Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA135443
`ESTTA Tracking number:
`04/13/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91172571
`Plaintiff
`Taboca AS
`Taboca AS
`
`,
`
`Mark D. Giarratana
`McCarter & English, LLP
`185 Asylum Street, City Place I
`Hartford, CT 06103-3495
`UNITED STATES
`mgiarratana@mccarter.com
`Opposition/Response to Motion
`Mark D. Giarratana, Esq.
`mgiarratana@mccarter.com, eswift@mccarter.com, astevens@mccarter.com
`/mdg/
`04/13/2007
`redacted brief.pdf ( 18 pages )(783350 bytes )
`4-13-07OppMSJExhibits.pdf ( 27 pages )(630714 bytes )
`4-13-07DecJoyWhitney.pdf ( 18 pages )(472555 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA135443
`ESTTA Tracking number:
`04/13/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91172571
`Plaintiff
`Taboca AS
`Taboca AS
`
`,
`
`Mark D. Giarratana
`McCarter & English, LLP
`185 Asylum Street, City Place I
`Hartford, CT 06103-3495
`UNITED STATES
`mgiarratana@mccarter.com
`Opposition/Response to Motion
`Mark D. Giarratana, Esq.
`mgiarratana@mccarter.com, eswift@mccarter.com, astevens@mccarter.com
`/mdg/
`04/13/2007
`redacted brief.pdf ( 18 pages )(783350 bytes )
`4-13-07OppMSJExhibits.pdf ( 27 pages )(630714 bytes )
`4-13-07DecJoyWhitney.pdf ( 18 pages )(472555 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TABOCA AS,
`
`V.
`
`Opposer,
`
`PHILIP MORRIS USA INC.,
`
`Applicant.
`
`\)\./\)\./\)\./$/\/
`
`OPPOSITION NO. 91172571
`
`APPLICATION NO. 78/623,680
`
`MARK: TABOKA
`
`APRIL 13, 2007
`
`OPPOSER’S MEMORANDUM IN OPPOSITION TO APPLICANT’S
`MOTION FOR SUMMARY JUDGMENT
`
`Submitted by Attorneys for
`Opposer Taboca, AS
`
`Mark D. Giarratana
`
`Alexandra B. Stevens
`
`Elizabeth M. Swift
`
`McCarter & English LLP
`CityPlace I
`185 Asylum Street
`Hartford, CT 06103
`
`(860) 275-6700
`(860) 724-3397 (fax)
`mgiarratana@mccarter.com
`asteVens@mccarter.com
`eswift@mccarter.com
`
`MEI 6287694v.5
`
`
`
`Table of Contents
`
`Page
`
`I. Introduction ............................................................................................................................... ..I
`
`II. Summary of Relevant Facts ..................................................................................................... ..l
`
`III. Argument ................................................................................................................................ ..7
`
`A.
`
`Summary Judgment Standard ................................................................................ ..7
`
`B.
`
`Prior Use of a Trade Name is Sufficient to Prevent Registration of
`a Trademark. .......................................................................................................... ..7
`
`C.
`
`Taboca’s Prior Use of its Trade Name is Sufficient to Prevent
`
`Registration of the TABOKA Mark, and Phillip Morris has Failed
`to Demonstrate Otherwise .................................................................................... ..l1
`
`D.
`
`E.
`
`Neither Use in Commerce nor Analogous Use Sufficient to Ground
`a Claim of Priority of Use is Relevant to the Merits of the Motion
`for Summary Judgment ........................................................................................ .. 1 3
`
`Philip Morris Has Not Demonstrated the Absence of Any Genuine
`Issues of Material Fact on Which Taboca’s Opposition is Based. ...................... ..l5
`
`IV. Conclusion ............................................................................................................................ .. 1 5
`
`ME] 6287694v.5
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`
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`I. INTRODUCTION
`
`Taboca, AS (“Taboca” or “Opposer”) submits this Memorandum in opposition to
`
`Philip Morris USA, Inc.’s (“Philip Morris” or “Applicant”) Motion for Summary Judgment
`
`(“Motion”) and Philip Morris’ Brief in Support of its Motion for Summary Judgment (“Brief’).1
`
`Philip Morris’ Motion should be denied for at least the following reasons:
`
`Taboca has continuously used its Taboca designation as a trade name since more
`
`than one year prior to the filing date of Philip Morris’ Intent to Use (“ITU”) application for the
`
`TABOKA mark, and therefore has established prior use of its mark as a trade name sufficient to
`
`preclude Philip Morris from registering the TABOKA mark for tobacco products in the United
`
`States. Philip Morris does not argue in its Brief that Taboca cannot demonstrate prior use of its
`
`trade name sufficient to preclude registration of the TABOKA mark, nor does Phillip Morris
`
`otherwise raise any issues of fact to controvert the facts put forth by Taboca establishing its prior
`
`rights in the Taboca trade name. If Phillip Morris does argue these facts, there are, at the very
`
`least, disputed issues of material fact as to Taboca’s prior trade name rights that would preclude
`
`registration of Phillip Morris’ ITU Application, and therefore Phillip Morris’ Motion should be
`
`denied.
