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

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ESTTA464317 03/28/2012

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information
Name Granted to Date of previous extension Address M. Shanken Communications, Inc. 03/28/2012

387 Park Avenue South New York, NY 10016 UNITED STATES Darren B. Cohen Reed Smith, LLP 599 Lexington Avenue New York, NY 10022 UNITED STATES dcohen@reedsmith.com Phone:(212) 549-0346

Attorney information

Applicant Information
Application No Opposition Filing Date Applicants 85313872 03/28/2012 Publication date Opposition Period Ends 11/29/2011 03/28/2012

Ariel Gonzalez Apartment 3H 366 Hewes Street Brooklyn, NY 11211 UNITED STATES Carlos J. Plaza Apartment 6B 375 Blake Ave Brooklyn, NY 11211 UNITED STATES

Goods/Services Affected by Opposition

Class 016. All goods and services in the class are opposed, namely: General feature magazines; Magazines featuring fashion trends, luxury services and lifestyle advice; Magazines in the field of fashion

Grounds for Opposition

Priority and likelihood of confusion Dilution Trademark Act section 2(d) Trademark Act section 43(c)

Marks Cited by Opposer as Basis for Opposition

U.S. Registration No. 2025421 Application Date 12/11/1995

Registration Date Word Mark Design Mark Description of Mark Goods/Services

12/24/1996 CIGAR AFICIONADO NONE

Foreign Priority Date

NONE

Class 016. First use: First Use: 1992/01/22 First Use In Commerce: 1992/08/25 publications, namely, magazines, books, pamphlets, newsletters, printed charts, journals and guides all on the subject of cigars 3614669 05/05/2009 CIGAR AFICIONADO Application Date Foreign Priority Date 02/28/2008 NONE

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 041. First use: First Use: 1997/01/20 First Use In Commerce: 1997/01/20 Providing on-line magazines in the field of cigars 2054780 04/22/1997 CIGAR AFICIONADO Application Date Foreign Priority Date 03/14/1996 NONE

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 016. First use: First Use: 1992/01/22 First Use In Commerce: 1992/08/25 magazines and books featuring the subject of cigars

U.S. Registration No. Registration Date Word Mark Design Mark

2131128 01/20/1998 CIGAR AFICIONADO

Application Date Foreign Priority Date

03/14/1996 NONE

Description of Mark Goods/Services

NONE Class 042. First use: First Use: 1997/01/20 First Use In Commerce: 1997/01/20 computer services, namely, providing on-line magazines in the field of cigars

Attachments

77408935#TMSN.jpeg ( 1 page )( bytes ) 75075834#TMSN.gif ( 1 page )( bytes ) 75075835#TMSN.gif ( 1 page )( bytes ) Notice of Opposition - AFICIONADO MAGAZINE.pdf ( 10 pages )(104286 bytes )

Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature Name Date

/Darren B. Cohen/ Darren B. Cohen 03/28/2012

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

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M. Shanken Communications, Inc. Opposer, v. Carlos J. Plaza and Ariel Gonzalez, Applicants.

: : : : : : : : :

Serial No. 85/313,872 Mark: AFICIONADO MAGAZINE Published: November 29, 2011 Opposition No. ____________

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BOX TTAB - FEE Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-14513 NOTICE OF OPPOSITION 1. Opposer, M. Shanken Communications, Inc. (hereinafter Opposer), a

corporation duly organized and existing under the laws of New York, and having a place of business at 387 Park Avenue South, New York, New York 10016, believes that it is or will be damaged by the registration of Application Serial No. 85/313,872 for the mark AFICIONADO MAGAZINE and hereby opposes same pursuant to 15 U.S.C. 1052, 1063 and 1125(c). 2. On information and belief, Carlos J. Plaza and Ariel Gonzalez (hereinafter

Applicants), are United States citizens with addresses 375 Blake Avenue, Apartment 6B, Brooklyn, New York 11211 and 366 Hewes Street, Apartment 3H, Brooklyn, New York 11211, Carlos J. Plaza and Ariel Gonzalez, respectively. As grounds for this opposition, Opposer alleges the following:

3.

On May 5, 2011, Applicants filed Application Serial No. 85/313,872 on an intent-

to-use basis under 15. U.S.C. 1051(b) to register the mark AFICIONADO MAGAZINE for use on or in connection with General feature magazines; Magazines featuring fashion trends, luxury services and lifestyle advice; Magazines in the field of fashion in International Class 16. 4. Opposer is the owner of the following trademark registrations in the U.S.

