Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

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ESTTA Tracking number: ESTTA270221
Filing date: 03/04/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91185180
Party Defendant
NICARAGUA TOBACCO IMPORTS, INC.
Correspondence
Address
Jose Gutman
Fleit, Gibbons, Gutman, Bongini, PL
551 N.W. 77th Street
Boca Raton, FL 33487
UNITED STATES
tmboca@fggbb.com
Submission Opposition/Response to Motion
Filer's Name Jose Gutman
Filer's e-mail tmboca@fggbb.com
Signature /Jose Gutman/
Date 03/04/2009
Attachments 0_Applicant's Response Brief 30409.pdf ( 22 pages )(94384 bytes )
1_Applicant's Response Brief and Exhibits.pdf ( 8 pages )(1457810 bytes )
2_Applicant's Response Brief and Exhibits.pdf ( 4 pages )(1978354 bytes )
3_Applicant's Response Brief and Exhibits.pdf ( 9 pages )(870916 bytes )
4_Applicant's Response Brief and Exhibits.pdf ( 13 pages )(2575537 bytes )
5_Applicant's Response Brief and Exhibits.pdf ( 19 pages )(678028 bytes )
6_Applicant's Response Brief and Exhibits.pdf ( 12 pages )(366433 bytes )
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD


____________________________________ /

TATUAJE CIGARS, INC. Opposition No. 91185180

Opposer, Appl. Ser. No.: 77/359,141
v.
NICARAGUA TOBACCO IMPORTS, INC., Mark: TATTOO

Applicant.
____________________________________ /

APPLICANT’S RESPONSE TO
OPPOSER’S MOTION FOR SUMMARY JUDGMENT

Applicant Nicaragua Tobacco Imports, Inc., (“Applicant”), through its
undersigned counsel, hereby responds to the Summary Judgment Motion of
Opposer Tatuaje Cigars, Inc., (“Opposer”) in its Opposition of the Mark TATTOO.
(“Applicant’s Mark”).
I. Introduction
Applicant is a well established producer and distributor of cigars that
routinely develops and promotes new in-house brands of cigars for sale to the
general public. Applicant had identified, without actual knowledge of Opposer’s
mark TATUAJE, the mark TATTOO for cigar products. The USPTO Examiner
approved the mark TATTOO for registration. Once the Applicant’s mark was
published for opposition, Opposer attempted to contact Applicant regarding the
Applicant’s application and the Applicant was contacted by an associate of both
the Applicant and Opposer regarding the Application for the mark TATTOO. This
was Applicants first actual knowledge of Opposer’s mark.
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The Applicant investigated Opposer’s product after this contact. Upon
investigation, the Applicant noticed that Opposer’s cigars marketed under the
“TATUAJE” brand were contained in boxes bearing the “TATUAJE” Mark. The
Applicant further noticed that the boxes containing Opposer’s products also had
other marks adjacent to the “TATUAJE” mark, including the term “Puros
Cubanos,” which translates to “Pure Cubans,” and a stylized “tobacco leaf stick”
logo that has been established by the Cuban Government as an indicator of
Genuine Cuban Cigars. The Applicant was confused by these markings since
the sale of Genuine Cuban Cigars is illegal in the United States. The Applicant
realized that this was clearly a deceptive sales practice by the Opposer to cause
purchasers to believe that these products were Genuine Cuban Cigars, a
distinction that, if true, would raise their demand and value among cigar
aficionados.
II. Stipulated Facts
1) Applicant agrees that Spanish is a commonly spoken and understood
language in the United States.

2) Applicant agrees that the goods and services specified in the Federal
Registration for the TATUAJE mark are similar to the subject trademark
application for TATTOO

3) The Applicant agrees that the channels of trade commonly used for the goods
specified in the Federal Registration for the TATUAJE mark are similar to the
channels of trade commonly used for the goods specified in the subject
trademark application for TATTOO.
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III. Contested Facts
The Applicant asserts that Summary Judgment is improper in this case due
to the number of outstanding contested facts that require further fact finding and
adjudication. The contested facts in this matter by issue are listed below and
discussed in detail thereafter.

A. Contested Facts Concerning No Confusing Similarity
The Applicant asserts there are contested underlying facts to support a
finding of confusing similarity between Applicant’s mark TATTOO and Opposer’s
mark TATUAJE, and in particular underlying facts to be used in a proper analysis
under the Doctrine of Foreign Equivalents. These facts include:

a) Whether the connotations of TATTOO and TATUAJE are sufficiently
similar, given the multiple translations of TATUAJE into English (and also
the multiple translations of TATTOO into Spanish), to cause confusion to
an observer in the marketplace.

b) Even assuming a sufficient similarity of connotation between TATTOO
and TATUAJE, would a consumer stop and think to translate TATUAJE
into TATTOO when encountering the mark TATTOO as they appear in
their channels of commerce before the consumer made a purchase
decision.

c) Whether the “Sight and Sound” of TATTOO and TATUAJE are
sufficiently similar, even when considered in conjunction with any similarity
in their connotation, to be likely to cause confusion.

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B. Contested Facts concerning Affirmative Defense of “Unclean
Hands”
1) Does Opposer’s use of “Puros Cubanos,” which translates to “Pure Cubans,”
in close proximity to and in conjunction with the “Tatuaje” mark on their product
unfairly deceives consumers to believe that Opposer’s products are “Pure
Cuban” tobacco cigars?

2) Does Opposer’s use of the stylized “tobacco leaf stick” logo established by the
Cuban Government to identify genuine Cuban cigars, as used in conjunction with
the term “Puros Cubanos,” and in close proximity to and in conjunction with the
“Tatuaje” mark on their product, unfairly deceives consumers to believe that
Opposer’s products are “Pure Cuban” tobacco cigars?

3) Does Opposer’s specimen provided to the USPTO with Opposer’s Statement
of Use to obtain Opposer’s registration of its mark Tatuaje, misrepresent
Opposer’s actual use of its mark Tatuaje such that any registration resulting
therefrom should not be given any legal force; where Opposer’s use of its mark
Tatuaje at the time of its Statement of Use was actually used in close proximity to
and in conjunction with the term “Puros Cubanos” and in close proximity to and in
conjunction with the stylized leaf logo established by the Cuban Government to
identify genuine Cuban cigars, thereby unfairly deceiving consumers to believe
that Opposer’s product is a “Pure Cuban” tobacco cigar product from Cuba?
IV. Background Statement of Facts
A. Applicant Background, Selection and Promotion of Mark
Applicant Nicaragua Tobacco Imports, Inc., has been in the business of
producing and importing cigars for 7 years. Affidavit of Alberto Gutman, Exhibit
A, Paragraph 1. Applicant is listed as the owner of 24 trademark applications for
tobacco cigars and associated products. Id. at Paragraph 3 and Trademark
Electronic Search System printout, Exhibit B. Applicant currently owns 11
trademark registrations for Cigars and Cigar Products. Id. Identifying and
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promoting new brand names for tobacco cigars has been a routine part of
Applicants business for 7 years. Affidavit of Alberto Gutman, Exhibit A,
Paragraph 1.

Applicant identified and began development of the TATTOO name as a
mark for tobacco cigars in December 2007 without knowledge of Opposer’s
brand. Affidavit of Alberto Gutman, Exhibit A, Paragraph 4. Applicant filed the
currently opposed intent-to-use trademark application for the TATTOO mark that
same month. The Applicant then expended considerable effort over the following
six months to develop a product to be marketed under the TATTOO brand and to
register a related Internet domain name, “tattoocigars.com.” Id. At paragraphs 5-
6 and 15. The intent-to-use trademark application that is the subject of this
opposition was approved by the Examiner, who performed a search of the
Trademark records using the word TATTOO, which should have uncovered the
Opposer’s registration. See, Exhibit K, XSearch Search Summary for U. S.
Serial No: 77359141.

After expending considerable effort over six months to develop the TATTOO
product and to attempt to secure the trademark, Applicant received what were
thought to be unsolicited telephone sales calls from Peter Johnson of Tatuaje
Cigars. Affidavit of Alberto Gutman, Exhibit A, Paragraph 9. Despite Opposer’s
assertion to the contrary, Applicant was completely unfamiliar with Tatuaje
Cigars. Applicant did not return these calls from the unknown caller. Id.
Opposer then contacted Applicant through Jonathan Drew, a person known to
the Applicant. Jonathan Drew explained the Opposer’s position and concerns
regarding the TATTOO mark. Id. at paragraph 10.

