1946, 15 U.S.C. § 1052(d). In the notice of

opposition, opposer asserted ownership of Registration No.

2836665 for the mark TATUAJE, in typed form, for "cigars," in

Class 34. This registration issued April 27, 2004.

By way of its motion for summary judgment, opposer has

properly made its pleaded registration of record which shows

that the registration is valid and subsisting and owned by

opposer. In view thereof, opposer has established its standing

and priority is not an issue. King Candy, Inc. v. Eunice

King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55

USPQ2d 1842, 1844 (Fed. Cir. 2000); and Lipton Industries, Inc.

2
Opposition No. 91185180

v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA

1982).

With regard to the goods, the "cigars" identified in

opposer's registration are identical to applicant's "cigars"

identified in the application. Moreover, in its brief in

opposition to the motion, applicant concedes that the parties'

goods are "similar." (App. Br. p. 2.)

Considering the channels of trade and classes of

purchasers, because the goods are, in part, legally identical

and otherwise closely related, and because there are no

limitations in either the registration or the subject

application, we must presume that applicant's and opposer's

goods will be sold in the same channels of trade and will be

bought by the same classes of purchasers. See Hewlett-Packard

Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.

Cir. 2002); Canadian Imperial Bank v. Wells Fargo Bank, 811

F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and

Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Moreover, in its brief

in opposition to the motion, applicant concedes that the

parties' channels of trade are "similar." (App. Br. p. 2.)

Accordingly, opposer's motion for summary judgment is

granted, in part, as to opposer's standing, opposer's priority,

the similarity of goods, the channels of trade, and the classes

of purchasers.

2
Application Serial No. 77359141, filed December 25, 2007, under

3
Opposition No. 91185180

However, upon careful consideration of the arguments and

evidence presented by the parties, and drawing all inferences

with respect to the motion in favor of applicant as the

nonmoving party, we find that opposer has not demonstrated the

absence of genuine issues of material fact for trial with

respect to the similarity or dissimilarity of the marks when

compared in their entireties in terms of appearance, sound,

connotation, and commercial impression. Accordingly, opposer's

motion for summary judgment is denied, in part, as to the

similarity of the marks.3

Inasmuch as the issues remaining for trial have been

narrowed considerably, the parties are encouraged to consider

Accelerated Case Resolution (ACR). The parties are directed to

the following URL where they may find more information on ACR:

http://www.uspto.gov/web/offices/com/sol/notices/acrognoticerule.pdf

The parties spent some length in their briefs discussing

each other's conduct, unclean hands, and fraud. In view of

applicant's failure to file a (compulsory) counter-claim to

cancel opposer's pleaded registration or to file a cross-motion

for summary judgment on its affirmative defense of unclean

hands, we note that a discussion of opposer's use of other

Section 1(b) of the Trademark Act of 1946, 15 U.S.C. § 1051(b).

3
The parties are reminded that evidence submitted in support of
or in opposition to a motion for summary judgment is of record
only for consideration of that motion. Any such evidence to be
considered at final hearing must be properly introduced during
the appropriate trial period. See, for example, Levi Strauss &
Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).

4
Opposition No. 91185180

terms on packaging for opposer's goods appears to be immaterial

to this proceeding.

Proceedings are resumed. Discovery is open. Disclosure

and trial dates are reset on the following schedule.

Expert Disclosures Due 10/21/2009

Discovery Closes 11/20/2009
Plaintiff's Pretrial Disclosures 1/4/2010
Plaintiff's 30-day Trial Period Ends 2/18/2010
Defendant's Pretrial Disclosures 3/5/2010
Defendant's 30-day Trial Period Ends 4/19/2010
Plaintiff's Rebuttal Disclosures 5/4/2010
Plaintiff's 15-day Rebuttal Period
Ends 6/3/2010

In each instance, a copy of the transcript of testimony

together with copies of documentary exhibits, must be served

on the adverse party within thirty days after completion of

the taking of testimony. Trademark Rule 2.l25. Briefs

shall be filed in accordance with Trademark Rules 2.128(a)

and (b). An oral hearing will be set only upon request

filed as provided by Trademark Rule 2.l29.