`
`II. SUMMARY OF RELEVANT FACTS
`
`Based in Oslo, Norway, Taboca is limited liability company that was founded in
`
`April 2004, as a marketer of premium snus tobacco which is a type of smokeless tobacco. (Ex. 1,
`
`1 Phillip Morris filed a Motion for Summary Judgment and Memorandum in support of same on February 7, 2007
`[Dkt. ## 10, 13],
`to which Taboca’s Opposition papers would have been due on March 14, 2007. Taboca
`subsequently filed a Motion for Extension of Time on March 1, 2007 [Dkt. # 17], requesting a thirty-day
`extension of time to file its Opposition Memorandum up to and until April 13, 2007. The Board granted Taboca’s
`Motion for Extension of Time on April 4, 2007 [Dkt. # 18].
`
`MEI 6287694v.5
`
`
`
`Quinn Dep., p. 17; Ex. 2, Bates No. Taboca — 0237). The purpose of Taboca since its inception
`
`has been to develop and market snus products for sale throughout the world, including the United
`
`States. The company’s trade name, Taboca, was developed using parts of the Spanish words for
`
`“tobacco” and “mouth”? (Ex. 3, Quinn Dep., Ex. l3, Opp. Supp. Ans. To Interrog., No. 1).
`
`Philip Morris filed its ITU application on May 5, 2005 (Application Serial No.
`
`78/623,680), seeking registration of the mark TABOKA in International Class 34 for
`
`cigarettes,
`including cigars,
`raw or manufactured,
`tobacco,
`tobacco for roll your own cigarettes, pipe tobacco,
`cigarillos,
`chewing tobacco,
`snuff tobacco,
`tobacco substitutes not
`for
`medical purposes; smokers’ articles, namely cigarette papers and
`tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays not
`of precious metals, their alloys or coated therewith; smoking pipes,
`pocket apparatus for rolling cigarettes,
`lighters not of precious
`metals, matches.
`
`(Notice of Opposition, pg. 1).
`
`Taboca filed its Notice of Opposition on August 28, 2006 on the grounds that it
`
`has used the “designation TABOCA in connection with its snus or moist smokeless tobacco
`
`business” prior to Philip Morris’ ITU filing date of May 5, 2005, and therefore “has priority of
`
`use vis—a—vis Applicant in connection with the TABOCA designation.” (Notice of Opposition
`
`1i 1). Taboca further alleged that Philip Morris’ TABOKA designation “so resembles Opposer’s
`
`prior designation TABOCA as to be likely, when used on or in connection with certain tobacco
`
`products or business, such as snus or moist tobacco, to cause confusion, or to cause mistake, or
`
`to deceive.” (Notice of Opposition 1] 3).
`
`Since early 2004, Taboca has been doing business in the United States and other
`
`countries under the Taboca trade name. In the United States, Taboca has been developing
`
`2
`
`The Spanish word for tobacco is “tabaco” and the Spanish word for mouth is “boca”.
`
`MEI 6287694v.5
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`
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`business with United States companies to market and sell a snus product to the American
`
`consumer. Prior to Philip Morris’ ITU filing date of May 5, 2005, Taboca undertook at least the
`
`following business activities in connection with the United States under its trade name:
`
`Press releases and news reports concerning the creation of Taboca and its
`
`plan to introduce luxury snus products, referring to the company by the
`
`Taboca trade name, available to the public and to the trade. These were
`
`independently accessed by at least one United States company, and also
`
`forwarded by Taboca to potential United States business partners (Ex. 5,
`
`Quinn Dep., Exs. 4, 5, and 6);
`
`Use and distribution of business cards and stationary bearing the Taboca
`
`trade name in connection with business activity in the United States (EX.
`
`4, Bates Nos. Taboca - 0576-0580);
`
`Phone calls and correspondence to United States companies under the
`
`Taboca trade name concerning development of business in the United
`
`States (Ex. 1, Quinn Dep., pp. 43-46, 67-69, 106-107; Ex. 7, Bates Nos.
`
`Taboca 0247, 0251-0255, 0257, 0582-0583);
`
`Visits by Taboca company officials to the United States for meetings with
`
`United States-based companies to conduct Taboca’s business under the
`
`Taboca trade name (Ex. 1, Quinn Dep. pp. 35-36, 45-46; Ex. 8, Bates Nos.