After discussions in settlement negotiations with Opposer, the Applicant
sought to investigate the TATUAJE brand. Applicant visited Opposer’s web site
“tatuajecigars.com” and found only one store listed in the Miami area that sells
Tatuaje cigars, “SABOR HAVANA CIGARS.” This store is far from Miami’s “Little
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Havana” area and is not located in a geographic area that cigar aficionados
would visit to investigate cigars. Id. at paragraph 21.

Opposer asserts that “it is a virtual certainty that Applicant had actual
knowledge of Opposer’s rights as well.” Motion for Summary Judgment, page 3,
third paragraph. Despite the “small world” that forms the cigar industry, Applicant
does not know all of the participants, especially a participant with one retailer
located in the cigar aficionado rich Miami area.
B. Opposer’s Unclean Hands
Opposer, and its predecessor in interest Mr. Peter Hassell Johnson, as
early as 2006, and to the present time, have been using the trademark TATUAJE
on cigar boxes with the mark being visible to consumers in close proximity to and
in conjunction with a stylized “tobacco leaf stick” logo and the term “PUROS
CUBANOS”. Affidavit of Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27;
and see also Exhibits F, I, and L. The term “PUROS CUBANOS” means “PURE
CUBANS”. Affidavit of Alberto Gutman, Exhibit A, paragraph 30. The placement
of the words “PUROS CUBANOS” on the cigar box and in close proximity to the
trademark TATUAJE, as shown in Exhibits F, I, and L, is aimed to create an
image in the consumer’s mind that the TATUAJE cigar box contains PURE
CUBAN tobacco cigars.

The Cuban Government, by its commercial enterprise HABANOS, S.A.,
has engaged in a trademark strategy since 1993 to certify products as being
genuine and legitimate by locating in close proximity to, and in conjunction with,
its cigar trademarks a stylized “tobacco leaf stick” logo and optionally also the
term “HABANOS”. Affidavit of Alberto Gutman, Exhibit A, paragraph 29; and see
also Exhibits R and S. Also see Declaration of Jose Gutman, Exhibit M,
paragraph 2; and see also Exhibit N, on page 6, fourth paragraph. The
trademark TATUAJE located on Opposer’s cigar box in close proximity to the
same stylized “tobacco leaf stick” logo mark to the left of the words “PUROS
CUBANOS” is aimed by Opposer to unfairly deceive consumers to believe that
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Opposer’s cigar product sold under the trademark TATUAJE is a “Pure Cuban”
tobacco cigar product from Cuba. Opposer’s cigars sold in the box under the
trademark TATUAJE are not “Pure Cuban” tobacco cigars and they are not from
Cuba. Affidavit of Alberto Gutman, Exhibit A, paragraph 28; and see also Exhibit
T. This intentional tactic by Opposer is intended to deceive consumers regarding
the geographic origin, character, quality, composition, and/or source of the
Opposer’s cigars sold under the trademark TATUAJE. This continuous
deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE
for at least nearly four years (since 2006 to present), precludes Opposer from
seeking relief from this Board under the equitable doctrine of “unclean hands”.

Additionally, due to this continuous deceptive, or deceptively
misdescriptive, use of its mark TATUAJE for at least nearly four years (since
2006 to present), and subject to Applicant completing its discovery on Opposer,
there is a continuous pattern of this deceptive use that, is reasonable to infer,
was likely ongoing as early as 2004 (on or about when Mr. Peter Hassell
Johnson was granted the registration of the trademark TATUAJE) and as early
as 2003 (on or about when Mr. Peter Hassell Johnson submitted its specimen of
actual use along with the application for registration of its trademark TATUAJE).
Opposer’s specimen provided to the USPTO did not show the deceptive
certification marks, i.e., the stylized “tobacco leaf stick” logo mark to the left of
the words “PUROS CUBANOS”. Opposer’s specimen, and signed application,
provided to the USPTO, and being relied upon by the USPTO up until the date of
registration of the mark Tatuaje, misrepresented Opposer’s actual use of its
mark Tatuaje thereby precluding Opposer from now seeking relief from this
Board under the equitable doctrine of “unclean hands”.
C. Opposer’s Misrepresentations to Applicant
Applicant contacted Opposer and discussed a settlement to the dispute
regarding the TATTOO mark. Affidavit of Alberto Gutman, Exhibit A, Paragraph
13. Opposer and Opposer’s Attorney, in communications directly to the
Applicant and in their Motion for Summary Judgment, continue to falsely assert
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that since it is the owner of a registered trademark for “TATUAJE,” it also
“already owns trademark rights in the mark TATTOO.” Opposer’s Motion for
Summary Judgment, Exhibit J, e-mail from Brian Swain to Applicant, first
paragraph; also referred to in Motion for Summary Judgment, page 3, section “B”
second paragraph and last paragraph continuing onto page 4. This is clearly a
misrepresentation since Opposer owns no rights in TATTOO itself.

Although Applicant disagrees with the validity of the assertion presented in
the instant Opposition proceeding, the most Opposer can assert is that TATTOO
could be found confusingly similar to its TATUAJE mark whereby Opposer could
halt others from using the TATTOO mark.
D. Discovery Conference Agreements
Opposer’s motion for Summary Judgment mentions an agreement made
during the discovery conference in this action. Opposer’s Motion for Summary
Judgment, page 4, first full paragraph. In response to Opposer’s transmitted
case law, the Applicant did not supply further legal research to Opposer since the
cases Opposer sent to Applicant’s attorneys already explained the legal theories
the Applicant intended to rely upon.
V. Argument
A. Proper Analysis for the Doctrine of Foreign Equivalents
Opposer asserts that the TATTOO mark is confusingly similar to the
“TATUAJE” mark primarily based upon a similarity of connotation as recognized
under the Doctrine of Foreign Equivalents. Motion for Summary Judgment,
pages 7-8. Opposer asserts that “it is likely that a significant portion of American
consumers would stop and translate Opposer’s Mark into its English equivalent”
and that “[t]he translated meaning of TATUAJE is not obscure.” Id.

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Applicant asserts that Opposer’s arguments misstate the analysis to be
performed under the Doctrine of Foreign Equivalents and also misstate certain
facts concerning the translation of TATUAJE and TATTOO.

To begin, the Applicant agrees with Opposer’s assertion that Spanish is a
commonly understood language in the United States. However, the Applicant
disagrees with Opposer’s assertions regarding the uncontestable facts
underlying the analysis required under the Doctrine of Foreign Equivalents.

The Doctrine of Equivalents is used to evaluate the similarity of connotation
between foreign word and English word marks. Palm Bay Imports v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005).
“When it is unlikely that an American buyer will translate the foreign mark and will
take it as it is, then the doctrine of foreign equivalents will not be applied.” Id.
Words from modern languages are generally translated to English under the
doctrine of foreign equivalents, but the doctrine “is not an absolute rule and
should be viewed merely as a guideline.” Id.

Even when determining similarity of connotation under the Doctrine of
Foreign Equivalents, a complete inquiry into the likelihood of confusion between
a foreign word mark and an English word mark requires one to “consider the
marks in their entireties in terms of sound, appearance, meaning and commercial
impression.” In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).

1. Issues of Fact concerning whether “consumers would stop and
translate TATUAJE upon seeing the TATTOO mark
Opposer seems to assert that simply because Spanish is a commonly
understood and spoken language in the United States, “a significant portion of
American consumers would stop and translate Opposer’s Mark into its English
equivalent.” Opposer’s Motion for Summary Judgment, page 7, last paragraph.
The Applicant asserts that this is not the proper test to apply under the Doctrine
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of Foreign Equivalents. The Applicant further asserts that a proper analysis
using test required under the Doctrine of Foreign Equivalents requires resolution
of disputed underlying facts.

The Applicant asserts that TATUAJE is not common Spanish word and
that a Spanish speaking consumer would not typically “stop and translate” the
word mark TATUAJE into English. See, Affidavit of Alberto Gutman, paragraphs
2 and 16.

2. Translation of TATUAJE and the meaning of TATTOO
The Opposer asserts that “it is indisputable that ‘tattoo’ is the English
equivalent of the Spanish word ‘tatuaje.’” Opposer’s Motion for Summary
Judgment, page 7, third full paragraph under section “i.” In contrast to the
Opposer’s assertion, the Applicant points out that “tatuaje” has multiple meanings
in Spanish each with its associated separate translations and that “tattoo” also
has multiple meanings in English, which each translate into different Spanish
word or phrases.
a. TATUAJE has several meanings in Spanish and
translations into English
The Opposer asserts that “it is indisputable that ‘tattoo’ is the English
equivalent of the Spanish word ‘tatuaje.’” Opposer’s Motion for Summary
Judgment, page 7, third full paragraph under section “i.” Opposer supplies
several simplified online dictionary translations for “tatuaje.” Opposer’s Motion
for Summary Judgment, Declaration of Brennan C. Swain, paragraph 2, referring
to Motion’s Exhibit H.

