throbber
ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1328047
`12/12/2023
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Fuente Marketing Ltd.
`
`Corporation
`
`Incorporated or
`registered in
`
`Turks and Caicos Islands
`
`SALT MILLS PLAZA UNIT 48C GRACE BAY ROAD
`PROVIDENCIALES, 00000
`TURKS AND CAICOS ISLANDS
`
`VIRGINIA L. CARRON
`FINNEGAN.
`901 NEW YORK AVE
`WASHINGTON, DC 20001
`UNITED STATES
`Primary email: virginia.carron@finnegan.com
`Secondary email(s): ttab-lega-assistants@finnegan.com, docket-
`ing@finnegan.com, gordon.wright@finnegan.com
`4046536452
`
`Docket no.
`
`07392.8335
`
`Applicant information
`
`Application no.
`
`97932914
`
`12/12/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`11/21/2023
`
`Opposition period
`ends
`
`12/21/2023
`
`Xu, Zhiyong
`NO. 10, CHANGPU, BALONG COMMUNITY
`LICHENG STREET
`XIANYOU, 351100
`CHINA
`
`Goods/services affected by opposition
`
`Class 034. First Use: Apr 26, 2023 First Use In Commerce: Apr 26, 2023
`All goods and services in the class are opposed, namely: Ashtrays; Hookahs; Cigar cases; Cigar cut-
`ters; Cigar lighters; Cigar punchers; Cigarette filters; Cigarette lighters; Cigarette tubes; Electronic ci-
`garette lighters; Kerosene lighters for smokers; Lighters for smokers; Tobacco grinders
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`
`3254146
`
`Application date
`
`12/01/2004
`
`

`

`no.
`
`Register
`
`Principal
`
`Registration date
`
`06/19/2007
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`X
`
`NONE
`
`Class 034. First use: First Use: Sep 8, 2006 First Use In Commerce: Sep 8,
`2006
`Cigars
`
`U.S. registration
`no.
`
`3285314
`
`Register
`
`Principal
`
`Registration date
`
`08/28/2007
`
`Application date
`
`12/14/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`X
`
`NONE
`
`Class 034. First use: First Use: Nov 1, 2006 First Use In Commerce: Nov 1,
`2006
`Ashtrays, not of precious metal; Cigar cutters; [ Cigar humidifiers; Cigar tubes; ]
`Lighters not of precious metal [ ; Matches ]
`
`U.S. registration
`no.
`
`6790471
`
`Register
`
`Principal
`
`Registration date
`
`07/12/2022
`
`Application date
`
`09/09/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`X
`
`NONE
`
`Class 034. First use: First Use: 1999 First Use In Commerce: 1999
`Humidors
`
`U.S. registration
`no.
`
`2536633
`
`Register
`
`Principal
`
`Registration date
`
`02/05/2002
`
`Application date
`
`07/25/2001
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`X
`
`NONE
`
`Class 034. First use: First Use: 1999 First Use In Commerce: 1999
`Smoker's articles; ashtrays not made of precious metal; [ cigar cutters; ] cigar
`
`

`

`protectors; humidors; lighters not made of precious metal [ ; and matches ]
`
`U.S. registration
`no.
`
`2347248
`
`Register
`
`Principal
`
`Registration date
`
`05/02/2000
`
`Application date
`
`07/13/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`X
`
`The mark consists, in part, of stylized representation of the letter X.
`
`Class 034. First use: First Use: Nov 18, 1995 First Use In Commerce: Nov 18,
`1995
`Cigars
`
`U.S. registration
`no.
`
`3065482
`
`Register
`
`Principal
`
`Registration date
`
`03/07/2006
`
`Application date
`
`12/01/2004
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`XXX
`
`NONE
`
`Class 034. First use: First Use: Nov 30, 1996 First Use In Commerce: Nov 30,
`1996
`Cigars
`
`U.S. registration
`no.
`
`2397955
`
`Register
`
`Principal
`
`Registration date
`
`10/24/2000
`
`Application date
`
`11/30/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`X TO THE THIRD POWER
`
`NONE
`
`Class 034. First use: First Use: Dec 1998 First Use In Commerce: Dec 1998
`Cigars
`
`U.S. registration
`no.
`
`3191113
`
`Register
`
`Principal
`
`Registration date
`
`01/02/2007
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`SERIEX
`
`NONE
`
`Application date
`
`12/20/2004
`
`Foreign priority
`date
`
`NONE
`
`

