Max Rohr, Inc.v.Boxer Tobacco Company

Trademark Trial and Appeal Board

Sep 25, 2008

No. 92047286 (T.T.A.B. Sep. 25, 2008)

Mailed: September 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Max Rohr, Inc.
v.
Boxer Tobacco Company
_____

Cancellation No. 92047286
_____

Charles W. Grimes of Grimes & Battersby, LLP for Max Rohr, Inc.

Thomas I. Rozsa of Rozsa Law Group LC for Boxer Tobacco Company.
______

Before Hairston, Holtzman and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Petitioner, Max Rohr, Inc., filed a petition to cancel a
registration owned by Boxer Tobacco Company (respondent) for the
mark shown below on the Principal Register for "cigarillos" in
Class 34.1

1 Registration No. 3122507, issued August 1, 2006.
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Cancellation No. 92047286
2
In its petition to cancel, petitioner alleges that
respondent is the owner of the subject registration by
assignment;2 that petitioner is the owner of application Serial
No. 78914642 for the mark VERONA'S COURT for "cigars" which,
petitioner states, has been published for opposition; that
petitioner is a wholly owned subsidiary of Altadis U.S.A. Inc.
and is using the mark through that company; that petitioner has
used the mark VERONA'S COURT since at least as early as September
2003; and that respondent's mark when applied to respondent's
goods so resembles petitioner's previously used mark VERONA'S
COURT for cigars as to be likely to cause confusion.
Respondent filed an answer to the petition admitting that
respondent is the owner of the registration, and denying the
remaining allegations. In addition, respondent affirmatively
asserts that "the only commonality is the descriptive term of the
city Verona." Ans. ¶ 10.
The record includes the pleadings and the file of the
involved registration. In addition, petitioner has submitted a
notice of reliance on, inter alia, its unanswered requests for
admissions; TARR printouts of Registration No. 3233292 for the
mark VERONA'S COURT for cigars, which issued from petitioner's
pleaded application, and Registration No. 1047827 for the mark

2 The registration issued to International Tobacco Partners, Ltd.
Office records show that the registration was assigned to Boxer Tobacco
Company on February 7, 2006, and that the assignment was recorded in
the Office at reel/frame 3275/0672.
Cancellation No. 92047286
3
ROMEO Y JULIETA for cigars;3 an entry for "ROMEO Y JULIETA" from
The Ultimate Cigar Encyclopedia (1998); and printouts of various
newspaper articles from the LexisNexis database referring to
ROMEO Y JULIETA cigars. Petitioner has also submitted the
testimony, with exhibits, of Eric Workman, senior vice president
of marketing for Altadis U.S.A. Inc., petitioner's licensee.
Respondent did not attend the deposition of petitioner's
witness; nor did respondent introduce any testimony or other
evidence on its own behalf. Only petitioner filed a brief.
As a preliminary matter, we note that because respondent
failed to respond to petitioner's requests for admissions, each
of the requests is deemed admitted, and moreover each fact in the
requests deemed admitted is "conclusively established." Fed. R.
Civ. P. 36(a)(3) and (b).4 Respondent's admissions, in pertinent
part, are as follows:
Petitioner has used its VERONA'S COURT mark in commerce
since at least as early as September 2003, and prior to
respondent's first use of the mark on August 1, 2005 (Adm.
Nos. 20, 21 and 23);

Respondent was familiar with the VERONA'S COURT mark for
cigars at the time of filing its application (Adm. No. 2);

Petitioner's VERONA'S COURT mark is well known for cigars
and respondent knew the mark was well known for cigars at
the time of filing its application (Adm. Nos. 3, 4);

3 Petitioner did not move to amend the pleading to assert ownership of
these registrations. Nevertheless, under the circumstances, we deem
the pleading amended to include a claim of ownership of the
registrations.

4 Nevertheless, the Board retains the authority to decide the issue of
likelihood of confusion and that finding cannot be delegated despite
the facts deemed admitted.
Cancellation No. 92047286
4

Respondent acknowledges that goodwill is associated with
petitioner's VERONA COURT mark in relation to cigars and
respondent knew that goodwill was associated with the mark
at the time of filing its application (Adm. Nos. 5, 6);

Respondent's identified goods "cigarillos" are a type of
cigar (Adm. No. 7);

Cigarillos and cigars are advertised in the same
publications (Adm. Nos. 10, 14) and sold in the same
channels of trade, including in retail cigar stores and on
the same websites (Adm. Nos. 8, 9, 12, 13), to the same
purchasers (Adm. Nos. 15, 17);

Respondent "chose to use the term VERONA to cause consumers
to associate Registrant's cigarillos with Petitioner's
cigars" (Adm. No. 19);

Respondent's "use of VERONA is likely to cause consumers to
believe that registrant's cigarillos are associated with
petitioner's VERONA'S COURT cigars" (Adm. No. 18).

Standing and Priority
As we noted, petitioner submitted TARR printouts of its
Registration Nos. 3233292 and 1047827 by a notice of reliance.
However, TARR records are not proper evidence to prove that the
registrations are valid and subsisting and owned by petitioner.
See Trademark Rule 2.122(d);5 and TBMP §704.03(b)(1)(A) (2d ed.
rev. 2004). Furthermore, petitioner did not otherwise properly
make the registrations of record. Petitioner did not introduce
the registrations during the deposition of Mr. Workman; and there
are no admissions by respondent concerning the registrations.