In contrast to Opposer’s assertion, the Spanish word “tatuaje” has at least
two meanings, “1. the action and effect of tattooing,” and “2. circle or mark that is
left around the wound from a gun fired in very close proximity.” Affidavit of
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Alberto Gutman, Exhibit A, Paragraph 18. Therefore, “tatuaje” refers to either a
“tattoo” or to a “gun powder burn.”

These two meanings show that the Spanish word “tatuaje” has a broader
meaning than the English word “tattoo.” In English, “the action and effect of
tattooing” and a “gun powder burn” are two very different things. The Applicant
asserts that comparing “tattoo” to “gun powder burn” yields quite dissimilar
connotations, resulting in “tatuaje” and “tattoo” not being “synonyms, much less
exact synonyms.” In re Buckner Enterprises Corp., 6 USPQ2d 1316, 1317
(TTAB 1987). In Buckner, the Board evaluated the similarity of meaning between
the marks PALOMA and DOVE. The meaning of PALOMA was found to include
“dove” and “pigeon.” In comparing “pigeon” to the mark DOVE, the terms were
found to be not exact synonyms. In comparing these two marks, it was held that
“the Board must apply an equally stringent test in judging similarity of meaning
between a foreign word (paloma) and an English word (dove) as it would
between two English words (e.g. pigeon and dove).” Id.

The Applicant further asserts that the multiple meanings of the Spanish
word “tattoo” reduce the strength of the “similarity of connotation” between the
TATUAJE mark and the TATTOO mark. The Applicant asserts that the strength
of the “similarity of connotation” between these marks and the overall analysis of
the likelihood of confusion between these marks therefore at least involves
disputed facts concerning the translation that a consumer would use when
viewing the TATUAJE mark, if in fact such a translation is even made.
b. TATTOO has Several Meanings and Translations into
Spanish
In evaluating the similarity of connotation between TATTOO and
TATUAJE, it is also relevant to consider the several meanings that the word
“tattoo” has in the English language. One dictionary identifies the following
definitions of “tattoo:” “1: a rapid rhythmic rapping. 2 a: a call sounded shortly
before taps as notice to go to quarters. b: outdoor military exercise given by
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troops as evening entertainment.” VERB “transitive verb: to beat or rap
rhythmically on: drum on. intransitive verb: to give a series of rhythmic taps”. In
addition, the final definitions are “1 : the act of tattooing : the fact of being
tattooed 2 : an indelible mark or figure fixed upon the body by insertion of
pigment under the skin or by production of scars.” Affidavit of Alberto Gutman,
Exhibit A, Paragraph 17.
c. Multiple Translations Leave Factual Issues Regarding
The Similarity Of Connotation
The Applicant asserts that these multiple meanings for “tattoo” similarly
show that the meaning of “tattoo” in English is broader than the meaning of the
Spanish word “tatuaje.” For reasons similar to those enumerated above with
regards to the multiple meanings of the word “tatuaje,” the Applicant asserts that
the comparison between TATUAJE and TATTOO show that these terms do not
have synonymous meanings and therefore there are at least contested issues of
fact regarding which meaning of “tattoo” and “tatuaje” a consumer would use
when encountering these terms as trademarks.
B. Dissimilar Sight and Sound at Least Leave Disputed Issue of
Fact
The “confusing similarity” analysis further requires an analysis of the
similarity of the “sight and sound” of the mark, even when comparing similarity of
connotation under the Doctrine of Foreign Equivalent. The Applicant asserts that
the sight and sound of TATUAJE and TATTOO are quite different and that no
likelihood of confusion would exist based on the sight and sound of these marks
alone. TATUAJE has seven (7) letters while TATTOO has six (6) letters clearly
forming two syllables.

The Applicant’s pronunciation of TATUAJE uses three (3) syllables to create
“ta-tüa-je,” as is the common pronunciation by Spanish speakers. Affidavit of
Alberto Gutman, Exhibit A, Paragraph 20. The Applicant points out that in the
common Spanish pronunciation of “tatuaje,” the second syllable of TATUAJE
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ends in an “ah” sound while the second syllable of “tattoo” clearly ends in an ‘oo”
sound.

The Applicant admits that the sound of a mark is not generally limited to the
common pronunciation of a word. However, the Applicant asserts that under the
Doctrine of Foreign Equivalents, the consumer is recognizing a foreign word and
translating it to its English equivalent. The Applicant asserts that in recognizing
this translation, a speaker of the foreign language is very likely to place in his or
her mind the common pronunciation of a foreign word to be translated than would
the case when comparing marks based on English or coined terms.

The Opposer apparently uses a pronunciation of TATUAJE that has four
syllables, dividing the word into “TA-TU” and “A-JE.” The Applicant asserts that a
pronunciation of TATUAJE with four syllables as opposed to the obvious 2
syllables of TATTOO further reduces the similarity of the sound of these marks.

With regards to similarity of sight, the Applicant asserts that TATUAJE and
TATTOO are quite different in sight as is readily noticed by observation. The
Opposer only asserts that the first syllables of the two words, which only contain
three (3) letters, are similar in sight. Opposers Motion for Summary Judgment,
page 8, penultimate paragraph, section “ii.” The remaining four (4) letters of
TATUAJE, over half of the Opposer’s mark, therefore differ from the remaining
three (3) letters of TATTOO.
C. Unclean Hands
1) Opposer’s use of “Puros Cubanos,” in close proximity to and in
conjunction with the “Tatuaje” mark on their product unfairly deceives
consumers to believe that Opposer’s product is a “Pure Cuban” tobacco
cigar product.

Opposer has been using its mark TATUAJE in connection with its cigar
products, on information and belief as early as its date of its application for
trademark registration of the mark in the USPTO, and currently continues to
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similarly use its mark, in close proximity to and in conjunction with the words
“Puros Cubanos”, as shown in the attached Exhibits F, I and L. Affidavit of
Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, l,
and L.

The photo images shown in Exhibits F, I and L represent views of the Opposer’s
cigar box as offered for sale and sold by Opposer at least as early as the year
2006. Exhibit F shows a photo image of Opposer’s cigar box as currently offered
for sale and sold by a local cigar retail store in Miami. Affidavit of Alberto
Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, I, and L.
As illustrated in Exhibits F, I, and L, the words “Puros Cubanos” are prominently
visible in close proximity to the Opposer’s mark TATUAJE on the same side of
the cigar box containing Opposer’s cigars. Note in particular that the photo
image shown in Exhibit I also includes a signature on the box. This is the
signature of Peter Johnson who was the applicant and registrant of the
trademark TATUAJE.

The words “Puros Cubanos” translate from Spanish to English as “Pure
Cubans”. Affidavit of Albereto Gutman, Exhibit A, paragraph 30. The indication
of these words on Opposer’s cigar box and in close proximity to Opposer’s
trademark TATUAJE is that the cigars contained in the box and sold under the
trademark TATUAJE are “Pure Cuban” tobacco cigars. That is, the Opposer
sells its Tatuaje cigars as pure Cuban tobacco cigars from Cuba. Cigars from
Cuba are world known for being of high quality tobacco and craftsmanship.
Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure
Cuban” tobacco cigars. These cigars are not from Cuba since selling Cuban
cigars is illegal in the United States. Affidavit of Alberto Gutman, Exhibit A,
paragraphs 28.

Opposer’s affirmative designation of its cigar product as being “PURE
CUBANS” is an intentional tactic by Opposer to unfairly deceive consumers to
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believe that Opposer’s product sold under the trademark TATUAJE is a “Pure
Cuban” tobacco cigar product. That is, the trademark TATUAJE located in close
proximity to the words “PUROS CUBANOS” is aimed by Opposer to deceive
customers and consumers regarding the geographic origin, character, quality,
composition, and/or source of the Opposer’s cigars sold under the trademark
TATUAJE. This continuous deceptive, or deceptively misdescriptive, use by
Opposer of its mark TATUAJE for at least nearly four years (since 2006 to
present), precludes Opposer from seeking relief from this Board under the
equitable doctrine of “unclean hands”.