`
`Taboca - 0239, 0581);
`
`Business presentations made by Taboca company officials in the United
`
`States to United States-based businesses concerning Taboca’s business
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`ME1 6287694v.5
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`U)
`
`
`
`under the Taboca trade name (Ex. 1, Quinn Dep. pp. 35-36; Ex. 9, Quinn
`
`Dep., Ex. 9; Ex. 10, Bates Nos. Taboca - 0534-0565; Ex. 11, Bates Nos.
`
`Taboca - 0361-0401);
`
`Negotiations between Taboca and a United-States-based business
`
`concerning entering into a confidentiality agreement to conduct further
`
`business under the Taboca trade name (Ex. 12, Quinn Dep., Ex. 8; EX. 1,
`
`D. Quinn. Dep., pp. 52, 54);
`
`to provide assistance to Taboca in
`
`conducting its business in the United States (Ex. 13, Quinn Dep., Ex. 10);
`
`Sale of shares of Taboca
`
`(Ex. 1, Quinn Dep., pg. 82; Ex. 13,
`
`Quinn Dep., Ex. 10);
`
`Creation of sample cans bearing the Taboca trade name for packaging
`
`Taboca’s snus products and for distribution to potential United States
`
`business partners and customers (Ex.1, Quinn Dep., pp. 34, 48-49; Ex. 6,
`
`Bates Nos. Taboca — 0420-0423, 0584-0586);
`
`Creation of a web site bearing the Taboca trade name (Ex. 1, Quinn Dep.,
`
`p. 35; Whitney Dec1.11 8, Ex. 5); and
`
`Appointment of a United States businessman to the Board of Directors of
`
`Taboca to direct Taboca’s business from within the United States (Ex. 1,
`
`Quinn Dep., pg. 55; Ex. 3, D. Quinn Dep., EX. 13, Opp. Supp. Ans. to
`
`Interrog., No. 23).
`
`MEI 628769-’1v.5
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`
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`All of these activities demonstrate Taboca’s open use of its trade name in the United States and
`
`illustrate its intention to further develop and grow a continuing business concern in the United
`
`States.
`
`Additionally, Taboca obtained foreign registrations of TABOCA marks. On April
`
`27, 2004, Taboca filed applications for the TABOCA Mark and the TABOCA Design Mark in
`
`the Norwegian Patent Office, for snus and associated products. (Whitney Decl., 1111 6, 7, Exs. 3,
`
`4). These marks registered on April 25, 2005. (Id). On January 5, 2005, Taboca filed
`
`applications for the TABOCA Mark and the TABOCA Design Mark in the Sweden Patent and
`
`Registration Office. (Whitney Decl., 1111 4, 5, Exs. 1, 2). These marks registered on September
`
`16, 2005. (Id). The status and existence of these applications/registrations have been available
`
`to the public.
`
`Subsequent to Philip Morris’ May 5, 2005 ITU filing date, Taboca made
`
`continuous use of its trade name, including undertaking at least the following business activities:
`
`0 Hiring an American businessman, with an office in New York, to serve as
`
`Chief Executive Officer of Taboca and to manage Taboca’s day-to-day
`
`business from within the United States under the Taboca trade name
`
`(Ex. 1, Quinn Dep., pg. 13; Ex. 3, Quinn Dep., Ex. 13, Opp. Supp. Ans. to
`
`Interrog., No. 23);
`
`0 Establishing a New York base for Taboca’s American operations (Ex. 3,
`
`Quinn Dep., Ex. 13, Opp. Supp. Ans. to Interrog., No. 8);
`
`0 Hiring a
`
`V
`
`in connection
`
`with design work illustrating the Taboca trade name in connection with
`
`MEI 6287694v.5
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`
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`Taboca’s business (Ex. 3, Quinn Dep., Ex. 13, Opp. Supp. Ans. to
`
`Interrog., No. 25);
`
`Making further presentations to, and entering into negotiations with, one
`
`of the largest tobacco companies in the world in connection with
`
`distributing and selling snus product in the United States in association
`
`with the Taboca trade name (Ex. 14, Quinn Dep., Ex. 16; Ex. 1, D. Quinn
`
`Depo, pp. 83-84, 86-87);
`
`Execution of a Strategic Relationship Agreement with one of the largest
`
`tobacco companies in the world to distribute and sell snus products in the
`
`United States in connection with the Taboca trade name and continuing to
`
`do business with that company (Ex. 15, Quinn Dep., Ex. 17; Ex. 1, Quinn
`
`Dep., pp. 84-85);
`
`Filing an intent to use application with the United States Patent &
`
`Trademark Office for the mark “Stockholm Snus” in International Class
`
`34 in connection with “chewing tobacco; smokeless tobacco” (Ex. 1,
`
`Quinn Dep., pp. 76-77);
`
`Hiring an American businessman, based in Connecticut, to serve as
`
`Taboca’s Executive Vice President for Business Development in the
`
`United States (Ex. 3, Quinn Dep., Ex. 13, Opp. Supp. Ans to Interrog., No.