`

`Goods/services
`
`Class 034. First use: First Use: May 30, 1999 First Use In Commerce: May 30,
`1999
`Cigars
`
`U.S. registration
`no.
`
`3171080
`
`Register
`
`Principal
`
`Registration date
`
`11/14/2006
`
`Application date
`
`10/31/2005
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`RISING X
`
`NONE
`
`Class 034. First use: First Use: Oct 18, 2005 First Use In Commerce: Oct 18,
`2005
`Cigars; [ smoker's articles, namely, cigar humidifiers, ashtrays not made of pre-
`cious metal; cigar cutters; cigar protectors, namely, glass cigar tubes used to
`protect cigars and cigar cases not of precious metal; lighters not made of pre-
`cious metal; and matches ]
`
`U.S. registration
`no.
`
`2495579
`
`Register
`
`Principal
`
`Registration date
`
`10/09/2001
`
`Application date
`
`11/24/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FUENTE OPUSX
`
`NONE
`
`Class 034. First use: First Use: Sep 1999 First Use In Commerce: Sep 1999
`CIGAR AND CIGARETTE LIGHTERS OF NON-PRECIOUS METAL
`
`U.S. registration
`no.
`
`2256200
`
`Register
`
`Principal
`
`Registration date
`
`06/29/1999
`
`Application date
`
`12/06/1995
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FUENTE OPUS X
`
`NONE
`
`Class 034. First use: First Use: Nov 18, 1995 First Use In Commerce: Nov 18,
`1995
`cigars
`
`U.S. registration
`no.
`
`2364801
`
`Register
`
`Principal
`
`Registration date
`
`07/04/2000
`
`Application date
`
`03/07/1996
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FUENTE OPUS X FF
`
`NONE
`
`Class 034. First use: First Use: Oct 1998 First Use In Commerce: Nov 1998
`[ ashtrays not made of precious metals; cigar cutters, ] cigar protectors, hu-
`midors, [ lighters not made of precious metal and matches ]
`
`U.S. registration
`no.
`
`2618671
`
`Register
`
`Principal
`
`Registration date
`
`09/10/2002
`
`Application date
`
`07/13/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FORBIDDENX
`
`NONE
`
`Class 034. First use: First Use: May 11, 2001 First Use In Commerce: May 11,
`2001
`Cigars
`
`U.S. registration
`no.
`
`3229975
`
`Register
`
`Principal
`
`Registration date
`
`04/17/2007
`
`Application date
`
`08/16/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FORBIDDEN X
`
`NONE
`
`Class 034. First use: First Use: Nov 15, 2002 First Use In Commerce: Nov 15,
`2002
`Cigars [ ; smoker's articles, namely, cigar humidifiers, ashtrays not made of pre-
`cious metal; cigar cutters; cigar protectors; lighters not made of precious metal;
`and matches ]
`
`U.S. registration
`no.
`
`3258403
`
`Register
`
`Principal
`
`Registration date
`
`07/03/2007
`
`Application date
`
`08/16/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FUENTE FORBIDDEN X
`
`NONE
`
`Class 034. First use: First Use: May 11, 2001 First Use In Commerce: May 11,
`2001
`Cigars [ ; smoker's articles, namely, cigar humidifiers, ashtrays not made of pre-
`cious metal; cigar cutters; cigar protectors; lighters not made of precious metal;
`and matches ]
`
`