2) Opposer’s use of the stylized “tobacco leaf stick” logo, also used in
conjunction with the term “Puros Cubanos”, and in close proximity to and
in conjunction with the “Tatuaje” mark on their product, unfairly deceives
consumers to believe that Opposer’s product is a “Pure Cuban” tobacco
cigar product from Cuba.

Opposer has been using its mark TATUAJE in connection with its cigar
products as early as 2006, and currently continues to similarly use its mark, in
close proximity to and in conjunction with a “tobacco leaf stick” logo, as shown in
the attached Exhibits F, I, and L. Affidavit of Alberto Gutman, Exhibit A,
paragraphs 23, 26 and 27, describing Exhibits F, I and L. In the photo images
shown in Exhibits F, I, and L, the “tobacco leaf stick” logo is prominently visible
(on the left side of the words “Puros Cubanos”) in close proximity to the
Opposer’s mark TATUAJE on the same side of the cigar box containing
Opposer’s cigars. Id.

A number of years before Opposer’s date of first use of its mark
TATUAJE, the stylized “tobacco leaf stick” logo trademark was established and
has been in notorious use, by the Cuban Government and its commercial
enterprise HABANOS, S.A., in close proximity and in conjunction with its most
valuable tobacco cigar trademarks to certify its genuine Cuban cigar trademarks
worldwide. Declaration of Jose Gutman, Exhibit M, paragraph 2, and see also
Exhibit N, for example on page 5, second paragraph. Exhibit N is a copy of a
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paper dated November 22 and 23, 2007, and presented by Mr. Adargelio Garrigo
de la Grana, who was at the time the legal Director of Habanos, S.A., and the
trademark attorney for Cubatabaco, a governmental enterprise of the Cuban
Government, and a 50% owner of Habanos, S.A. This paper details the Cuban
Government’s trademark strategy to certify legitimate use of its most valuable
trademarks used in connection with sales of Cuban tobacco cigars. The Cuban
Government’s certification mark includes the stylized “tobacco leaf stick” logo
trademark. It also includes the word HABANOS. Declaration of Jose Gutman,
Exhibit M, paragraph 2; and see also Exhibit N, for example at bottom of page 4,
and also see page 6, fourth paragraph. The paper, on page 6, fourth paragraph,
refers to the stylized “tobacco leaf stick” logo trademark as the “tobacco leaf of
Vuelta Abajo appellation of origin, the best in the world.” See also Exhibit R,
which shows an example of the stylized “tobacco leaf stick” logo as registered by
HABANOS, S.A., in USPTO Registration No. 2,177,837. Affidavit of Alberto
Gutman, Exhibit A, paragraph 29. See also Exhibit S which shows an example
of the Cuban Government’s use of its certification mark in close proximity and in
conjunction with one of its valuable tobacco cigar trademarks. Affidavit of Alberto
Gutman, Exhibit A, paragraph 29.

A direct comparison of the stylized “tobacco leaf stick” logo mark
located to the left side of the word HABANOS as shown in Exhibits R and S,
against the Opposer’s use of the stylized “tobacco leaf stick” logo mark to the
left of the words “PUROS CUBANOS”, as shown in Exhibits F, I, and L,
highlights the striking similarity of these two marks.

The indication of the stylized “tobacco leaf stick” logo mark to the left of
the words “PUROS CUBANOS” on Opposer’s cigar box and in close proximity to
Opposer’s trademark TATUAJE is that the cigars contained in the box and sold
under the trademark TATUAJE are “Pure Cuban” tobacco cigars. That is, the
Opposer sells its Tatuaje cigars as pure Cuban tobacco cigars from Cuba.
Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure
- 17 -
Cuban” tobacco cigars. These cigars are not from Cuba. Affidavit of Alberto
Gutman, Exhibit A, paragraph 28.

Opposer’s affirmative designation of its cigar product with the stylized
“tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS” and
in close proximity and in conjunction with its trademark TATUAJE is an
intentional tactic by Opposer to unfairly deceive consumers to believe that
Opposer’s cigar product sold under the trademark TATUAJE is a “Pure Cuban”
tobacco cigar product. That is, the trademark TATUAJE located in close
proximity to the stylized “tobacco leaf stick” logo mark to the left of the words
“PUROS CUBANOS” is aimed by Opposer to deceive customers and consumers
regarding the geographic origin, character, quality, composition, and/or source of
the Opposer’s cigars sold under the trademark TATUAJE. This continuous
deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE
for at least nearly four years (since 2006 to present), precludes Opposer from
seeking relief from this Board under the equitable doctrine of “unclean hands”.

3) It is reasonable to infer that Opposer’s specimen and application
provided to the USPTO to obtain Opposer’s registration of its mark Tatuaje,
misrepresented Opposer’s actual use of its mark Tatuaje thereby
precluding Opposer from seeking relief from this Board under the equitable
doctrine of “unclean hands”.

The continuous deceptive, or deceptively misdescriptive, use by Opposer
of its mark TATUAJE for at least nearly four years (since 2006 to present), as
discussed above, demonstrates a continuous pattern of deceptive use that,
subject to Applicant completing its discovery on Opposer, is reasonable to infer,
was likely ongoing as early as April 27, 2004 (on or about when Mr. Peter Hassell
Johnson was granted the registration of the trademark TATUAJE) and as early
as June 15, 2003 (on or about when Mr. Peter Hassell Johnson submitted its
specimen of actual use along with the application for registration of its trademark
TATUAJE.

- 18 -
Opposer’s specimen of actual use of its mark TATUAJE that was
submitted to the USPTO was required to show Opposer’s actual use of its mark
in connection with its tobacco cigar box. Opposer’s specimen of actual use of its
mark TATUAJE in connection with Opposer’s tobacco cigar box did not show the
“tobacco leaf stick” logo or the words “PUROS CUBANOS”. Declaration of Jose
Gutman, Exhibit M, paragraph 3; and see also Exhibit P.

Mr. Peter Hassell Johnson, as the Owner, signed the Trademark
Application for TATUAJE on June 15, 2003. Declaration of Jose Gutman, Exhibit
M, paragraph 3; and see also Exhibit O and Exhibit Q. Mr. Peter Hassell
Johnson made a statement in its signed Trademark Application with Declaration
as follows: “[t]he applicant is submitting or will submit one specimen for each
class showing the mark as used in commerce on or in connection with any
item in the class of listed goods and/or services, consisting of a(n) Tatuaje Cigar
box lid and cigar band.” (Emphasis added.)

By Peter Hassell Johnson providing the specimen of a Tatuaje Cigar box
lid along with the signed Trademark Application with Declaration, he made an
affirmative statement that represented to the USPTO while the application was
pending at the USPTO up until the time of registration of the trademark
TATUAJE that the actual use of the trademark TATUAJE in connection with the
cigar box did not include in close proximity to the mark TATUAJE the “tobacco
leaf stick” logo and the words “PUROS CUBANOS”. Mr. Peter Hassell Johnson
in the Trademark Application and the submitted specimen of actual use made an
affirmative statement relied upon by the USPTO until the date of registration of
the trademark TATUAJE (in June 2004), and in view of Opposer’s continuous
pattern of deceptive use of the trademark TATUAJE from as early as 2006, it is
reasonable to infer, that this affirmative statement misrepresented to the
USPTO, while the application was pending at the USPTO up until the time of
registration of the trademark TATUAJE, the actual use of the trademark
- 19 -
TATUAJE in connection with the cigar box. The signed Declaration warned Mr.
Peter Hassell Johnson that
“willful false statements and the like so made are punishable by fine
or imprisonment, or both, under 18 U.S.C. Section 1001, and that
such willful false statements, and the like, may jeopardize the
validity of the application or any resulting registration, . . .; and that
all statements made of his/her own knowledge are true; and that all
statements made on information and belief are believed to be true.”
See also Exhibit Q.
Due to the material misrepresentation and false statement in the
application signed by Mr. Peter Hassell Johnson, as is reasonable to infer and
subject to the Applicant completing its discovery on Opposer, the Opposer is
therefore precluded from seeking relief from this Board under the equitable
doctrine of “unclean hands”. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46
(Fed Cir. 1986), (applicant submitted a specimen label that was not then in
use) (“Fraud in procuring a trademark registration or renewal occurs when an
applicant knowingly makes false, material representations of fact in connection
with his application. . . . ”[T]he obligation which the Lanham Act imposes on an
applicant is that he will not make knowingly inaccurate or knowingly misleading
statements in the verified declaration forming a part of the application for
registration.””); also see General Car & Truck Leasing Sys. Inc. v. General Rent-
a-Car Inc., 17 USPQ2d 1398, 1491 (S.D. Fla. 1990), and Medinol v. Neuro Vasx,
Inc., 67 USPQ2d 1205 (TTAB 2003), (the objective standard to determine
deceptive intent is whether the applicant “knew or should have known” that a
statement is materially incorrect. Fraud can occur without subjective intent.); and
also see Bose Corporation v. Hexawave, Inc., Opposition No. 91/157,315, (“a
use statement in a Section 8/9 renewal is a material representation; without use
on all of the goods, the affidavit of continued use would not have been accepted.”
“[P]roof of specific intent to commit fraud is not required.”), and further see
Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008
(June 30, 2008) (precedential) (“false claims of use of the mark on goods or
services, wherever they may appear, . . . are essential to the integrity of the
application and registration process.” It did not matter that the statement of
- 20 -
goods and services was not a “verified statement" of goods and services such as
in a statement of use.).