`
`23); and
`
`(Ex. 1, Quinn Dep., pp. 113-114).
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`MEI 6287694v.5
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`
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`Accordingly, Taboca has established prior and continuous use of its Taboca trade name vis-a-vis
`
`Phillip Morris’ TABOKA mark, and Philip Morris’ ITU application should not register.
`
`III. ARGUMENT
`
`A.
`
`Summary Judgment Standard
`
`A party moving for summary judgment has the burden of demonstrating the
`
`absence of any genuine issue of material fact, and that it is entitled to judgment as a matter of
`
`law. Fed. R. Civ. P. 56(c). This burden is greater than the evidentiary burden at trial. T.B.M.P.
`
`at 500-102; _s;c_e_ also Anderson v. Libert Lobb . Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 2002, 106
`
`S. Ct. 2505 (1986) (summary judgment may be granted only when no “reasonable jury could
`
`return a verdict for the nonmoving party.”). In determining whether there is a genuine issue of
`
`material fact, the “nonmoving party must be given the benefit of all reasonable doubt as to
`
`whether genuine issues of material fact exist; and the evidentiary record on summary judgment;
`
`and all inferences to be drawn from the undisputed facts, must be viewed in the light most
`
`favorable to the non-moving party.” T.B.M.P. at § 528.01; _s_e_e_ also Transmatic. Inc. v. Gulton
`
`Indus, Inc, 53 F.3d 1270, 1274 (Fed. Cir. 1995).
`
`B.
`
`Prior Use of a Trade Name is Sufficient to Prevent Registration of a
`Trademark.
`
`Taboca opposes registration of the TABOKA mark based on Section 2(d) of the
`
`Trademark Act, 15 U.S.C. § l052(d). Section 2(d) states in pertinent part:
`
`No trademark by which the goods of the applicant may be
`distinguished from the goods of others shall be refused registration
`on the principal register on account of its nature unless it .
`.
`. (d)
`Consists of or comprises a mark which so resembles a mark
`registered in the Patent and Trademark office, or a mark or trade
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`ME1 6287694v.5
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`name previously used in the United States by another and not
`abandoned, as to be likely, which used on or in connection with the
`goods of the applicant to cause confusion, or to cause mistake, or
`to deceived .
`.
`.
`
`15 U.S.C. § 1052(d) (emphasis added). Taboca’s opposition to Philip Morris’ TABOKA mark is
`
`based on the fact that Taboca utilized its TABOCA designation as a trade name under Section
`
`2(d) more than a year prior to Philip Morris’ ITU filing date.
`
`The term “trade name” means any “name used by a person to identify his or her
`
`business or vocation” 15 U.S.C. § 1127.
`
`_S_e_e ali Martahus V. Video Duplication Servs.. lnc.,
`
`27 U.S.P.Q.2d 1846, 1850 (Fed. Cir. 1993) (“a ‘trade name’ is any name used by a person to
`
`identify his or her business or vocation”). Contrary to the claims made by Philip Morris in its
`
`Brief and as demonstrated herein, Taboca claims use of its TABOCA mark as a designation “in
`
`connection with its snus or moist smokeless tobacco business”, i.e., as a trade name. (Notice of
`
`Opposition 11 1).
`
`Trade name usage is recognized as an entirely distinct manner of usage which
`
`confers different rights upon the user, and which may form a distinct and independent basis for
`
`opposing registration of a trademark even where the trade name is not concurrently or later used
`
`also as trademark.
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`l5 U.S.C. § 1127; 15 U.S.C. § l052(d).
`
`_S_e_e Alfred Elecs. V. Alford Mfg.
`
`Q_g., 333 F.2d 912, 142 U.S.P.Q. 168 (C.C.P.A. 1964). The TTAB has long recognized that trade
`
`name rights alone, independent of trademark rights or rights of priority conferred by analogous
`
`use, are sufficient to establish priority and to oppose registration of a later-filed trademark
`
`application. E Martahus, 27 U.S.P.Q.2d at 1850 (“a trade name lacking any independent
`
`trademark or service mark significance may bar registration of a trademark or service mark that
`
`is confusingly similar to that trade name”); Cyber-Tronics. lnc. V. Johnson Serv. Co., 156
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`MEI 6287694v.5
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`U.S.P.Q. 583, 586 (TTAB 1967) (it is settled that use of a trade name “creates rights in the user
`
`sufficient to preclude the registration by a subsequent user of the same or a similar notation for
`
`the same or related goods, notwithstanding that the later party’s use may be that of a
`
`trademark”); Midwest Homes Inc. V. Midwest Houses. Inc., 120 U.S.P.Q. 406, 407 (Com’r Pat.
