Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA255102
`ESTTA Tracking number:
`12/15/2008
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`JuanPGarciabueno
`12/14/2008
`
`180 Mace St.Suite A4
`Chula Vista, CA 91911
`UNITED STATES
`
`Attorney
`information
`
`Justin R. Young
`DINEFF TRADEMARK LAW LIMITED
`160 North Wacker Drive
`Chicago, IL 60606
`UNITED STATES
`tmlaw@dineff.com Phone:312 338 1000
`Applicant Information
`
`77278809
`12/15/2008
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`ROMERO MARQUEZ, GUSTAVO
`VALLE DE SANTANA 213
`TLAJOMULCO DE ZU?IGA, 45640
`MEXICO
`Goods/Services Affected by Opposition
`
`06/17/2008
`12/14/2008
`
`Class 033. First Use: 2008/01/01 First Use In Commerce: 2008/01/01
`All goods and services in the class are opposed, namely: Tequila
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`ESTTA255102
`ESTTA Tracking number:
`12/15/2008
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`JuanPGarciabueno
`12/14/2008
`
`180 Mace St.Suite A4
`Chula Vista, CA 91911
`UNITED STATES
`
`Attorney
`information
`
`Justin R. Young
`DINEFF TRADEMARK LAW LIMITED
`160 North Wacker Drive
`Chicago, IL 60606
`UNITED STATES
`tmlaw@dineff.com Phone:312 338 1000
`Applicant Information
`
`77278809
`12/15/2008
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`ROMERO MARQUEZ, GUSTAVO
`VALLE DE SANTANA 213
`TLAJOMULCO DE ZU?IGA, 45640
`MEXICO
`Goods/Services Affected by Opposition
`
`06/17/2008
`12/14/2008
`
`Class 033. First Use: 2008/01/01 First Use In Commerce: 2008/01/01
`All goods and services in the class are opposed, namely: Tequila
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Design Mark
`
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`Tequila
`
`NONE
`
`NONE
`AMORCITO
`Tequila
`
`Application Date
`
`NONE
`
`Attachments
`
`Drawing - b&w.jpg
`opposition amorcito.pdf ( 7 pages )(203569 bytes )
`
`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
`Name
`Date
`
`/justinryoung/
`Justin R. Young
`12/15/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 77/278809
`For the mark AMORCITO & BOTTLE HEART DESIGN
`
`Published in the "Official Gazette" of June 17, 2008
`
`Juan Pablo Garciabueno,
`
`Opposer,
`
`V.
`
`Gustavo Romero Marquez
`
`Applicant,
` )
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`Opposition No.
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NOTICE OF OPPOSITION
`
`Juan Pablo Garciabueno, (hereinafter referred to as “Opposer”), a Mexican citizen,
`
`having its principal place of business at 180 Mace St., Suite A4, Chula Vista, CA 91911,
`
`United States of America, believes that he will be damaged by the registration of the mark
`
`“AMORCITO & BOTTLE HEART DESIGN”, shown in Serial Number 77/278809 in Class
`
`33, and hereby opposes same in accordance with 15 U.S.C. § 1063 and 37 C.F.R. § 2.101.
`
`
`
`As grounds for the opposition, Opposer alleges as follows:
`
`1.
`
`Applicant seeks to register “AMORCITO & BOTTLE HEART DESIGN” as a
`
`trademark for “tequila” in International Class 33, as evidenced by the publication of said mark
`
`in the Ojficial Gazette of the June 17, 2008 issue.
`
`2.
`
`Applicant’s Application No. 77/278809 for the mark “AMORCITO & BOTTLE
`
`HEART DESIGN” was filed on September 13, 2007 under Section l(b), which contained a
`
`Declaration that stated in part that the signatory “believes applicant to be entitled to use such
`
`mark in commerce;
`
`to the best of his/her knowledge and belief no other person, firm,
`
`corporation, or association has the right to use the mark in commerce, either in the identical
`
`form thereof or in such near resemblance thereto as to be likely, when used on or in
`
`connection with the goods/services of such other person,
`
`to cause confusion, or to cause
`
`mistake, or to deceive.”
`
`3.
`
`Upon information and belief, on September 13, 2007 Applicant was fully aware of
`
`Opposer’s prior trademark rights, as Applicant and Opposer had been engaged in negotiations
`
`involving the commercialization of tequila under Opposer’s marks “AMORCITO” and
`
`“BOTTLE HEART DESIGN”. Accordingly, the allegations set forth in the Declaration that
`
`accompanied the Application No. 77/278809 were fraudulent allegations made with the intent
`
`of deceiving the Patent and Trademark Office into accepting the application.
`
`4.
`
`Applicant filed an Amendment to Allege Use on April 4, 2008, which contained a
`
`statement that the mark “AMORCITO & BOTTLE HEART DESIGN” “was first used by the
`
`Applicant, or Applicant's related company,
`
`licensee, or predecessor in interest at least as
`
`early as 01/01/2008, and first used in commerce at least as early as 01/01/2008, and is now in
`
`use in such commerce.”