Based on the above, the Applicant respectfully requests that the
Opposer’s Motion for Summary Judgment be dismissed.



Date: March 4, 2009 ___/Jose Gutman/_________
Jose Gutman
___/Jeffrey N. Giunta/______
Jeffrey N. Giunta

Fleit, Gibbons, Gutman,
Bongini, & Bianco, PL
551 N.W. 77
th
Street
Boca Raton, FL, 33487
Phone: (561) 989-9811
Fax: (561) 989-9812
e-mail: tmboca@fggbb.com

Attorneys for Applicant
Exhibit Index

Exhibit A: Affidavit of Alberto Gutman
Exhibit B: Affidavits of Alphonso Alvarez, Rolando Guttierez, and Mauricio Martinez
Exhibit C: Merriam-Webster Dictionary Entry for “Tattoo”
Exhibit D: REAL DICCIONARIO – “Tatuaje”
Exhibit E: Wordreference.com English-Spanish entry for “Tattoo”
Exhibit F: Pictures of Opposer’s TATUAJE Cigar Box
Exhibit G: Receipt for box of TATUAJE cigars
Exhibit H: REAL DICCIONARIO – “Puro” and “Natural de Cuba”
Exhibit I: Internet Advertisement for TATUAJE cigars
Exhibit J: Listing of Applicant’s Trademark Applications and Registrations
Exhibit K: Trademark Examiner’s search for subject Application “Tattoo”
Exhibit L: [Jeff added this exhibit.]
Exhibit M: Declaration of Jose Gutman
Exhibit N: Habanos S.A. Trademark Strategy paper by Adargelio Garrido de la Grana
Exhibit O: Tatuaje Record at USPTO Website
Exhibit P: Tatuaje Specimen at USPTO
Exhibit Q: Tatuaje Application at USPTO
Exhibit R: Habanos & Tobacco Leaf Stick Logo. Trademark Registration No. 2,177,837
Exhibit S: Example of Actual Use By Habanos, S.A., of the Certification Mark
Exhibit T: Photo Image of Bottom of TATUAJE Cigar Box

- 21 -
CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of the foregoing APPLICANT’S
RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT has been
served on Brennan C. Swain by mailing said copy on March 4, 2009, via First Class
Priority Mail, postage prepaid to:


Jeffer Mangels Butler & Marmaro LLP
Attn: Brennan C. Swain
1900 Avenue of the Stars, 7th Floor
Los Angeles, CA 90067

Date: March 4, 2009 ___/Jose Gutman/_________
Jose Gutman
___/Jeffrey N. Giunta/______
Jeffrey N. Giunta

Fleit, Gibbons, Gutman,
Bongini, & Bianco, PL
551 N.W. 77
th
Street
Boca Raton, FL, 33487
Phone: (561) 989-9811
Fax: (561) 989-9812
e-mail: tmboca@fggbb.com

Exhibit A: Affidavit of Alberto Gutman
Exhibit B: Affidavit of Alphonso Alvarez, Rolando Guttierez,
and Mauricio Martinez
Exhibit C: Merriam-Webster Dictionary Entry for “Tattoo”
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tattoo
4 entries found.
1
tattoo (noun)
2
tattoo (verb)
3
tattoo (transitive verb)
4
tattoo (noun)
Free Tattoo Designs
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1
tat—too
\ta-ɑtü\
noun
plural tattoos
alteration of earlier taptoo, from Dutch taptoe, from the phrase tap toe!
taps shut!
circa 1627
1 : a rapid rhythmic rapping
2 a : a call sounded shortly before taps as notice to go to quarters b : outdoor
military exercise given by troops as evening entertainment
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"tattoo." Merriam-Webster Online Dictionary. 2009.
Merriam-Webster Online. 3 March 2009
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo
1 of 2 3/3/2009 6:16 PM
<http://www.merriam-webster.com/dictionary/tattoo>
APA Style
tattoo. (2009). In Merriam-Webster Online Dictionary.
Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo
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© 2009 Merriam-Webster, Incorporated
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo
2 of 2 3/3/2009 6:16 PM
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tattoo
4 entries found.
1
tattoo (noun)
2
tattoo (verb)
3
tattoo (transitive verb)
4
tattoo (noun)
Free Tattoo Designs
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3
tattoo
transitive verb
Tahitian tatau, noun, tattoo
1769
1 : to mark or color (the skin) with tattoos
2 : to mark the skin with (a tattoo) <tattooed a flag on his chest>
— tat—too—er noun
— tat—too—ist \-ɑtü-ist\ noun
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"tattoo." Merriam-Webster Online Dictionary. 2009.
Merriam-Webster Online. 3 March 2009
<http://www.merriam-webster.com/dictionary/tattoo>
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B3%5D
1 of 2 3/3/2009 6:19 PM
APA Style
tattoo. (2009). In Merriam-Webster Online Dictionary.
Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo
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© 2009 Merriam-Webster, Incorporated
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B3%5D
2 of 2 3/3/2009 6:19 PM
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Dictionary Thesaurus Spanish/English Medical
tattoo
4 entries found.
1
tattoo (noun)
2
tattoo (verb)
3
tattoo (transitive verb)
4
tattoo (noun)
Free Tattoo Designs
Looking for your perfect Tattoo? View 1000's of Tattoo Designs now.
TattooSelector.net
2
tattoo
verb
1780
transitive verb
: to beat or rap rhythmically on : drum on
intransitive verb
: to give a series of rhythmic taps
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"tattoo." Merriam-Webster Online Dictionary. 2009.
Merriam-Webster Online. 3 March 2009
<http://www.merriam-webster.com/dictionary/tattoo>
APA Style
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B2%5D
1 of 2 3/3/2009 6:20 PM
tattoo. (2009). In Merriam-Webster Online Dictionary.
Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo
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© 2009 Merriam-Webster, Incorporated
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B2%5D
2 of 2 3/3/2009 6:20 PM
Exhibit D: REAL DICCIONARIO – “Tatuaje”

(Del fr. tatouage).
m. Acción y efecto de tatuar.
m. Cerco o señal que queda alrededor de una herida por arma de fuego
disparada desde muy cerca.
REAL ACADEMIA ESPAÑOLA
DlCClONARlO DE LA LENGUA ESPAłOLA - Vigésima segunda edición


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Exhibit E: Wordreference.com English-Spanish entry for
“Tattoo”
WordReference.com English-Spanish Dictionary
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Pocket Oxford Spanish Dictionary © 2005 Oxford University Press:
tattoo
1
/tæ'tu:/ sustantivo (pl -toos)
1. (picture) tatuaje m
2. (display) espectáculo militar con música
tattoo
2
verbo transitivo -toos, -tooing, -tooed tatuar
(conj. )


Subscribe to the Oxford Concise or Unabridged dictionary for more
translations, meanings and examples.