`
`& Trademarks 1959) (first use as a technical trademark does not in and of itself give registrable
`
`rights where such registration would be inconsistent with the right of an earlier trade name user
`
`to continue use of the identifying feature of its trade name). Thus, under 15 U.S.C. § 1052(d), an
`
`opposer may prevent registration of a mark even where the opposer itself has not established
`
`exclusive or registrable rights to a mark. 3 J. Thomas McCarthy, TRADEMARKS AND UNFAIR
`
`COMPETITION § 20:16, at 20-45 (4‘“ ed. 2006).
`
`Most recently, the Federal Circuit has affirmed this principal, holding that an
`
`opposer may rely on use that is solely intrastate, and therefore not regulable by Congress or
`
`federally registrable, and emphasizing that, under the plain language of Section 1052(d), an
`
`opposer need only show use “in the United States”, not use “in commerce”. First Niagara Ins.
`
`Brokers. Inc. v. First Niagara Fin. Group, Inc., 81 U.S.P.Q.2d 1375, 1378 (Fed Cir. 2007) (citing
`
`National Cable Television Ass’n v. American Cinema Editors. Inc., 19 U.S.P.Q.2d 1424 (Fed
`
`Cir. 1991) (“This is not the law. Section 14 [through Section 2(d)] requires only prior use; ‘in
`
`commerce’ is noticeably absent.”)). This privilege attaches even to a foreign opposer, who “can
`
`present its opposition on the merits by showing only gs_e_ of the mark in the United States.” Q, at
`
`1378. Indeed, trade names are by definition not used in commerce, s_e§ McCarthy, TRADEMARKS
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`AND UNFAIR COMPETITION § 9:13, at 9-29, and are nonetheless, in the plain language of the
`
`statute and well established precedent, a valid basis for opposition to a registration.
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`“To establish trade name identification, an organization need only to have used a
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`name or acronym in a manner that identifies the company by that name or acronym to the public
`
`.
`
`.
`
`. no particular formality of adoption or display is necessary to establish trade name
`
`identification.” Martahus, 27 U.S.P.Q.2d at 1850 (citing National Cable Television Ass’n.. Inc.,
`
`19 U.S.P.Q.2d at 1428). Sg: a_l_s_g 4 J. Thomas McCarthy, TRADEMARKS AND UNFAIR
`
`COMPETITION § 29:4, at 29-22 (4th ed. 2006). Case law establishes that there are many ways in
`
`which a party can demonstrate its adoption and use of a trade name. For example, appearance of
`
`a trade name on stationary, business forms, proposals, and agreements can demonstrate
`
`acceptable use of a trade name. Cyber—Tronics. Inc., 156 U.S.P.Q. at 584. Trade name use can
`
`also be established by representing a term as a trade name during contract negotiations with
`
`potential clients, or by indicating less formally to potential clients what services will be offered
`
`by a business once it has the capabilities to do so. Martahus, 27 U.S.P.Q.2d at 1851.
`
`Trade name rights have been found sufficient to uphold opposition to registration
`
`even where the trade name usage has been extremely local, in connection with limited business
`
`or a limited market regardless of whether the claimed trade name is searchable or otherwise
`
`notorious to the subsequent filer.
`
`1gl_.; The Du-Dad Lure Co. V. Creme Lure Co., 143 U.S.P.Q.
`
`358 (TTAB 1964). Most recently, the Federal Circuit has upheld opposition on behalf of a
`
`foreign company which had neither a physical presence in the United States, was not licensed to
`
`do business in the United States, nor interacted with American consumers of its insurance
`
`services. See, First Niagara Ins. Brokers Inc, 81 U.S.P.Q.2d at 1376. The interactions between
`
`the Canadian insurance company and other Canadian companies having business in or associated
`
`with the United States, and with American underwriting companies and insurance brokers,
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`ME1 6287694v.5
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`10
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`
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`constituted “more than ample use .
`
`.
`
`. in the United States to satisfy the [trade name] use
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`requirements of Section 2(d).” I_d_., at 1378.
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`Clearly, interacting or associating with companies in the United States and
`
`growing a business with an eye toward the American consumer provides a more than sufficient
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`basis to establish trade name rights capable of preventing registration of a subsequent user.
`
`C.
