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ESTTA Tracking number: ESTTA361354
Filing date: 08/03/2010
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 Top Tobacco, L.P
Granted to Date 08/04/2010
of previous
extension
Address 2301 Ravine Way
Glenview, IL 60025
UNITED STATES
Applicant Information
Application No 77856609 Publication date 04/06/2010
Opposition Filing 08/03/2010 Opposition 08/04/2010
Date Period Ends
Applicant R-CORE DISTRIBUTION LLC
10820 NW 30TH ST
MIAMI, FL 33172
UNITED STATES
Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
record by First Class Mail on this date.
Signature /Antony J. McShane/
Name Antony J. McShane
Date 08/03/2010
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the Matter of )
Application No. 77/856,609 )
)
)
Top Tobacco, L.P., )
)
Opposer, ) NOTICE OF OPPOSITION
)
v. )
)
R-Core Distribution, L.L.C., )
)
Applicant. )
The Application, which is based upon Applicant's intent to use the mark BLUNTALICIOUS in
connection with “cigar wraps” in International Class 34, was published for opposition in the
Official Gazette on April 6, 2010. Top Tobacco, L.P. (“Top Tobacco”), a Delaware limited
partnership, having a place of business at 2301 Ravine Way, Glenview, Illinois 60025, believes
1. For many years, and long prior to the acts of Applicant herein alleged, Top
Tobacco, its predecessors and affiliates have been engaged, inter alia, in the manufacture,
distribution and sale of smokers’ articles, including cigarette rolling papers, cigarette tobacco,
cigarette filter tubes, cigarette rolling machines, cigarette injectors, and cigarette making
machines, as well as kits for making cigarettes (“roll-your-own products”). Top Tobacco
distributes its roll-your-own products through tobacco shops, drugstores, tobacco outlets,
convenience and other retail stores. Top Tobacco is a long time signatory in good standing of
the Master Settlement Agreement between the numerous settling states and participating
manufacturers of tobacco products. As a result of its long and successful sale of roll-your-own
products, Top Tobacco has become one of the best-known manufacturers of tobacco and
tobacco-related products in the United States, it and its brands are leaders in the roll-your-own
products market.
3. Top Tobacco believes that the conduct of Applicant alleged herein materially
misrepresents the class of goods for which Applicant seeks to register its mark and thereby
threatens the reputation and perceived legitimacy of entire class of roll-your-own products,
including those sold by Top Tobacco, and is likely to subject the entire class of roll-your-own
products to legislative and other initiatives to ban or otherwise thwart the legitimate sale of roll-
your-own products.
COUNT I
Applicant’s Mark Is Not and Will Not Be Used In Lawful Commerce
4. The application is based on Applicant’s alleged bona fide intent to use the mark
paraphernalia,” which includes “items primarily intended or designed for use in ingesting,
inhaling, or otherwise introducing marijuana … into the human body.” 21 U.S.C. §863(d).
6. On information and belief, Applicant’s “cigar wraps” are not intended for use in
rolling cigars, which requires significant expertise and specialized equipment, including binders
and knives for cutting tobacco leaves, and which is not engaged in by any significant sector of
the roll-your-own market. In fact, there is no appreciable market in the United States for roll-
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your-own cigar products, and there is no commercial or recognized class of product known as
“cigar wraps.”
7. Neither the Alcohol and Tobacco Tax and Trade Bureau nor its predecessor, the
Bureau of Alcohol, Tobacco, Firearms and Explosives (ATF), have ever recognized a category
of “roll your own cigar” tobacco, and there is no tax class for the product.
8. The only recognized federal tax categories for smoking tobacco in the United
States are cigarette tobacco (i.e., Tax Class J) and pipe tobacco (i.e., Tax Class L). There is no
federal tax classification for cigar tobacco or cigar wraps because there are no roll-your-own
cigars.
9. Rather, on information and belief, the goods with which Applicant will use the
mark are items primarily intended or designed for use in ingesting, inhaling, or otherwise
introducing marijuana into the human body. In fact, Applicant’s “cigar wraps” are a class of
products known as “blunt wraps,” which are, and have been found to be, “drug paraphernalia,”
the sale of which violates the Controlled Substances Act. In fact, the term “blunt” is a slang term
for a cigarette made of marijuana, and Applicant’s use of the term “blunt” as the root of the mark
10. Applicant’s “cigar wraps” violate the Controlled Substances Act. 21 U.S.C. §863.
11. In addition to violating the Controlled Substances Act, Applicant’s “cigar wraps”
violate an increasing number of state and municipal bans on blunt wraps. See Philadelphia,
Penn. Stat. §9-629 (2007)(banning flavored and unflavored blunt wraps); D.C. Code §48-1103
(2010)(banning blunt wraps); Boston, Mass. Pub. Health Commission Reg. (2008)(banning blunt
wraps).
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12. “Use of a mark in commerce must be lawful use to be the basis for federal
registration of the mark.” 37 C.F.R. § 2.69; Trademark Manual of Examining Procedure §907.
13. Top Tobacco therefore opposes the registration of Application Serial No.
77/856,609 for the mark BLUNTALICIOUS cigar wraps on the basis that there is no lawful use
COUNT II
14. Top Tobacco repeats and alleges the allegations contained in paragraphs 1
15. The Lanham Act requires an applicant to specify the particular goods in
connection with which the applicant uses or has a bona fide intent to use the mark in commerce.
unacceptable if it is inconsistent with the goods indicated by the specimen. See TMEP §
1402.05.
16. On information and belief, to avoid characterizing the products with which it
intends to use the subject mark as “blunt wraps,” Applicant has purposely and intentionally
17. At the time Applicant filed and executed the instant application, it also executed
and submitted to the United States Patent and Trademark Office a declaration under oath, and
under penalty of perjury, swearing that to the best of Applicant’s knowledge and belief, all of the
18. On information and belief, at the time Applicant filed and executed the instant
application and the above-referenced sworn declaration, Applicant knew that its purported “cigar
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wraps” will not be sold primarily for use in rolling cigars, and that there is no commercial or
19. On information and belief, at the time Applicant filed and executed the instant
application and the above-referenced sworn declaration, Applicant intentionally and knowingly
misdescribed its products as “cigar wraps” in an attempt to cloak its products with a description
that would deceive the Trademark Office into believing that Applicant’s goods are legitimate,
20. On information and belief, Applicant made these material misrepresentations with
the specific intent to deceive or mislead the Trademark Office and in order to obtain registration
for the subject mark when it knew it was not entitled to such registration.
21. In issuing the publishing the instant application, Serial No. 77/856,609, the
Trademark Office relied upon Applicant’s false statements made in its application and
supporting declaration.
22. Accordingly, Applicant has committed fraud on the Trademark Office in the
WHEREFORE, Top Tobacco requests that Application Serial No. 77/856,609 be refused
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CERTIFICATE OF SERVICE
I, Katherine Dennis Nye, an attorney, state that, pursuant to 37 CFR §§ 2.101, 2.111 and
2.119, I caused a true and correct copy of the foregoing Combined Notice of Opposition and
Xavier Morales
Law Office of Xavier Morales
P.O. Box 2987
New York, NY 10008