From the Diccionario Espasa Concise © 2000 Espasa Calpe:
tattoo [tæ 't ]



From the WordReference Supplement © 2009 WordReference.com:
tattoo:


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'tattoo' also found in these entries:
Spanish:
tatuar - tatuaje

tattoo:

English definition | in French | in Italian | in Portuguese
conjugator | in context | images
I verbo transitivo tatuar

II nombre
1 tatuaje
2 Mil espectáculo militar
Compound Forms:
tattoo artist nm tatuador
tattoo artist nmf artista del tatuaje
Report an error.
El tattoo no es tabú
Gang tattoo removal program
I am a cartoonist and a tattoo designer as well
LLEDAD for a tattoo....
sag (in a tattoo)
tap/tattoo and tap/palm
tattoo parlor
They won't let me get a tattoo....
To get a tattoo
To tattoo upon/over/on
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t ast elessness
t ast ing
t ast y
t at
t at t er
t at t ered
t at t ers
t at t ing
t at t le
t at t let ale
t at t oo
t at t ooing
t at t ooist
t at t y
t aught
t aunt
t aunt ing
t aunt ingly
t aupe
Taurus
t aut

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Exhibit F: Pictures of Opposer’s TATUAJE Cigar Box
Exhibit G: Receipt for box of TATUAJE cigars
Exhibit H: REAL DICCIONARIO – “Puro” and “Natural de
Cuba”

(Del lat. purus).
adj. Libre y exento de toda mezcla de otra cosa.
adj. Que procede con desinterés en el desempeño de un empleo o en la
Administración de Justicia.
adj. Que no incluye ninguna condición, excepción o restricción ni plazo.
adj. Casto, ajeno a la sensualidad.
adj. Libre y exento de imperfecciones morales. Este libro contiene una moral
pura.
adj. Mero, solo, no acompañado de otra cosa.
adj. Dicho del lenguaje o del estilo: Correcto, exacto, ajustado a las leyes
gramaticales y al mejor uso, exento de voces y construcciones extrañas o
viciosas.
adj. Dicho de una persona: Que usa este lenguaje o este estilo. Escritor puro.
m. Cigarro hecho de hojas de tabaco enrolladas y liado sin papel.
m. coloq. Castigo, sanción.

loc. adv.

loc. adv. Sumamente, excesivamente, a fuerza de.

loc. verb. coloq. lmponer a alguien una sanción o un castigo.
凛 V.





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adj. Natural de Cuba. U. t. c. s.
adj. Perteneciente o relativo a este país de América.


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Exhibit I: Internet Advertisement for TATUAJE cigars
Exhibit J: Listing of Applicant’s Trademark Applications and
Registrations
United States Patent and Trademark Office
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S1: (Nicaragua Tobacco Imports)[OW] docs: 24 occ: 72
Serial Number Reg. Number Word Mark Check Status Live/Dead
1 78899717 3222884 CUPIDO TARR LIVE
2 78242915 2973248 LA CAROLINA TARR LIVE
3 78242906 2934273 VEGAS DE TABACALERA ESTELI TARR LIVE
4 78242904 SALAZAR Y HNOS TARR DEAD
5 78242899 2953846 BECK TARR LIVE
6 78241785 2973241 ARTE CUBANO TARR LIVE
7 78241747 2973240 CUBAN CRAFTERS TARR LIVE
8 78230529 3142814 420'S TARR LIVE
9 77429139 3584394 DON QUIJOTE TARR LIVE
10 77361657 ONEOFF CIGARS TARR LIVE
11 77421758 CONTRABAND TARR LIVE
12 77410795 CIGUARD TARR DEAD
13 77361662 3549231 J.L. SALAZAR Y HERMANOS TARR LIVE
14 77510706 DOMINO TARR LIVE
15 77510705 DOMINO PARK TARR LIVE
16 77510698 LA FLOR DE ALBA TARR LIVE
17 77358959 TONY ALVAREZ TARR DEAD
18 77361556 3526800 CUBAN COPY TARR LIVE
19 77359142 EL LAGUITO TARR DEAD
20 77361550 3523588 EL FENICIO TARR LIVE
21 77359144 NICARAGUA HABANOS TARR LIVE
22 77270508 3494999 J.L. SALAZAR TARR LIVE
23 77359141 TATTOO TARR LIVE
24 77421759 BOUTIQUE PREMIUM CIGARS TARR LIVE

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Exhibit K: Trademark Examiner’s search for subject
Application “Tattoo”
*** User:mpappas ***
# Total Dead Live Live Status/ Search
Marks Marks Viewed Viewed Search
Docs Images Duration
01 13070 N/A 0 0 0:04 *tat${"oue"}*[bi,ti] and live[ld]
02 585 N/A 0 0 0:03 tat${"oue"}*[bi,ti] and live[ld]
03 84 0 84 52 0:02 2 and "034"[cc]
04 372 N/A 0 0 0:01 *tat$oo*[bi,ti] and live[ld]
05 415 N/A 0 0 0:02 *tat$u*[bi,ti] and live[ld]
06 24 0 24 18 0:01 *tat$ew*[bi,ti] and live[ld]
07 159 0 159 92 0:02 (4 5) and "034"[cc]
08 22 0 22 12 0:02 tattoo[fm] and live[ld]
Session started 3/31/2008 2:17:46 PM
Session finished 3/31/2008 2:24:40 PM
Total search duration 0 minutes 17 seconds
Session duration 6 minutes 54 seconds
Defaut NEAR limit=1ADJ limit=1
Sent to TICRS as Serial Number: 77359141
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Exhibit M: Declaration of Jose Gutman


Exhibit N: Habanos S.A. Trademark Strategy paper by
Adargelio Garrido de la Grana

1


Habanos SA:
Trademarks and GIs
Working together



My name is Adargelio Garrido de la Grana. I am the legal Director of Habanos S.A.,
and Cubatabaco’s attorney for matters related to the industrial property. Habanos SA
is a Cuban company, owned on a fifty-fifty per cent by Cubatabaco and Altadis SA
(an Spanish–French company). Cubatabaco is the owner of the Cuban appellations of
origin.

I. ITRODUCTIO

Who Are We?

Habanos, S. A. , was founded on Sept ember 14, 1994.

On February 4, 2000, Habanos, S. A. , became a j oint vent ure, with
Cubatabaco, a Cuban governmental ent erprise, holding 50 percent
of its shares and Al tadi s, S. A. , t he l argest company in the world
that market s tobacco products, holdi ng t he other 50 percent.

Habanos, S. A. , is the world l eader sell ing premi um ci gars. It

• has a port foli o of 32 active brands;
• has more than 6000 brands regist ered t hroughout t he worl d;
• uses Cuban t obacco denominati ons of ori gi n in t rade, si nce it
is the onl y Cuban export er;
• has a network of sal es outlet s wit h over 25 exclusive
distribut ors;
• has a net work of franchises with more than 120 sal es
outl ets—Houses of Habanos—throughout the world;
• has estimat ed annual sal es of around US $200 milli on; and
• is selling i n 179 countri es.

As may be imagi ned, the brands and exclusive exploitation of the
Cuban tobacco denominat ions of ori gi n are our main asset s, whose
worth i s calculated at billi ons of dollars.

As you know, Geographical indications are objectively recognized in the
identification of certain products coming from a region, city or country where there
are certain natural and human factors which make them different from others, but
those products finally reach the market identified by a trademark.

That is, the geographical indications and trademarks reach the market together,
through a product which promotes the coincidence of both.


2
Now, I will present our experience in managing the trademarks and appellations of
origin of Cuban cigars, with regard to creating a single product identity.


II. THE EXPERIECE OF CUBA CIGAR TRADEMARKS AD
GEOGRAPHICAL IDICATIOS

2.1 Cuban tobacco appellations of origin

The origin of Habanos can be traced back to 1492, when Christopher Columbus
arrived on the shores of the large island of Cuba.

1492 is certainly a celebrated year in World History, but particularly for us, the Great
Discovery was the Habano.

Habanos, at that time, consisted on tobacco leaves roughly rolled into a shape and the
Indians called it “Cohiba”. These cigars were smoked by the natives; being the
“Cohibas” the ancestors of the Habanos.

Why Habanos’ quality?

The quality of the Habano comes from a combination of four factors.

The characteristic of the soil is one of these factors. It plays a key role in the
differentiation of this product.

The varieties in the kinds of Cuban black tobacco are others. It is very important
in the differentiation of the Habano.

Other and a very important element is the climate, which is a result of Cuba’s
geographical location. Climatic conditions also influence in the cigar-manufacturing
process. Many people even say that the Habanos you smoke in Cuba taste different
from the ones you smoke elsewhere.

The last factor is the know-how of our farmers and cigar-makers, with the latter
creating veritable masterpieces.

It has been proved that, when one of these factors is missing, it’s impossible to make
a Habano.

Five different types of leaves are required to make a Habano:

The long filler: the inner part, which it is a blend of three leaves with three different
characteristics:

Ligero: for strength and flavour
Seco: for aroma
Volado: for good combustion

The binder: this leaf secures and wraps the long filler leaves. Long filler and binder
together form the “Bunche”.

3

The wrapper: this leaf dresses the Habano and determines its appearance.


2.1.1 Measures to protect the prestige of the cigar coming from Cuba

In view of the recognized prestige of the tobacco coming from Cuba, in the early of
XIX Century, the international tobacco market began to be invaded by different
kinds of products that used names of Cuban origin in one way or another.