`
`
`
`5.
`
`Upon information and belief the mark “AMORCITO & BOTTLE HEART
`
`DESIGN” was not in use by Applicant, its predecessor in title or any licensee of Applicant for
`
`tequila. Accordingly, the above—identified statements contained in the Amendment to Allege
`
`Use, together with the accompanying declaration, were fraudulent allegations made with the
`
`intent of deceiving the Patent and Trademark Office into accepting the application.
`
`6.
`
`On the basis of the actions pleaded in the preceding paragraphs, Applicant has
`
`committed fraud against the U.S. Patent and Trademark Office in violation of 15 U.S.C.
`
`§l064(3).
`
`7.
`
`Opposer manufactures, markets and sells “tequila” and other related goods and
`
`services, and has done so for many years. Opposer has been using the mark “BOTTLE
`
`HEART DESIGN”, as shown in Exhibit “A”, since at least as early as November 2006 in
`
`Mexico and May 2007 in the United States. Moreover, Opposer has been using the mark
`
`“AMORCITO” since at least as early as February 2007 in Mexico and holds the Mexican
`
`Registration No. 979590 for same mark, which was granted on April 10, 2007.
`
`8.
`
`There is no issue as to priority. The filing date of Applicant’s mark and the alleged
`
`first use date in commerce of Applicant’s mark are subsequent to the first use date of
`
`Opposer’s mark “BOTTLE HEART DESIGN”, and subsequent to the introduction and use of
`
`Opposer’s mark to the marketplace and the purchasing public.
`
`9.
`
`Applicant’s application to register the mark “AMORCITO & BOTTLE HEART
`
`DESIGN” is Without Opposer’s consent or permission.
`
`
`
`10. The mark “AMORCITO & BOTTLE HEART DESIGN” that Applicant seeks to
`
`register so closely resembles Opposer’s mark “BOTTLE HEART DESIGN” in appearance,
`
`sound, and meaning that the use and registration thereof is likely to create the same overall
`
`impression on consumers and to cause confusion, mistake, and deception as to the source or
`
`origin of Applicant’s goods and will
`
`injure and damage Opposer and the goodwill and
`
`reputation symbolized by the Opposer’s mark.
`
`ll. Applicant’s goods are identical to Opposer’s goods that the public is likely to be
`
`confused,
`
`to be deceived, and to assume erroneously that Applicant’s goods are those of
`
`Opposer, or that Applicant is in some way connected or affiliated with, or sponsored by
`
`Opposer, all to Opposer’s irreparable damage.
`
`12. Applicant’s mark “AMORCITO & BOTTLE HEART DESIGN” will be marketed
`
`and sold to the same consumers and through the same trade channels than Opposer’s mark
`
`“BOTTLE HEART DESIGN”,
`
`therefore,
`
`is likely to cause confusion or mistake, or to
`
`deceive, within the meaning of Section §2(d) of the Trademark Act.
`
`13. Applicant’s mark “AMORCITO & BOTTLE HEART DESIGN” so closely
`
`resembles Opposer’s mark “BOTTLE HEART DESIGN” that it is deceptive in that it falsely
`
`suggests a connection with or approval by Opposer, in violation of Section §2(a) of the
`
`Trademark Act. Indeed, Applicant’s mark points uniquely to Opposer, and purchasers will
`
`assume that goods offered under Applicant’s alleged mark are connected with or approved by
`
`Opposer.
`
`14.
`
`If Applicant is permitted to use and register its mark for its goods, as specified in
`
`the application herein opposed, confusion resulting in damage and injury to Opposer will
`
`likely occur.
`
`
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`Application Serial No. 77/278809 be refused, and for such other and further relief as the
`
`Commissioner of Patents and Trademarks shall deem proper and required by the Principals of
`
`Equity and Good Conscience.
`
`Juan Pablo Garciabueno
`
`By and through its attorney
`
`
`
`Justin R. Young
`DINEFF TRADEMARK LAW LIMITED
`
`160 N. Wacker
`
`Chicago, Illinois 60606
`Phone (312) 338- 1000
`
`Facsimile (312) 338-1500
`tmlaw@dineff.com
`
`Dated: December 15, 2008
`
`
`
`EXHIBIT “A”
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing NOTICE OF OPPOSITION was served on
`
`this date December 16, 2008 upon Applicant’s Attorney of Record at its address of record by
`
`First—Class mail, postage prepaid, as follows:
`
`Mr. Alejandro Malacara
`82 Chapel Hill Cir
`San Antonio, TX 78240-3903
`
`
`
`Justin R. Young
`DINEFF TRADEMARK LAW LIMITED
`
`160 N. Wacker Drive .
`
`Chicago, Illinois 60606
`(312) 338 -1000
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