`
`Taboca’s Prior Use of its Trade Name is Sufficient to Prevent
`
`Registration of the TABOKA Mark, and Phillip Morris has Failed to
`Demonstrate Otherwise.
`
`In its Brief, Philip Morris argues that Taboca’s use of the trade name TABOCA
`
`does not and cannot constitute technical trademark use sufficient to establish priority of use.
`
`(Brief at pg. 13). The crux of Philip Morris’ argument for summary judgment is that Taboca has
`
`no evidence and makes no claim of having prepared to use or made use of the TABOCA mark as
`
`a trademark in commerce in the United States, and therefore, as a matter of law, Taboca cannot
`
`claim that any prior use of the TABOCA mark constitutes “analogous use” sufficient to establish
`
`priority of rights to a trademark. (Brief at pp. 11-13).
`
`However, Philip Morris in no way claims in its Brief that Taboca has not
`
`established trade name rights to its TABOCA mark, nor can it. As set forth above, Taboca is an
`
`established and growing business concern that had been doing business in the United States for
`
`at least one year prior to the date that Philip Morris filed its ITU application for the TABOKA
`
`mark. Prior to Philip Morris’ May 5, 2005 filing date, Taboca distributed business cards,
`
`stationary, business proposals, and business presentations prominently bearing the Taboca trade
`
`name and detailing the Company’s planned business objectives and strategies. (Exs. 1, 4, 9-11).
`
`Taboca officials were also in telephone and e—mail communication with employees of United
`
`ME] ()287694v.5
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`11
`
`
`
`States’ businesses regarding Taboca business in the United States. (Exs. 1, 7). Taboca created a
`
`web site bearing the Taboca trade name (Ex. 1; Whitney Decl. 1] 8, Ex. 5) and developed can
`
`samples for use with Taboca’s snus products that also displayed the company trade name to
`
`demonstrate to potential United States business partners. (Exs. 1, 6). Taboca entered into a
`
`contract with an American company, which would provide assistance to Taboca in developing its
`
`business (Exs. 1, 13), and appointed an American businessman to its Board of Directors to direct
`
`business within the United States. (Exs. 1, 3). A United States company became a shareholder
`
`in Taboca (Ex. 1, 13). Taboca officials further traveled to the United States to meet with
`
`American companies to discuss Taboca business enterprises in the United States. (Exs. 1, 8).
`
`Taboca registered the TABOCA Trademark and TABOCA Design Mark (Whitney Decl. ‘M 6, 7,
`
`Exs. 3, 4). Additionally, business press reported on the creation of Taboca and its plans to
`
`introduce and market luxury snuff products, (Ex. 5), which reports were accessible to the public
`
`and trade, were independently accessed by at least one American tobacco company, (Quinn
`
`Dep., Ex. 6), and were forwarded by Taboca to potential United States business partners (Quinn
`
`Dep., Exs. 4, 5 and 6). Phillip Morris has not presented any evidence to controvert these facts
`
`establishing Taboca’s prior trade name rights, nor can it.
`
`Following Philip Morris’ filing of its ITU application in May 2005, Taboca
`
`continued to do business in the United States under the Taboca trade name, including hiring first
`
`an American to serve as Chief Executive Officer and then an American to serve as Executive
`
`Vice President of Business Development, basing its United States operations in New York,
`
`negotiating and contracting with an American tobacco company to sell smokeless tobacco
`
`products in connection with the Taboca trade name, filing a trademark application with the
`
`ME1 6287694v.5
`
`12
`
`
`
`USPTO, hiring a
`
`and preparing for its
`
`to do product and marketing design work,
`
`(Exs. 1, 3, 14, 15). All of this activity over the past three years demonstrates Taboca’s
`
`ongoing and growing presence in the United States’ smokeless tobacco market in connection
`
`with its trade name and clearly demonstrates that, under the law, Taboca has established
`
`continuous use of that trade name in this country going back to at least April 2004.
`
`Clearly, Taboca has been making continuous use of its trade name in a manner
`
`that identifies its business to others in the industry and to potential consumers for at least one
`
`year prior to Philip Morris’ filing of its ITU application on May 5, 2005. Such use permits
`
`Taboca to preclude registration by the subsequent user, Philip Morris, regardless of whether or
`
`not Philip Morris has made technical trademark use of the TABOKA mark during the past nine
`
`months. Although not disputed in Philip Morris’ Brief, at the Very least there are material issues
`
`of fact as to whether Taboca’s prior and continuous trade name usage is sufficient to preclude
`
`registration of Phillip Morris’ ITU application, and therefore Philip Morris’ Motion for Summary
`
`Judgment must be denied.
`
`D.