At the beginning, the geographical name “Habana” was acknowledged
internationally as identifying the origin of the best cigars in the world. It is said that
the origin of its use is linked to the port of Havana, from which the prestigious cigars
were shipped.

Therefore, ever and since the last century, Cuban cigar-makers have included the
word “Habana” in the design and advertising of all their trademarks, so that the
origin of the well-known cigars in the world would be recognized.

For its part, the word “Habano”—the term used for the very best cigars made in
Cuba—stemming from “Habana.” It began to be used in the Spanish-speaking
countries in the 1920s.

Now, the term “Habano” is an example of a social or historic appellation of origin,
for it has achieved recognition on its own merits, rather than as the name of a region,
locality or country.

Early in the 20th century, Cuban authorities—aware of the danger— they began
taking measures to protect this product. They include the following:

the creation of the National Warranty Seal of Origin, in 1912, to protect the
product’s Cuban origin;
the creation of the National Commission of Advertising and the Defense of
Habano Cigars, in 1927;
the signing of bilateral agreements with several countries to protect our
appellations, among them, those signed with France and Germany—which are
still in force—and especially important;
the creation of the Revista Tabacalera Habano (Habano Cigar Magazine), in
1935; in addition to containing the name “Habano” in its title, this publication
has always used this term when referring to Cuban cigars; and
the protection of 18 appellations of origin—including Cuba, Habana, Habanos,
Vuelta Abajo, San Luis, San Juan y Martínez, Vuelta Arriba, Remedios, El
Corojo and Cuchillas de Barbacoa, according to the Lisbon Agreement.

The Cuba’s decision for signing the Lisbon Agreement was a key for the protection
of our intangible assets, because, even though the Agreement has a limited operating
range, being a signatory of it implies respect and recognition, even, in non-member
countries.

Since the above was proved insufficient, a legal offensive to protect our products’
appellations of origin begun in 1981. Lawsuits were brought to Europe, our main

4
market, because many infringing products were sold there. Now, we are bringing
suits in other continents, as well. We concentrate on the well-known appellations of
origin (Cuba, Habanos, Habana and Vuelta Abajo).

The first lawsuit we brought was in France, on February 17, 1981. It was against the
Neos Handzame Company, from Belgium, due to the sales of Cubanitos trademark
cigars in France.

We have also brought other lawsuits in Belgium, France, Germany and Spain. The
most important ones were the suits we won against Gloria de Cuba and Wilde
Havana trademarks. The latter had the largest sales on the non premium market.We
also obtained favorable decisions in France, with courts ordering Aramis to withdraw
its Havana trademark of perfume as well as another company that was using in
perfume the denomination Cuba.

The protection of the term Habanos, as Appellation of Origin, Trademark or
Certification Trademark is the following one:

As Appellation of
Origin
As a trademark As a certification
trademark
Registrations 26 countries ( 25
members of Lisbon +
Dominican Rep.)
35
Applications 29 ( 27 UE + Uruguay +
Ecuador)
27 (Members OAMI) 2 ( USA + Canada)
Total 55 62 2


2.1.2 Marketing Strategy Linked to the Protection of Appellations of Origin

Along with the lawsuits, a marketing strategy was drawn up in the ’80s for
supporting and complementing our efforts to obtain legal protection.

Our first decision was to establish our communications strategies based on the
Habano appellation of origin, the reasons are as follows:

it was a unique product;
the Habano denomination of origin had to be protected against the danger of
becoming a generic term; and,
because it was a rather all-encompassing term, it was being applied to all of the
cigars made in Cuba.

From the communications point of view and as one more steps along the path toward
consolidating the corporate image of the product, in 1991 it was decided to unify the
various versions of the logo and design for Habano that existed in other languages
and to use just one: Habanos. Thus, from then on, Habanos logo has the same image
all over the world.

This meant to make two changes at the same time. One was to eliminate the word
“cigar”; the other was to use the Spanish term “Habanos.” The transition from the
translation to the Spanish term was to be made over a period of up to ten years.

5

Since that period, we have established a unique corporate image
of our Appellation of Origin Habanos: The Smoke image.

In 1993, we created a stick with the Habanos Appellation of Origin in order to
include it in all the packaging of our products.

At the end of this year 2007 it will be create the Consejo Regulator of the Habanos
Appellation of Origin and the other Cuban Tobacco Appellations of Origin, which
will agglutinate all the physical and juridical peoples that are part of the agricultural
and industrial chain of the Habanos, in order to developing even more the this
appellation of origin.


2.2 Cuban Cigar Trademarks

The first Cuba cigar private factory was established in 1796. Very soon the quantity
of small workshops for making cigars increased.

In the 1830-40’s these small factories became prosperous workshops, which were
frequently visited by agents and traders of New York, Philadelphia, London, Paris,
Hamburg, among others, requesting large quantities of the famous Habano.

The end of the Spanish Monopoly propitiated a boom in the cigar business. Being the
property of individuals, the workshops started to diversify their offers, trying to
please the large demand for Cuban cigars. This period marks the origin of the first
Habano trademark: “Hijas de Cabañas & Carvajal”.

2.2.1 Trademark classifications

According to the period of creation, we can classify our trademarks in two groups:

Pre-Revolution trademarks: Montecristo, Partagás, Romeo y Julieta, H.Upmann,
Por Larrañaga, Hoyo de Monterrey, etc.

Post-Revolution trademarks: Cohiba, Cuaba, Trinidad, Vegas Robaina, San
Cristóbal de La Habana, etc.

According to the importance in the market, for several years, we have classified the
32 trademarks that we sell in that moment—keeping in mind how well known they
are and their market presence—as follows:

Global trademarks. This group of trademarks includes the ones that are present all
over the world. They are Cohiba, Montecristo, Romeo y Julieta, Partagás, Hoyo
de Monterrey, H.Upmann and José L. Piedra.

Multilocal trademarks. These trademarks you may find them in most of countries.
They are: Bolivar, Fonseca, Guantanamera, H. Upmann, Punch, Vegas Robaina
and Quintero.


6
Local trademarks. These trademarks are found in just a few countries. They
include Por Larrañaga, Cabañas, Belinda, Sancho Panza, Los Status De Luxe,
Troya, La Gloria Cubana, J. Cano, Quai D’Orsay, Juan Lopez, Rafael
González, Vegueros, Diplomáticos, Ramón Allones, San Luis Rey and Gispert.

iche trademarks. These are trademarks that were created recently and they were
given a special treatment, for allowing us to become them well known trademarks.
We include in this group Trinidad, which is a name of a Cuban city and UNESCO
has declared thereof as a part of world heritage; Cuaba, is the name of a Cuban tree
that catches fire easily and it was used by the Cuban Indians for lighting their pipes
(cojibas or cohibas); and San Cristóbal de La Habana, which bears our capital’s
first name.

Bearing in mind that we are talking about a large number (32) of trademarks, our
best resources are used to invest mainly in promoting those that are in the global and
niche groups. The trademarks include in the multilocal and local groups are promote
by our distributors.

All the above mentioned Habanos trademarks are made with tobacco leaf of Vuelta
Abajo appellation of origin, the best in the world. These trademarks are considered as
premium cigar trademarks.

2.2.2The Defense of Cuban Cigar Trademarks

Taking into account the notoriety of our brands there is in the market much kind of
infringements. Infringements come in the form of both registration requests and use
in certain countries. In both cases, we find trademarks that are the same or similar to
ours, either phonetically or in terms of image.

Among all our trademarks, Cohiba although it is the most well-known trademark of
cigars in the world, it is, without any doubt, the most frequently attacked. Many
courts and patent offices have recognized that this trademark is well known, and, in
many cases, they have declared it as a renown trademark..

For example:

Similar Words

The request filed in the Dominican Republic to protect the name “Cojimar” in Class
34 and “Chibas” in class 25 in Spain are an example of a request to register a word
similar to “Cohiba.”

Similar Designs

There are many examples of requesting for or the uses of the design of the Cohiba
trademark for other appellations, for example, the use of the word Espléndidos, for a
German restaurant, which we finally came to an agreement.

Cohiba is a cigar trademark in which most of companies try to register or use in all
kinds of products and services.


7
Foreign courts (in Spain, France, Dominican Republic, Mexico and Taiwan…) have
recognized that COHIBA is a well known trademark. But, the main Decision was the
judgment of the Southern District Court of New York on March 6, 2004, because
COHIBA was recognized as a well known trademark in the United States even when
it never was sold in that market because of blockade regulations.