`

`U.S. registration
`no.
`
`3229664
`
`Register
`
`Principal
`
`Registration date
`
`04/17/2007
`
`Application date
`
`06/12/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FUENTE FUENTE FORBIDDEN X
`
`NONE
`
`Class 034. First use: First Use: Nov 15, 2002 First Use In Commerce: Nov 15,
`2002
`Cigars[; smoker's articles, namely, cigar humidifiers, ashtrays not made of pre-
`cious metal; cigar cutters; cigar protectors; lighters not made of precious metal;
`and matches]
`
`U.S. registration
`no.
`
`3259989
`
`Register
`
`Principal
`
`Registration date
`
`07/10/2007
`
`Application date
`
`12/01/2004
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`PERFECXION X
`
`NONE
`
`Class 034. First use: First Use: Nov 30, 1996 First Use In Commerce: Nov 30,
`1996
`Cigars
`
`U.S. registration
`no.
`
`4827597
`
`Register
`
`Principal
`
`Registration date
`
`10/06/2015
`
`Application date
`
`09/03/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FORBIDDEN X
`
`NONE
`
`Class 014. First use: First Use: Nov 14, 2014 First Use In Commerce: Nov 14,
`2014
`Watches
`Class 034. First use: First Use: Jul 18, 2014 First Use In Commerce: Jul 18,
`2014
`Humidors
`
`U.S. registration
`no.
`
`4332242
`
`Register
`
`Principal
`
`Registration date
`
`05/07/2013
`
`Application date
`
`03/30/2010
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`SINFUL X
`
`NONE
`
`Class 034. First use: First Use: Feb 15, 2013 First Use In Commerce: Feb 15,
`2013
`Cigars
`
`U.S. registration
`no.
`
`6790463
`
`Register
`
`Principal
`
`Registration date
`
`07/12/2022
`
`Application date
`
`09/08/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FUENTE OPUSX
`
`NONE
`
`Class 034. First use: First Use: 2002 First Use In Commerce: 2002
`ashtrays for smokers; humidors; cigar cutters
`
`U.S. registration
`no.
`
`1989060
`
`Register
`
`Principal
`
`Registration date
`
`07/23/1996
`
`Application date
`
`07/15/1994
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`FUENTE FUENTE OPUS "X"
`
`NONE
`
`Class 034. First use: First Use: Sep 28, 1995 First Use In Commerce: Sep 28,
`1995
`cigars
`
`Attachments
`
`Notice of Opposition 97932914 XUZHTYOO.pdf(275410 bytes )
`
`Signature
`
`/Virginia L. Carron/
`
`Name
`
`Date
`
`Virginia L. Carron
`
`12/12/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`FUENTE MARKETING LTD.,
`
`
`Opposer,
`
`
`
`
`Opposition No. ___________
`
`Application Serial No. 97932914
`
`
`
`v.
`
`
`ZHIYONG XU
`
`
`Applicant.
`
`
`Mark:
`
`
`
`Filed: May 12, 2023
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, Fuente Marketing Ltd. (“Opposer” or "Fuente"), a corporation organized
`
`and existing under the laws of the Turks & Caicos Islands, believes that it is being
`
`damaged and will be damaged, by registration of the
`
`(“XUZHTYOO Mark”)
`
`shown in Serial No. 97932914 and, therefore, opposes the same. As grounds for
`
`opposition, Opposer alleges that, upon actual knowledge with respect to Fuente’s own
`
`acts and upon information and belief as to other matters.
`
`Opposer Fuente and its X Registrations and Marks
`
`1.
`
`Opposer, Fuente Marketing Ltd. is a corporation organized and existing
`
`under the laws of the Turks & Caicos Islands.
`
`2.
`
`Fuente is the owner of many federally registered and common law
`
`trademarks for numerous trademarks incorporating the mark X in association with cigars
`
`and smoker’s articles. For example, Fuente is the exclusive owner of the following
`
`registrations all of which feature the mark X:
`
`
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`Reg. No./
`Issue Date
`
`3254146
`06-19-2007
`3285314
`08-28-2007
`
`6790471
`07-12-2022
`2536633
`02-05-2002
`
`Goods/Services
`First Use in Commerce
`
`Cigars in Class 34
