aficionado opp
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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
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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
U.S. RegistrationNo.
3614669 Application Date 02/28/2008
Registration Date 05/05/2009 Foreign PriorityDate
NONE
Word Mark CIGAR AFICIONADO
Design Mark
Description ofMark
NONE
Goods/Services Class 041. First use: First Use: 1997/01/20 First Use In Commerce: 1997/01/20
Providing on-line magazines in the field of cigars
U.S. RegistrationNo.
2054780 Application Date 03/14/1996
Registration Date 04/22/1997 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
magazines and books featuring the subject of cigars
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U.S. RegistrationNo.
2131128 Application Date 03/14/1996
Registration Date 01/20/1998 Foreign PriorityDate
NONE
Word Mark CIGAR AFICIONADO
Design Mark
Description ofMark
NONE
Goods/Services Class 042. First use: First Use: 1997/01/20 First Use In Commerce: 1997/01/20
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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