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ESTTA Tracking number: ESTTA324394
Filing date: 12/29/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 77540431
Applicant Cigars International, Inc.
Applied for Mark CREMOSA CUBANA
Correspondence DAVID M. PERRY
Address BLANK ROME LLP
ONE LOGAN SQUARE , 9TH FLOOR
PHILADELPHIA, PA 19103-6998
UNITED STATES
Submission Applicant's Motion to Suspend
Attachments Motion to Suspend - CREMOSA CUBANA.pdf ( 12 pages )(477719 bytes )
Filer's Name David M. Perry
Filer's e-mail perry@blankrome.com,oleksiuk@blankrome.com
Signature /David M. Perry/
Date 12/29/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Class: 34
of the January 25, 2009 due date for Applicant’s brief in the
civil action.
1
117393.00101/21841068v.1
CUBANA is infringing Specialty’s common law trademark, CREMOSA
2
117393.00101/21841068v.1
CIGARS INTERNATIONAL, INC.
CERTIFICATE OF MAILING
_______________________________
David M. Perry
3
117393.00101/21841068v.1
Exhibit A
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 1 of 8
Cv 09-924-HU
SPECIAL TY CIGARS INTERNATIONAL, CV No.
INC.,
Plaintiff, COMPLAINT
Plaintiff Specialty Cigars International, Inc. ("Specialty Cigars" or "Plaintiff') states the
following for its complaint against defendant Cigars International, Inc. ("Defendant"):
1. This is an action for federal unfair competition, unfair and deceptive trade
practices, common law trademark infringement, and unfair competition arising out of the
Trademark Act of 1946,15 U.S.C. § 1051 et seq. (2002), ("Lanham Act"); the Oregon Unlawful
are confusingly similar to Specialty Cigars' trademarks and/or trade dress as set forth below.
Defendant's use of the trademarks and/or trade dress is likely to cause confusion, mistake, or
PAGE 1 - COMPLAINT
LANE POWELL PC
601 SW SECOND AVENU, SUITE 2100
709168.0001/801412.1 PORTLAN, OREGON 97204-3158
503778.2100 FAX 503.778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 2 of 8
3. Specialty Cigars is a corporation duly organized and existing under the laws of
Oregon, whose primary place of business is located within the state of Oregon.
4. Upon information and belief, defendant Cigars International, Inc. is a Delaware
corporation whose primary place of business is located in Bath, Pennsylvania.
JURISDICTION AND VENUE
5. This Court has subject matter jurisdiction over this action under the Lanham Act
pursuant to 15 U.S.C. § 112l and 28 U.S.C. § 1338, and supplemental jurisdiction over the state
claims pursuant to 28 U.S.C. § 1367.
6. This Court has personal jurisdiction over Defendant under 28 U.S.C. § 1331
because, on information and belief, Defendant has distributed or sold merchandise under the
infringing trademarks and/or trade dress in this state, has engaged in acts or omissions within this
state causing injur, has engaged in acts or omissions outside of this state causing injur within
this state, has manufactured or distributed products used or consumed within this state in the
ordinary course of trade, or has otherwise made or established contacts with this state sufficient
to permit the exercise of personal jurisdiction.
appear on the cigars it sells in the form of a "band," or paper wrapper that is affixed to each
cigar. The bands feature distinctive trademarks, ~oloring, designs, and, in some cases, artwork,
PAGE 2 - COMPLAINT
LANE POWELL PC
601 SW SECOND AVENU, SUI 2100
709168.0001/801412.1 PORTLAND, OREGON 97204-3158
503.7782100 FAX 503.778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 3 of 8
which are owned or licensed by Specialty Cigars. The brands also appear in Specialty Cigars'
cigar-related products, as well as its advertising and its website, located at
ww.specialtycigars.com .
10. Two of Specialty Cigars' popular brands are CREMOSA CUBANOS and ZELO
DE CUBA (collectively, the "Specialty Cigars Marks"). Both brands are strongly associated
with Specialty Cigars' premium quality cigars. Each brand is also displayed on the band of each
cigar sold with distinctive coloring, designs, and artwork as displayed below:
11. Defendant is currently selling or in the past has sold knock-off cigars under marks
or signage that are nearly identical, and thus confusingly similar, to one or more of Plaintiffs
marks. Defendant's infringing activities include the use of the marks CREMOSA CUBANA and
ZELO DE CUBA (collectively, the "Infringing Marks") with bands featuring nearly identical
coloring, design, and artwork used by Specialty Cigars as displayed below:
PAGE 3 - COMPLAINT
L\ì'E POWELL PC
601 SW SECOND AVENUE. SUITE 2100
709168.0001/801412 I PORTLAND. OREGON 97204-.1158
503.778 2 i 00 FAX 503.778 2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 4 of 8
12. Defendant's goods sold under the Infringing Marks are displayed on Defendant's
website and/or other advertising that is intended to cause further confusion between them and
Specialty Cigars' own products, including false references to how these same products have been
priced much higher by third parties. In fact, the products are not the same.
l3. Defendant's activities are likely to cause confusion, mistake, and deception as to
the affliation, connection, or association of Defendant with Plaintitl~ and as to the origin,
sponsorship, or approval of Defendant's services or commercial activities.