`First Use in Commerce: 09-08-2006
`Ashtrays, not of precious metal; Cigar
`cutters; Lighters not of precious metal in
`Class 34
`First Use in Commerce: 1-01-2006
`Humidors in Class 34
`First Use in Commerce: 1999
`Smoker's articles; ashtrays not made of
`precious metal; cigar protectors;
`humidors; lighters not made of precious
`metal in Class 34
`First Use in Commerce: 1999
`
`2347248
`05-02-2000
`
`Cigars in Class 34
`First Use in Commerce: 1-18-1995
`
`Mark
`
`X
`
`X
`
`X
`
`
`
`
`
`XXX
`
`X TO THE THIRD POWER
`
`SERIEX
`
`RISING X
`
`FUENTE FUENTE OPUS
`"X"
`
`FUENTE OPUSX
`
`3065482
`03-07-2006
`2397955
`10-24-2000
`3191113
`01-02-2007
`3171080
`11-14-2006
`1989060
`07-23-1996
`
`2495579
`10-09-2001
`
`2256200
`06-29-1999
`
`Cigars in Class 34
`First Use in Commerce: 11-30-1996
`Cigars in Class 34
`First Use in Commerce: 12-1998
`Cigars in Class 34
`First Use in Commerce: 05-30-1999
`Cigars in Class 34
`First Use in Commerce: 10-18-2005
`Cigars in Class 34
`First Use in Commerce: 09-28-1995
`
`Cigar and cigarette lighters of non-
`precious metal in Class 34
`First Use in Commerce: 09-1999
`Cigars in Class 34
`First Use in Commerce: 11-18-1995
`
`
`
`2
`
`
`
`
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`Mark
`
`Reg. No./
`Issue Date
`
`Goods/Services
`First Use in Commerce
`
`2364801
`07-04-2000
`
`Cigar protectors, humidors in Class 34
`First Use in Commerce: 11-1998
`
`FORBIDDENX
`
`FORBIDDEN X
`
`
`
`
`
`2618671
`09-10-2002
`3229975
`04-17-2007
`3258403
`07-03-2007
`
`Cigars in Class 34
`First Use in Commerce: 05-11-2001
`Cigars in Class 34
`First Use in Commerce: 11-15-2002
`Cigars in Class 34
`First Use in Commerce: 05-11-2001
`
`FUENTE FUENTE
`FORBIDDEN X
`
`PERFECXION X
`
`FORBIDDEN X
`
`SINFUL X
`
`FUENTE OPUSX
`
`
`
`3229664
`04-17-2007
`
`Cigars in Class 34
`First Use in Commerce: 11-15-2002
`
`3259989
`07-10-2007
`4827597
`10-06-2015
`
`4332242
`05-07-2013
`6790463
`07-12-2022
`
`Cigars in Class 34
`First Use in Commerce: 11-30-1996
`Watches in Class 14
`First Use in Commerce: 11-14-2014
`
`Humidors in Class 34
`First Use in Commerce: 07-18-2014
`Cigars in Class 34
`First Use in Commerce: 02-15-2013
`Ashtrays for smokers; humidors; cigar
`cutters in Class 23
`First Use in Commerce: 2022
`
`
`
`
`
`The above-referenced marks shall individually and collectively be referred to as the “X
`
`Marks”. Copies of printouts from the USPTO TESS and TSDR databases, including
`
`assignment information, are attached as Exhibit A.
`
`3.
`
`Fuente has used and continues to use its X Marks in U.S. commerce for
`
`the goods identified in each registration since at least as early the dates set forth
`
`therein.
`
`
`
`3
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`
`4.
`
`The above registrations are valid, subsisting, and—except for Registration
`
`Nos. 6790463 and 6790471—incontestable.
`
`5.
`
`Fuente worked for years and dedicated great effort to develop its flagship
`
`FUENTE FUENTE OPUS X cigar brand. In 1962, a trade embargo was placed on the
`
`island of Cuba, which posed a challenge among cigar manufacturers to find suitable
`
`leaves of tobacco to use as cigar wrappers, which is the outermost layer of a cigar. In
`
`light of this challenge, Fuente experimented with manufacturing cigars made from
`
`tobacco grown exclusively in the Dominican Republic—a task deemed impossible by
`
`many in the tobacco industry at this time. Fuente was undeterred, and this experiment,
`
`Fuente’s top priority, gained much publicity and was well known throughout the cigar
`
`industry as “Project X.” In 1992, this multi-million-dollar investment paid off when Fuente
`
`harvested the first batch of “Project X” tobacco, which it used to successfully create the