5 Trademark Rule 2.122(d)(1) was recently amended to allow the
submission of copies of records from Office electronic databases, such
as TARR, to prove the status and title of the registration. However
the amendment is only applicable to Board proceedings commenced on or
after August 31, 2007.
Cancellation No. 92047286
5
Nevertheless, respondent's admissions that petitioner has
prior use of the mark VERONA'S COURT and that respondent intended
to associate its cigarillos with petitioner's cigars, are
sufficient to establish petitioner's standing to bring the
proceeding, as well as its priority of use.
Likelihood of confusion
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Goods/Channels of trade/Purchasers
Respondent has admitted, and the evidence shows, that
cigarillos and cigars are legally identical products. As Mr.
Workman testified, a cigarillo refers to a size of cigar.
Respondent's admissions, as well as the other evidence of record,
further establish that that the goods are sold in the same
channels of trade to the same classes of purchasers.
Fame or relative strength of VERONA'S COURT
Petitioner argues that its mark VERONA'S COURT is famous
for cigars. However, the evidence falls short of establishing
Cancellation No. 92047286
6
the "extensive public recognition and renown" required for fame.6
See Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Nevertheless,
respondent has admitted that the mark is well known and,
moreover, the evidence is sufficient to establish that the mark
has achieved at least some degree of recognition and strength in
the market. See Kenner Parker Toys, supra at 1456 ("A strong
mark...casts a long shadow which competitors must avoid.")
Furthermore, there is no evidence of any third-party use or
registration of similar terms in the field. In fact, on this
record, the term VERONA appears to be unique and arbitrary for
cigars.7 In view of the foregoing, we find that the mark
VERONA'S COURT is entitled to broad protection.
The marks
We turn then to a comparison of the marks, keeping in mind
that when marks would appear on identical goods, the degree of

6 Petitioner has not established fame of the mark VERONA COURT'S apart
from any asserted fame of petitioner's mark ROMEO Y JULIETA. Cf. Bose
Corp. v. QSC Audio Products Inc., 293 F3d 1367, 63 USPQ2d 1303, 1308
(Fed. Cir. 2002) (noting defendant's "strong point" in stating that
"product marks do not acquire fame simply as a matter of the long
shadow cast by the accompanying famous house mark"). In this case,
petitioner's evidence is directed in substantial part to the
recognition of the mark ROMEO Y JULIETA. We note, for example, that
none of the advertisements for ROMEO Y JULIETA cigars or Nexis articles
referring to ROMEO Y JULIETA cigars mention the VERONA'S COURT mark.

7 We note respondent's defense in its answer that the only shared term
is descriptive of the city of Verona. However, the mere fact that a
term is geographic does not automatically mean the term is weak. It is
well established, as stated in In re Nantucket, Inc., 677 F.2d 95, 213
USPQ 889, 895 (CCPA 1982), that "A geographic term may be used in a
manner which is...inherently distinctive, which includes arbitrary and
suggestive usage....".
Cancellation No. 92047286
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similarity between the marks necessary to support a finding of
likelihood of confusion declines. Century 21 Real Estate v.
Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
It is also important to consider that, while marks must be
compared in their entireties, "there is nothing improper in
stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985).
When compared in their entireties, we find that respondent's
mark VERONA (and design) is similar in sound, appearance and
commercial impression to petitioner's mark VERONA'S COURT. The
word VERONA is the entire literal portion of respondent's mark,
and it is aurally and visually a significant part of VERONA'S
COURT. While respondent's mark includes a design element, it is
the word VERONA itself, rather than the design, that is likely to
have a greater impact on purchasers and be remembered by them.
See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983) ("in a composite mark comprising a design and words,
the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed"). This is
particularly true in this case where the design element in
respondent's mark consist of an ordinary geometric shape that
Cancellation No. 92047286
8
serves essentially as background for the display of the word and
it does little to affect or change the commercial impression
created by VERONA alone. Moreover, when referring to
respondent's products, consumers will call for VERONA cigarillos.
Furthermore, the marks VERONA and VERONA'S COURT connote the
same, or variations of the same, geographic place, and they
convey a substantially similar image and overall commercial
impression.8 Purchasers who are familiar with petitioner's
cigars and its strong and arbitrary mark VERONA'S COURT would be
likely to believe, upon encountering respondent's highly similar
mark VERONA on identical goods, that such goods originated with
or are in some way associated with or sponsored by petitioner.
Petitioner's claim of bad faith
By virtue of respondent’s failure to deny petitioner’s
requests for admission, respondent admitted that it intended to
associate its goods with petitioner. It has often been said that
a party who knowingly adopts a mark similar to the well-known
mark of another for closely related goods does so at his own
peril, and all doubt on the issue of likelihood of confusion is
resolved against him. In re Shell Oil Co., 992 F.2d 1204, 26

8 On the other hand, we are not persuaded by petitioner's argument that
purchasers would make a connection between VERONA as used on
respondent's cigarillos and the imagery associated with the Shakespeare
play "Romeo and Juliet." We are not convinced that purchasers would
actually go through the elaborate mental process of first associating
VERONA'S COURT with petitioner's allegedly famous ROMEO Y JULIETA
cigars, then making the connection between VERONA'S COURT and related
Shakespeare imagery, and then going on to associate VERONA itself with
that same imagery.
Cancellation No. 92047286
9
USPQ2d 1687 (Fed. Cir. 1993); and Nina Ricci S.A.R.L. v. E.T.F.
Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989).
Thus, if we had any doubt in this case, which we do not, we would
resolve it in favor of petitioner.
In view of the similarities between the marks, and the
identity of the goods, we find that confusion is likely.

Decision: The petition to cancel is granted, and
Registration No. 3122507 will be cancelled in due course.