`
`Neither Use in Commerce nor Analogous Use Sufficient to Ground a
`Claim of Priority of Use is Relevant to the Merits of the Motion for
`Summary Judgment
`
`The standards for establishing either actual use in commerce, or such analogous
`
`use sufficient to ground a claim of priority of use, are irrelevant to the merits of Taboca’s
`
`Motion, and no ruling as to Taboca’s ability to meet these standards should be rendered. See,
`
`First Niagara Ins. Brokers, 81 U.S.P.Q.2d at 1378, in which the Federal Circuit cautioned that
`
`“we believe it would be imprudent to render a decision predicated upon a hypothetical reading of
`
`ME] 6287694v.5
`
`
`
`Section 2(d), z'.e., as if it requires ‘use in commerce’ .
`
`,
`
`.
`
`. In fact, such a decision would arguably
`
`constitute an impermissible advisory opinion given the possibility that [the unregistered opposer]
`
`may eventually seek, in separate proceedings, to prove that its marks are used ‘in commerce’ in
`
`order to obtain its own registration with the USPTO.” As argued and demonstrated above,
`
`statutory and case law provide that Taboca’s opposition may be upheld on the basis of its use of
`
`the trade name TABOCA in the United States.
`
`Further, Taboca maintains that there are disputed issues of fact as to whether its
`
`use of the contested designation is sufficient to ground registration, or sufficient analogous use to
`
`ground a claim of priority of use which it could tack on to a later use of the mark in commerce.
`
`The impact of Taboca’s activities under the mark and of publications regarding its activities may
`
`well be sufficient to meet either or both of these standards. Contrary to Philip Morris’s assertion
`
`on page 9 of its Brief, there is neither a statutory cut-off, nor a well-established time limit for
`
`making technical trademark use in order to claim the priority of prior analogous use or trade
`
`name use. E, ggm Alfred Elecs. v. Alford Mfg. Co., grga (trade name use beginning over 10
`
`years prior to technical trade mark use was tacked on to provide priority of right to the contested
`
`term). Contrary to Philip Morris’s assertions, there is no “matter of law” dictating that a claim
`
`made by Taboca to meet these standards must fail at this time or in the future.
`
`Nonetheless, Taboca maintains that any ruling with reference to these standards
`
`would be irrelevant to the Motion, and an impermissible advisory opinion regarding a matter not
`
`before the Board.
`
`ME} 6287694v.5
`
`14
`
`
`
`E.
`
`Philip Morris Has Not Demonstrated the Absence of Any Genuine
`Issues of Material Fact on Which Taboca’s Opposition is Based.
`
`In its Brief, Philip Morris argues only that Taboca’s use of the name TABOCA
`
`does not satisfy trademark use or analogous use under 15 U.S.C. § 1052(d) and that its
`
`Opposition should therefore be dismissed. As is evident above, there are numerous facts
`
`demonstrating that Taboca has utilized its trade name in the United States to identify its business
`
`to others in the industry and to potential consumers for more than a year prior to Philip Morris’
`
`May 5, 2005 filing date, and that such trade name use alone provides an independent basis for
`
`opposition under Section 2(d). Phillip Morris has not presented any facts to controvert these
`
`facts. Therefore, Taboca’s Opposition should proceed based at least on Taboca’s prior rights in
`
`and to the Taboca trade name.
`
`IV. CONCLUSION
`
`For the foregoing reasons, it is respectfully submitted that Philip Morris’ Motion
`
`for Summary Judgment should be denied.
`
`Date: April 13, 2007
`
`Mark D Giarratana
`
`Alexandra B. Stevens
`
`Elizabeth M. Swift
`
`McCarter & English LLP
`CityPlace I
`185 Asylum Street
`Hartford, CT 06103
`
`6 (860) 275-6700
`(860) 724-3397 (fax)
`mgiarratana@mccarter.corn
`astevens@mccarter.com
`eswift@mccarter.com
`Attorneys for Opposer Taboca AS
`
`MEI 62876941/.5
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and accurate copy of the foregoing OPPOSER’S
`
`MEMORANDUM IN OPPOSITION TO APPLICIANT’S MOTION FOR SUMMARY
`
`JUDGMENT was served by regular mail, postage prepaid, on this 13th day of April 2007, upon
`
`counsel for Applicant:
`
`Christopher P. Foley, Esq.
`FINNEGAN, HENDERSON FARABOW,
`GARRETT & DUNNER, LLP
`Two Freedom Square
`11955 Freedom Drive
`
`Reston, VA 20190-5675
`(571) 203-2700
`
`Roberta Horton, Esq.
`ARNOLD & PORTER
`
`555 Twelfth Street, NW
`Washington, DC 20004-1206
`(202) 942-5161
`
`W 6
`
`MARK D. GIARRATANA
`
`ME1 6287694v.5
`
`
`
`Taboca AS v. Philip Morris USA Inc.