`
`first 100% Dominican puro cigar. Fuente named the cigar the FUENTE FUENTE OPUS
`
`X, with the “X” signifying its momentous “Project X” development effort.
`
`6.
`
`The first FUENTE FUENTE OPUS X cigar, which was introduced to
`
`market in 1995, was described by Forbes magazine as “a 100% Dominican cigar that
`
`Castro himself would envy.” Fuente has since expanded its FUENTE FUENTE OPUS X
`
`cigar offerings to include a full product line of cigars manufactured with exclusively
`
`Dominican tobacco, including the FORBIDDEN X, the FUENTE FUENTE OPUS X 20th
`
`Anniversary, the FUENTE FUENTE OPUS X Angel’s Share PERFECXION X, and the
`
`FUENTE FUENTE OPUS X Oro Oscuro Belicso XXX. These cigars, and others in the
`
`FUENTE FUENTE OPUS X product line, are each sold in association with two or more
`
`of the X Marks.
`
`
`
`4
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`
`7.
`
`Each of Fuente’s X Marks share the common or core characteristic “X,”
`
`which unites them as a family. Fuente has widely used and continues to use its “X”
`
`mark (U.S. Registration Nos. 3254146, 3285314 and 6790471) (the ““X” mark”) alone
`
`and together with the other X Marks to sell, advertise, and promote its cigars and
`
`smokers’ articles.
`
`8.
`
`Fuente’s cigars bearing the X Marks are among the most important and
`
`high-profile products in the cigar industry. These cigars have been consistently ranked
`
`in the 90's (on a scale of up to 100) by Cigar Insider and Cigar Aficionado, two
`
`prominent cigar publications, and have received the highest rating of any Dominican
`
`cigar ever made. In 2005, the FUENTE FUENTE OPUS X Double Corona cigar was
`
`named “The Best Cigar of the Year” by Cigar Aficionado, and in 2007, the FUENTE
`
`FUENTE OPUS X PerfecXion No. 2 was ranked second best. In 2019, the FUENTE
`
`FUENTE OPUS X brand was named the third-hottest cigar brand by Cigar Insider, as
`
`the result of a survey of cigar shop owners across the United States. To date, Fuente’s
`
`cigars bearing the X Marks continue to be consistently ranked among the best in the
`
`world. In 2020, Fuente’s FUENTE FUENTE OPUS X Double Robusto cigar was ranked
`
`second best in the world by Cigar Aficionado. As a result of such acclaim, the X Marks
`
`are among the most widely known and famous trademarks in the cigar industry.
`
`9.
`
`Demand for Fuente’s cigars bearing the X Marks far exceeds supply,
`
`which is hundreds of thousands of cigars per year. Due to the popularity of the cigar, it
`
`is not uncommon for Fuente’s cigars bearing the X Marks to sell for more than the
`
`suggested retail price.
`
`
`
`5
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`
`10. Since 1995, many millions of dollars’ worth of Fuente’s cigars bearing the
`
`X Marks have been sold in the United States.
`
`11. Substantial amounts of money have been spent advertising and
`
`promoting Fuente’s cigars and smoker’s articles bearing the X Marks in the United
`
`States since 1995.
`
`12.
`
`Fuente’s cigars and smokers’ articles bearing the X Marks have been
`
`widely advertised and promoted throughout the United States in many forms of media
`
`including radio, DVDs, documentary films, all forms of printed publications, and the
`
`Internet on behalf of Fuente and by many others through unsolicited media coverage.
`
`13.
`
`Fuente’s cigars and smoker’s articles bearing the X Marks have been the
`
`subject of extensive media coverage, including in Tobacconist magazine and Cigar
`
`Aficionado, as well as in such general publications as Forbes, The Wall Street Journal,
`
`The Robb Report, Black Enterprise, Maxim, Playboy, Selecta, Wine Spectator, Esquire,
`
`and other publications.
