ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1319331
`10/31/2023
`
`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
`
`Macdonald & Muir Limited
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`11/01/2023
`
`THE CUBE
`45 LEITH STREET
`EDINBURGH, EH1 3AT
`UNITED KINGDOM
`
`JOHN P. MARGIOTTA
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: jmargiotta@fzlz.com
`Secondary email(s): ttabfiling@fzlz.com, peudy@fzlz.com
`212-813-5900
`
`Docket no.
`
`ARDB 2308506
`
`Applicant information
`
`Application no.
`
`97301839
`
`10/31/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`07/04/2023
`
`Opposition period
`ends
`
`11/01/2023
`
`IBARRA HARFUSH, FERNANDO
`12522 MILLWAY DR, C.P. 770
`HOUSTON, TX 77070
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 033. First Use: Sep 30, 2021 First Use In Commerce: Sep 30, 2021
`All goods and services in the class are opposed, namely: Distilled agave liquor; Distilled blue agave
`liquor
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`3679918
`
`Register
`
`Principal
`
`Application date
`
`07/17/2008
`
`
`
`Filing date:
`
`ESTTA1319331
`10/31/2023
`
`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
`
`Macdonald & Muir Limited
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`11/01/2023
`
`THE CUBE
`45 LEITH STREET
`EDINBURGH, EH1 3AT
`UNITED KINGDOM
`
`JOHN P. MARGIOTTA
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: jmargiotta@fzlz.com
`Secondary email(s): ttabfiling@fzlz.com, peudy@fzlz.com
`212-813-5900
`
`Docket no.
`
`ARDB 2308506
`
`Applicant information
`
`Application no.
`
`97301839
`
`10/31/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`07/04/2023
`
`Opposition period
`ends
`
`11/01/2023
`
`IBARRA HARFUSH, FERNANDO
`12522 MILLWAY DR, C.P. 770
`HOUSTON, TX 77070
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 033. First Use: Sep 30, 2021 First Use In Commerce: Sep 30, 2021
`All goods and services in the class are opposed, namely: Distilled agave liquor; Distilled blue agave
`liquor
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`3679918
`
`Register
`
`Principal
`
`Application date
`
`07/17/2008
`
`
`
`Registration date
`
`09/08/2009
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`LASANTA
`
`NONE
`
`Class 033. First use: First Use: None First Use In Commerce: None
`Scotch whisky
`
`Attachments
`
`F5317392.pdf(204763 bytes )
`
`Signature
`
`/John P. Margiotta/
`
`Name
`
`Date
`
`John P. Margiotta
`
`10/31/2023
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Opposition No. ___________
`
`v.
`
`
`
`
`
`MACDONALD & MUIR LIMITED,
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`FERNANDO IBARRA HARFUSH,
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`Opposer Macdonald & Muir Limited (“Opposer”), a private limited company organized
`
`and existing under the laws of the United Kingdom with an office and place of business at The
`
`Cube, 45 Leith Street, Edinburgh, Scotland EH1 3AT, believes that it would be damaged by
`
`issuance of a registration for S LA SANTA AIDA HARFUSH RON (stylized) as applied for in
`
`Application Serial No. 97301839 (the “Application”) filed March 8, 2022, by Fernando Ibarra
`
`Harfush (“Applicant”), and therefore opposes the same. The specific grounds for this opposition
`
`are as follows:
`
`FACTS
`
`1.
`
`2.
`
`Opposer manufactures, imports, and sells wines and spirits in the United States.
`
`Since long before any date on which Applicant can rely, Opposer has marketed
`
`and sold its LASANTA brand whiskey in the United States, where it is one of the most highly
`
`regarded and popular whiskies sold.
`
`3.
`
`Opposer has seen substantial sales from its whiskey sold under the LASANTA
`
`mark and has engaged in significant promotional and marketing efforts for its LASANTA
`
`{F5317392.1 }
`
`
`
`
`
`whiskey, making the LASANTA mark extremely valuable to Opposer, and symbolizing a
`
`reputation and goodwill belonging in the United States to Opposer exclusively.
`
`4.
`
`In addition to the common law rights accruing to Opposer in the LASANTA
`
`mark, Opposer owns federal trademark registration No. 3679918 for use in connection with
`
`“Scotch whisky” in International Class 33.
`
`5.
`
`This registration is valid, subsisting and in full force and effect, and constitutes
`
`evidence of the validity of the LASANTA mark and of Opposer’s exclusive right to use the mark
`
`on the goods identified in the registration.