Patent and Trademark Office (USPTO) for the mark CIGAR AFICIONADO (Opposers Mark), the registrations of which are valid and in full force and effect:
Trademark CIGAR AFICIONADO Reg. No. 2,025,421 Goods/Services Registration Date (Intl Class: 16) Publications, namely, December 24, 1996 magazines, books, pamphlets, newsletters, printed charts, journals and guides all on the subject of cigars (Int'l Class: 41) Providing on-line May 5, 2009 magazines in the field of cigars (Int'l Class: 16) Magazines and books April 22, 1997 featuring the subject of cigars (Int'l Class: 42) Computer services, January 20, 1998 namely, providing on-line magazines in the field of cigars

CIGAR AFICIONADO CIGAR AFICIONADO (Stylized) CIGAR AFICIONADO (Stylized)

3,614,669 2,054,780 2,131,128

Copies of the Certificates of Registration are attached hereto as Exhibit A and incorporated herein. 5. Opposer has continuously used and continues to use Opposers Mark in

interstate commerce on or in connection with its products since at least as early as January 1992. 6. The goods and services sold and rendered under Opposers Mark are

known by consumers, prospective consumers and throughout the publishing and related multi-media industries as consistent, high-quality products and services. 7. Opposers Mark, through Opposers long and extensive use, has come to

exclusively identify the high quality products and services of Opposer and to distinguish

them from products and services emanating from other publishers. As a result of Opposers extensive advertising and marketing efforts and use for over 20 years, Opposers Mark has become famous and represents goodwill of tremendous value to Opposer. 8. 9. Applicants Mark is confusingly similar to Opposers Mark. The goods in Application Serial No. 85/313,872 are closely related to

Opposers goods and services. 10. Upon information and belief, Applicants goods intended to be sold under

Applicants Mark represent the same or highly similar subject matter and genre of publication as that of Opposer under Opposers Mark, and will be aimed at the same consumer base and targeted demographic as those of Opposer. 11. Opposers use and registration of Opposers Mark predates any priority

date that can validly be claimed by Applicants for Applicants Mark, including the filing date of Application Serial No. 85/313,872. 12. If Applicants are permitted to use and register the subject mark for its

goods specified in the application herein opposed, confusion in trade resulting in damage and injury to Opposer would result. Persons familiar with Opposers Mark would likely confuse Applicants goods as being sold by or originating from Opposer, or as being in some way associated with, connected with, sponsored by, licensed by, or otherwise authorized by Opposer, all to the detriment of Opposer, unless this Opposition is sustained. Any such confusion in trade would inevitably result in loss of sales to Opposer. Furthermore, any defects, objections, or faults found with the goods sold by

Applicants under Applicants Mark would adversely reflect upon and seriously injure the reputation of Opposer by association. 13. In view of, without limitation, the similarity of the respective marks, similarity of

the class of purchasers and the close related nature of the goods and services offered and/or intended to be sold or rendered by the respective parties, the mark in Application Serial No. 85/313,872 so resembles Opposers Mark as to be likely to cause confusion, or to cause mistake, or to deceive as to the source of Applicants goods by suggesting that Applicants goods are associated with or approved, endorsed, affiliated, authorized, or sponsored by Opposer. 14. In view of the fame of Opposers Mark, any use by Applicants of Applicants

Mark will dilute the distinctive nature of Opposer's Mark and is thus unlawful and actionable under the Federal Anti-Dilution Statute enumerated in Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c). WHEREFORE, Opposer prays that Application Serial No. 85/313,872 be rejected, that no registration be issued thereon to Applicants and that this Opposition be sustained in favor of Opposer.

Respectfully submitted, REED SMITH LLP

Date: March 28, 2012

By: Darren B. Cohen 599 Lexington Avenue New York, New York 10022 Tel: (212) 549-0346 Email: dcohen@reedsmith.com Attorneys for Opposer

Certificate of Service I hereby certify that a copy of the foregoing Notice of Opposition was mailed first-class mail postage prepaid to Carlos J. Plaza at Blake Avenue, Apartment 6B, Brooklyn, New York 11211 and Ariel Gonzalez at 366 Hewes Street, Apartment 3H, Brooklyn, New York 11211 this 28th day of March 2012.

Ibis M. Vega Assistant to Attorney for Opposer

EXHIBIT A