`
`14.
`
`Fuente’s cigars and smokers’ articles bearing the X Marks also have
`
`received extensive attention on the Internet, including interactive discussions on Cigar
`
`Aficionado's World Wide Web page.
`
`15.
`
`Fuente’s cigars and smokers’ articles bearing the X Marks have been
`
`regularly and extensively promoted through industry-wide trade shows and events such
`
`as “Big Smokes,” which are held every year and attract thousands of cigar aficionados
`
`and consumers.
`
`
`
`6
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`
`16.
`
`In addition, because the Fuente’s cigars and smokers’ articles bearing the
`
`X Marks are so famous and in such high demand, they are the subject of numerous
`
`charity events and auctions across the United States.
`
`17. By reason of the advertisement and promotion, unsolicited media
`
`coverage, customer word-of-mouth, and sales of Fuente’s cigars and smokers’ articles
`
`bearing the X Marks, Fuente has developed, at great effort and expense, exceedingly
`
`valuable goodwill with respect to each of the X Marks and the entire family of X Marks.
`
`18.
`
`For all these reasons, Fuente’s X Marks, including the mark “X,” have
`
`become among the most well-known, famous, and distinctive marks in the cigar
`
`industry. As such, the public has come to recognize (i) each of Fuente’s X Marks as
`
`indicative of the origin of Fuente’s products and (ii) marks combining a prominent “X”
`
`with other words or symbols, when applied to cigars and smokers’ articles, as a family
`
`of X Marks uniquely associated with Fuente and Fuente’s products.
`
`19. Each of Fuente’s X Marks and the family of X marks was well established
`
`and famous long before Applicant’s filing date.
`
`Applicant and Its Mark
`
`20.
`
`Zhiyong Xu (“Applicant”) is an individual of China with an address listed as
`
`No. 10, Changpu, Balong Community, Licheng Street, Xianyou, CHINA 351100.
`
`21. Applicant is the listed owner of Application Serial No. 97932914,
`
`filed on May 12, 2023, for the XUZHTYOO Mark for: “Ashtrays; Hookahs; Cigar
`
`cases; Cigar cutters; Cigar lighters; Cigar punchers; Cigarette filters; Cigarette
`
`lighters; Cigarette tubes; Electronic cigarette lighters; Kerosene lighters for
`
`
`
`7
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`smokers; Lighters for smokers; Tobacco grinders” in Class 34, based on an
`
`alleged date of first use of April 26, 2023.
`
`
`
`Likelihood of Confusion, 15 U.S.C. § 1052(d)
`
`22.
`
`Fuente repeats and realleges every allegation set forth in the paragraphs
`
`above.
`
`23.
`
`Fuente has continuously used and continues to use each of its X Marks,
`
`including the X mark, and its family of X Marks in commerce in connection with cigars
`
`and smoker’s goods since well prior to the May 12, 2023 filing date of Applicant’s
`
`Application Serial No. 97932914 for the XUZHTYOO Mark and the April 26, 2023 first-
`
`use/use-in-commerce date alleged by Applicant.
`
`24.
`
`The goods of Fuente’s X Marks in International Class 34 are cigars, cigar
`
`cutters, other smoker’s articles, and accessories.
`
`25.
`
`The International Class 34 goods of Applicant’s XUZHTYOO Mark include
`
`cigar cutters, smoker’s articles and accessories.
`
`26.
`
`The International Class 34 goods of Applicant’s XUZHTYOO Mark are
`
`sold or intended to be sold to smokers.
`
`27.
`
`The goods of Fuente’s pleaded registrations are sold to smokers.
`
`28.
`
`The International Class 34 goods of Applicant’s XUZHTYOO Mark are
`
`similar to the goods of Fuente’s X Marks – they are all cigar accessories and smoker’s
`
`articles, and accessories.
`
`29.
`
`The first letter of Applicant’s mark is the letter “X”.
`
`
`
`8
`
`