`
`Applicant’s Application
`
`6.
`
`Upon information and belief, Applicant is individual located at 12522 Millway
`
`Drive, C.P. 770, Houston, Texas 77070.
`
`7.
`
`Upon information and belief, Applicant filed the Application opposed herein on
`
`March 8, 2022 to register the mark S LA SANTA AIDA HARFUSH RON (stylized), which is
`
`shown below, for use in connection with “Distilled agave liquor; Distilled blue agave liquor” in
`
`International Class 33, based on a date of first use in commerce of September 30, 2021.
`
`8.
`
`Opposer’s rights in the LASANTA mark are prior and superior to any rights
`
`Applicant may claim in the S LA SANTA AIDA HARFUSH RON (stylized) mark.
`
`
`
`{F5317392.1 }
`
`
`
`2
`
`
`
`9.
`
`The goods identified in the Application are identical or closely related to goods
`
`Opposer offers under its LASANTA mark.
`
`10.
`
`Applicant is not connected to Opposer in any way, and has not been authorized by
`
`Opposer to use the mark S LA SANTA AIDA HARFUSH RON (stylized).
`
`11.
`
`At the time that Applicant filed the Application herein opposed, Applicant was on
`
`constructive notice of Opposer’s prior and exclusive rights in the LASANTA mark by virtue of
`
`Opposer’s federal registration, pursuant to Section 22 of the Lanham Act, 15 U.S.C. § 1072.
`
`12.
`
`Upon information and belief, at the time that Applicant filed the Application
`
`herein opposed, Applicant had actual knowledge of Opposer’s prior and exclusive rights in the
`
`LASANTA mark as a result of Opposer’s extensive use of the LASANTA mark.
`
`13.
`
`Applicant’s S LA SANTA AIDA HARFUSH RON (stylized) mark is highly
`
`similar to Opposer’s LASANTA mark in sight, sound and commercial impression.
`
`14.
`
`Applicant’s S LA SANTA AIDA HARFUSH RON (stylized) mark is so similar
`
`to the LASANTA mark as to be likely to cause confusion, mistake, or deception as to the source
`
`of Applicant’s goods, to the damage of the Opposer and public.
`
`15.
`
`Registration to Applicant of the S LA SANTA AIDA HARFUSH RON (stylized)
`
`mark would be inconsistent with Opposer’s prior exclusive rights in the LASANTA mark and
`
`would threaten destruction of Opposer’s investment and goodwill in its valuable LASANTA
`
`mark.
`
`16.
`
`herein.
`
`CLAIM FOR RELIEF UNDER LANHAM ACT SECTION 2(d)
`(LIKELIHOOD OF CONFUSION)
`
`Opposer incorporates by reference paragraphs 1 through 15 as if fully set forth
`
`{F5317392.1 }
`
`
`
`3
`
`
`
`17.
`
`Opposer’s LASANTA mark has been used continuously since a date prior to any
`
`date upon which Applicant can rely.
`
`18.
`
`Applicant’s S LA SANTA AIDA HARFUSH RON (stylized) mark is similar in
`
`sight, sound, meaning, and commercial impression to Opposer’s LASANTA mark.
`
`19.
`
`Based on the similarity of the parties’ respective marks, consumers are likely to
`
`be deceived into falsely believing that the goods offered by Applicant under the S LA SANTA
`
`AIDA HARFUSH RON (stylized) mark originate with or are approved or authorized by
`
`Opposer, or that there is some relationship between Applicant and Opposer. Any use of the S LA
`
`SANTA AIDA HARFUSH RON (stylized) mark by Applicant in connection with the goods
`
`specified in the Application is therefore likely to cause confusion, cause mistake, or deceive
`
`consumers in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`20.
`
`As a result of the foregoing, Opposer will be injured by registration of the S LA
`
`SANTA AIDA HARFUSH RON (stylized) mark to Applicant.
`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
`
`registration sought by Application Serial No. 97301839 be denied.
`
`
`
`{F5317392.1 }
`
`
`
`4
`
`
`
`
`
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`By: /John Margiotta/
` John P. Margiotta
` Parker C. Eudy
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`Tel: (212) 813-5900
`Email: jmargiotta@fzlz.com
` peudy@fzlz.com
`
`Attorneys for Opposer
`
`
`
`
`Dated: New York, New York
` October 31, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`{F5317392.1 }
`
`
`
`5
`
`
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