Another infringement that it has become quite common in some markets in recent
years is the marketing of counterfeit products.

The most import thing to take into consideration in this kind of infringement is that
when somebody uses a trademark linked with an appellation of origin, it is also
counterfeiting the appellation of origin.


III. A QUESTIO AS COCLUSIO.

Just to finish, I would like to talk about Who Influences to Whom? Does the
Trademark Influence the Geographical Indication, or vice versa?

I think that, generally, geographical indications influence trademarks, so that the
creation of a trademark linked to a geographical indication gives the trademark great
probability of success. We have examples of cigar trademarks that attained world
fame linked to the Habano appellation of origin and whose fame declined when they
change the origin.

The case would be different if the trademark was born outside the area protected by
the geographical indication—or even in a group of products different from those
protected by the geographical indications—and then were added to the products
protected by it.

I should emphasize that trademarks which are related to geographical indications
may be considered privileged, especially in the case of appellations of origin that are
internationally known.

Naturally, when I say that the trademark is largely boosted by the geographical
indication, this is not absolute, because we cannot forget the role that marketing
plays in the birth of a new trademark. If a trademark that is protected by a
geographical indication is launched on the market without a good marketing strategy,
it is doomed to failure. We have examples of this, too:

Caney (named for one of the typical houses of Cuban Indians)

Siboney (named for one of the three Cuban tribes of Indians and also for a famous
song written by the Cuban composer Ernesto Lecuona)

For certain strategic reasons, the names of these two trademarks didn’t stick in
clients’ minds; as a result, they are no longer sold.

So, according to our experience, these kind of products with a connection between
Trademarks and Geographical Indications, should have very linked both strategies: It
means, the Trademark strategy and the Geographical Indication strategy.

8

That is the reason why, from the point of view of communication, we will continue
in two ways: (1) to maintain our institutional campaigns (dedicated only to the
Appellation of Origin Habanos) and (2) advertising our trademarks including the
Appellation of Origin Habanos’ stick. So, when we communicate trademarks we also
communicate the Habanos Appellation of Origin and the same in the contrary way.

On the other hand, as I already said, we always use the same logo of our Habanos
Appellation of Origin in all of our packaging, because the product is the most
important advertising.





Adargelio Garrido de La Grana
22 & 23 of November 2007
Agadir, Marruecos
Exhibit O: Tatuaje Record at USPTO Website


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Word Mark TATUAJE
Translations The foreign wording in the mark translates into English as "TATTOO".
Goods and
Services
IC 034. US 002 008 009 017. G & S: Cigars. FIRST USE: 20030527. FIRST USE IN
COMMERCE: 20030527
Mark Drawing Code (1) TYPED DRAWING
Serial Number 78262622
Filing Date June 15, 2003
Current Filing
Basis
1A
Original Filing
Basis
1A
Published for
Opposition
February 3, 2004
Registration
Number
2836665
Registration Date April 27, 2004
Owner (REGISTRANT) Johnson, Peter Hassell INDIVIDUAL UNITED STATES 2169 Stanley Hills
Drive Los Angeles CALIFORNIA 90046
(LAST LISTED OWNER) TATUAJE CIGARS, INC. CORPORATION CALIFORNIA 2169
STANLEY HILLS DRIVE LOS ANGELES CALIFORNIA 90046
Assignment
Recorded
ASSIGNMENT RECORDED
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE
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Exhbit P: Tatuaje Specimen at USPTO
TDR Home

Document Description: Specimens
Mail / Create Date: 15-Jun-2003


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Exhibit Q: Tatuaje Application at USPTO
Document Description: Application
Mail / Create Date: 15-Jun-2003


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Trademark/Service Mark Application, Principal Register, with
Declaration
Serial Number: 78262622
Filing Date: 06/15/2003
The table below presents the data as entered.
PTO Form 1478 (Rev 4/2000)
OMB Control #0651-0009 (Exp. 08/31/2004)
Input Field Entered
MARK TATUAJE
OWNER
NAME Johnson, Peter, Hassell
INTERNAL ADDRESS Unit # 204
STREET 1025 North Kings Road
CITY West Hollywood
STATE CA
ZIP/POSTAL CODE 90069
COUNTRY USA
PHONE 310-365-3842
FAX 323-650-9163
EMAIL psjohnsons@netzero.net
AUTHORIZED EMAIL COMMUNICATION Yes
LEGAL ENTITY
TYPE INDIVIDUAL
COUNTRY OF CITIZENSHIP United States
CORRESPONDENCE
NAME Johnson, Peter, Hassell
FIRM NAME DBA Havana Cellars
INTERNAL ADDRESS Unit # 204
STREET 1025 North Kings Road
CITY West Hollywood
STATE CA
ZIP/POSTAL CODE 90069
COUNTRY USA
EMAIL psjohnsons@netzero.net
AUTHORIZED EMAIL COMMUNICATION Yes
GOODS AND/OR SERVICES
DESCRIPTION TEXT Cigars
FILING BASIS Section 1(a)
FIRST USE ANYWHERE DATE 05/27/2003
FIRST USE IN COMMERCE DATE 05/27/2003
SPECIMEN FILE NAME(S)
\\ticrs\EXPORT5\IMAGEOUT5\782\626
\78262622\xml1\APP0002.JPG
SPECIMEN DESCRIPTION Tatuaje Cigar box lid and cigar band.
ADDITIONAL STATEMENTS
TRANSLATION
The foreign wording in the mark translates
into English as Tattoo.
SIGNATURE INFORMATION
SIGNATURE /peterhjohnson/
SIGNATURE DATE 06/15/2003
SIGNATORY NAME Peter Hassell Johnson
SIGNATORY POSITION Owner
PAYMENT
NUMBER OF CLASSES 1
NUMBER OF CLASSES PAID 1
SUBTOTAL AMOUNT 335
TOTAL AMOUNT 335


RAM SALE NUMBER 548
RAM ACCOUNTING DATE 06/16/2003
FILING INFORMATION
SUBMIT DATE Sun Jun 15 18:28:39 EDT 2003
TEAS STAMP
USPTO/BAS-663112153-
20030615182839079046
-78262622-200e27841c
4eadbc4847f6176cb4e2
f2e-CC-548-200306151
81333375426


Trademark/Service Mark Application, Principal Register, with
Declaration
Serial Number: 78262622
Filing Date: 06/15/2003
To the Commissioner for Trademarks:
MARK: TATUAJE

The applicant, Peter, HassellJohnson, a citizen of United States, residing at Unit # 204, 1025 North
Kings Road, West Hollywood, CA USA 90069, requests registration of the trademark/service mark
shown on the drawing page in the United States Patent and Trademark Office on the Principal Register
established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended.

The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists
below the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in
interest, of the mark on or in connection with the identified goods and/or services. 15 U.S.C. Section
1051(a), as amended.

International Class : Cigars

In International Class : the mark was first used at least as early as 05/27/2003, and first used in
commerce at least as early as 05/27/2003, and is now in use in such commerce. The applicant is
submitting or will submit one specimen for each class showing the mark as used in commerce on or in
connection with any item in the class of listed goods and/or services, consisting of a(n) Tatuaje Cigar
box lid and cigar band..
Specimen - 1


"The foreign wording in the mark translates into English as Tattoo."


A fee payment in the amount of $335 will be submitted with the application, representing payment for
1 class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are
punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false
statements, and the like, may jeopardize the validity of the application or any resulting registration,
declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she
believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the
application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to
use such mark in commerce; to the best of his/her knowledge and belief no other person, firm,
PTO Form 1478 (Rev 4/2000)
OMB Control #0651-0009 (Exp. 08/31/2004)
TDR Home

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; and that all
statements made of his/her own knowledge are true; and that all statements made on information and
belief are believed to be true.


Signature: /peterhjohnson/ Date: 06/15/2003
Signatory's Name: Peter Hassell Johnson
Signatory's Position: Owner

Mailing Address:
Johnson, Peter, Hassell
Unit # 204
1025 North Kings Road
West Hollywood, CA 90069

RAM Sale Number: 548
RAM Accounting Date: 06/16/2003

Serial Number: 78262622
Internet Transmission Date: Sun Jun 15 18:28:39 EDT 2003
TEAS Stamp: USPTO/BAS-663112153-20030615182839079046-78262622-
200e27841c4eadbc4847f6176cb4e2f2e-CC-548-20030615181333375426

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Exhibit T: Photo Image of Bottom of TATUAJE Cigar Box

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