`

`30.
`
`The “tail” of the letter “X” in Applicant’ mark extends to the last letter of the
`
`Notice of Opposition
`Application Serial No. 97932914
`
`
`31. As such, the most prominent part of Applicant’s mark is the leading letter
`
`
`
`mark.
`
`“X”.
`
`32. Both Fuente’s X Marks and Applicant’s mark feature an X or X design.
`
`33. Applicant’s mark includes Fuente’s “X” mark.
`
`34. Applicant’s XUZHTYOO Mark is similar to Fuente’s X Marks.
`
`35. Applicant’s mark includes Fuente’s distinctive “X” mark, the characteristic
`
`common to each of Fuente’s X Marks.
`
`36. Potential purchasers, upon seeing Applicant’s XUZHTYOO Mark, are
`
`likely to mistakenly believe that Applicant’s cigar accessories and smoker’s articles
`
`originated with or are connected or associated with, or sponsored, licensed, or
`
`approved by Fuente.
`
`37. Since well before the May 12, 2023 filing date of Applicant’s application,
`
`Fuente and its predecessors-in-interest and licensees have used the X Marks in
`
`commerce in the United States in connection with the advertising, promotion, and sale
`
`of cigars and smoker’s articles.
`
`38.
`
`Fuente’s pleaded registrations issued well before the May 12, 2023 filing
`
`date of Application No. 97932914 and the April 26, 2023 first-use/use-in-commerce date
`
`alleged by Applicant.
`
`39.
`
`In view of the similarity of the parties’ marks and the related nature of the
`
`parties’ goods, Applicant’s mark so resembles Fuente’s previously used and registered
`
`marks shown above as to be likely to cause confusion, or to cause mistake, or to
`
`
`
`9
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`deceive in violation of Section 2(d), 15 U.S.C. § 1052(d) with respect to Fuente’s “X”
`
`marks (Reg Nos. 3254146, 3285314, and 6790471) and/or family of X Marks.
`
`Fraud in the Application
`
`40.
`
`Fuente repeats and realleges each allegation set forth in the preceding
`
`paragraphs.
`
`41. On April 26, 2023 Applicant signed a declaration making the following
`
`statements as part of its 97932914 Application:
`
`The applicant is using the mark in commerce on or in connection with the
`
`identified goods/services.
`
`In International Class 034, the mark was first used by the applicant or the
`
`applicant's related company or licensee predecessor in interest at least as
`
`early as 04/26/2023, and first used in commerce at least as early as
`
`04/26/2023, and is now in use in such commerce.
`
`The mark is in use in commerce and was in use in commerce as of the
`
`filing date of the application on or in connection with the goods/services in
`
`the application;
`
`The signatory being warned that willful false statements and the like are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and
`
`that such willful false statements and the like may jeopardize the validity of
`
`the application or submission or any registration resulting therefrom,
`
`declares that all statements made of his/her own knowledge are true and
`
`all statements made on information and belief are believed to be true.
`
`
`
`10
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`
`42. Applicant’s mark was not in use in commerce in the U.S. in association
`
`with “cigar cases” on the date the declaration was signed.
`
`43. Applicant’s mark is not currently in use in commerce in the U.S. in
`
`association with “cigar cases.”
`
`44. Applicant’s mark was not in use in commerce in the U.S. in association
`
`with “cigar cutters” on the date the declaration was signed.
`
`45. Applicant’s mark is not currently in use in commerce in the U.S. in
`
`association with “cigar cutters.”
`
`46. Applicant’s mark was not in use in commerce in the U.S. in association
`
`with “cigar punches” on the date the declaration was signed.
`
`47. Applicant’s mark is not currently in use in commerce in the U.S. in
`
`association with “cigar punches.”
`
`48. Applicant’s mark was not in commercial use in the U.S. for some of the
`
`goods identified in the application on the date the declaration was signed.
`
`49. Applicant’s mark is not currently in use in commerce in the U.S. in
`
`association with all goods listed in its application.
`
`50. Applicant knew at the time Applicant made its declaration that Applicant’s
`
`mark was not in use in commerce in the U.S. on all goods listed in its application.
`
`51. Applicant made the false material statements, identified above, as to the
`
`use of the mark shown in the 97742239 Application with the intent to procure a
`
`registration to which Applicant is not entitled.
`
`52. Applicant’s false material statements were made knowingly.
`
`
`
`11
`
`

`

`Notice of Opposition
`Application Serial No. 97932914
`
`
`
`
`53.
`
`The PTO relied on such knowingly false statements of material fact in
`
`approving the 97742239 Application for publication.
`
`54. Based on the conduct described above, Applicant committed fraud on
`
`the PTO.
`
`WHEREFORE, Opposer Fuente believes that it will be damaged by use and
`
`registration of the XUZHTYOO Mark shown in Application Serial No. 97932914 and
`
`requests that this opposition be sustained and that registration of the mark in
`
`Application Serial No. 97932914 be denied.
`
`A filing fee has been submitted electronically. If the filing fee is found to be
`
`insufficient for any reason, please charge such deficiency to Deposit Account
`
`No. 06-0916.
`
`
`
`
`
`
`
`Dated: December 12, 2023
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Virginia L. Carron/
`Virginia L. Carron
`FINNEGAN, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: (202) 408-4000
`
`docketing@finnegan.com
`virginia.carron@finnegan.com
`TTAB-Legal-Assistants@finnegan.com
`
`Attorney for Opposer
`FUENTE MARKETING LTD.
`
`
`
`12
`
`

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