`Opposition No. 91172571
`
`EXHIBIT SUBMITTED BY OPPOSER TABOCA AS IN SUPPORT OF
`ITS MEMORANDUM OF LAW IN OPPOSITION TO
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`EXHIBIT 1
`
`
`
`Filed Under Seal Subject to Protective Order
`
`MEI 6308129v.l
`
`
`
`Taboca AS v. Philip Morris USA Inc.
`Opposition No. 91172571
`
`EXHIBIT SUBMITTED BY OPPOSER TABOCA AS IN SUPPORT OF
`
`ITS MEMORANDUM OF LAW IN OPPOSITION TO
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`EXHIBIT 2
`
`
`
`
`
`WEI Bmnnszsysundregistrene
`
`FIRMAATTEST
`
`Organisasjonsnummer: 986 746 048
`
`Aksjeselskap
`
`Stiftelsesdato:
`
`29‘O3.2004
`
`Registrert i Foretaksregisteret: 01.04.2004
`
`Foretaksnavn:
`
`TABOCA AS
`
`Forretningsadresse: Bygdzy Allé 1
`0201 OSLO
`0301 OSLO
`Norge
`
`Kommune:
`Land:
`
`Postadresse:
`
`Postboks 2325
`0201 OSLO
`
`1oo.00o,oo
`Aksjekapital NOK:
`Kapitalen er full: innbetalt
`
`Daglig 1eder/ adm.direktzr:
`Tom Erik Ruud
`
`Styre:
`Styrets lederz
`Tom Erik Ruud
`Charlotte Andersens V 39
`0375 OSLO
`
`Styremedlem:
`Reinhard Rye
`
`Varamedlem:
`Finn Wilhelm Simonsen
`
`Signatur:
`Styrets leder eller to styremedlemmer i fellesskap.
`
`Revisor:
`Revisornummer 976 389 387
`ERNST & YOUNG AS
`Christian Frederiks plass 6
`0051 OSLO
`
`Godkjent
`revisjonsselskap
`
`Vedtektsfestet formél:
`Produsere og markedsfzre tobakksprodukter og andre raskt omsettelige
`forbruksvarer samt annen virksomhet
`som stér i naturlig sammenheng med
`dette.
`
`Utskriftsdato 01.04.2004 Organisasjonsnr 986 746 048
`
`Side 1 av 1
`
`Taboca - 0237
`
`
`
`Taboca AS V. Philip Morris USA Inc.
`Opposition No. 91172571
`
`EXHIBIT SUBMITTED BY OPPOSER TABOCA AS IN SUPPORT OF
`
`ITS MEMORANDUM OF LAW IN OPPOSITION TO
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`EXHIBIT 3
`
`Filed Under Seal Subject to Protective Order
`
`ME] 6308129v.1
`
`
`
`Taboca AS v. Philip Morris USA Inc.
`Opposition No. 91172571
`
`EXHIBIT SUBMITTED BY OPPOSER TABOCA AS IN SUPPORT OF
`ITS MEMORANDUM OF LAW IN OPPOSITION TO
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`EXHIBIT 4
`
`
`
`Linda Green Design
`Anton Tschudisvei 34
`
`1344 HASLUM
`
`Taboca AS
`
`‘
`
`;‘AJ\/0% W $1M
`05W “WNW
`‘T}fj[{0t/Pk
`mm W)
`Bz;(eg;1e|se_
`_ R Antall Eflllet
`Konsulenttjenester
`1,00
`
`_____
`
`[Varenr
`1
`
`Org.nr
`mam
`Teiefaks
`Mobil
`Girokonto
`
`986771638 MVA
`
`98 23 80 62
`9710 34 67237
`
`F aktu rakopi
`Side
`1
`Kundenr
`10002
`Fakturanr
`3
`Ordrenr
`10002
`Fakturadato
`22.06.2004
`
`::d:;:,:::o
`
`5::‘:::“
`A
`
`W Stk. pri§~“!“?aba£t nfiva
`10 000,00
`
`_ Nettog
`10 O00{O0*
`
`Varer marked med ' er avgiftsfri vareltjeneste
`Netiosalg
`10 000,00
`
`Avg. pliktig
`
`MVA
`
`Zreavrunding
`
`TOTALT -1
`10 000,00
`
`;
`
`‘
`
`'
`
`‘
`
`9710 34 67237
`
`10 000,00
`
`06.07.2004
`
`Fakturadato
`Fakturanr
`Kundenr
`
`22.06.2004
`3
`10002
`
`Taboca AS
`
`Linda Gran D
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