14. By causing such a likelihood of confusion, mistake, and deception, Defendant is
inflicting irreparable harm to the goodwill symbolized by the Specialty Cigars Marks, for which
Specialty Cigars has no adequate remedy at law.
PAGE 4 - COMPLAINT
LAì'E POWELL PC
601 SW SECONDAVENUE, SUITE 2100
709168.00011801412 1 PORTLAND, OREGON 97204-3158
503.7782100 FAX 503778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 5 of 8
above.
19. Plaintiff realleges each of the allegations set forth in paragraphs 1 through 18
above.
20. Defendant has been and is passing off its goods as those of Specialty Cigars,
causing a likelihood of confusion or misunderstanding as to the source, sponsorship, or approval
of Defendant's goods, causing a likelihood of confusion as to Defendant's affiliation,
connection, or association with Specialty Cigars, and otherwise damaging to the public.
Defendant's conduct constitutes unfair and deceptive acts or practices in the course of a business,
trade, or commerce in violation of Oregon's Unlawfl Trade Practices Act, ORS 646.605 to
646.656 (2003).
PAGE 5 - COMPLAINT
LANE POWELL PC
601 SW SECOND AVENU, SUITE 2100
709168.0001/801412.1 PORTLAN, OREGON 97204-3158
503.7782100 FAX 503.7782200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 6 of 8
above.
23. Defendant's acts constitute common law trademark infringement and unfair
competition, and have created and wil continue to create a likelihood of confusion to the
irreparable injury of Specialty Cigars and the Specialty Cigars Marks unless restrained by this
Court, as Specialty Cigars has no adequate remedy at law for this injury.
24. On information and belief, Defendant acted with full knowledge of
Specialty Cigars' use of, and statutory and common law rights to, the Specialty Cigars Marks
trade on the goodwil associated with the Specialty Cigars Marks to the great and irreparable
injury of Specialty Cigars.
26. As a result of Defendant's acts, Specialty Cigars has been damaged in an amount
injunctive relief, an accounting of Defendant's profits, damages, and costs. Further, in light of
the deliberately fraudulent and malicious use of confusingly similar imitations of the
Specialty Cigars Marks, and the need to deter Defendant from similar conduct in the future,
PAGE 6 - COMPLAINT
LANE POWELL PC
601 SW SECOND AVENU, SUITE 2 I 00
PORTLAND, OREGON 97204-3158
709168.0001/801412.1 503778.2100 FAX: 503.7782200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 7 of 8
PAGE 7 - COMPLAINT
LANE POWELL PC
601 SW SECOND A VENU, SUITE 2 I 00
709168.0001/801412.1 PORTLAN, OREGON 97204-3 I 58
503.7782100 FAX: 503.778.2200
Case 3:09-cv-00924-HU Document 1 Filed 08/11/2009 Page 8 of 8
2. That Defendant be ordered to recall all products bearing the Infringing Marks, or
any other confusingly similar mark, which have been shipped by Defendant or under its
authority, to any customer, including, but not limited to, any wholesaler, distributor, retailer,
consignor, or marketer, and also to deliver to each customer a copy of this Cour's order as it
relates to said injunctive relief against Defendant.
3. That Defendant be ordered to deliver for impoundment and destruction all goods
applications for any mark that contains the words CREMOSA CUBANA and ZELO DE CUBA
or any confusingly similar variation thereof.
5. That Plaintiff be awarded damages in an amount yet to be determined.
goodwil, and damages for the injur from Defendant's false designation of origin, in an amount
up to three times the actual damages sustained, pursuant to 15 U.S.C. § 1 1 17.
8. That Plaintiff be awarded its reasonable attorneys' fees, disbursements, and costs
10. That Plaintiff be awarded such other and fuher relief as this Cour deems just
and equitable.
PAGE 8 - COMPLAINT
LANE POWELL PC
60 i sw SECOND AVENU, SUITE 2 I 00
709168.0001/801412.1 PORTLAND, OREGON 97204-3158
503.778.2100 FAX 503.778.2200