Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA328083
`ESTTA Tracking number:
`01/21/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91192712
`Plaintiff
`NATIONAL TOBACCO COMPANY, L.P.
`Suzan J. Hixon
`Greenebaum Doll & McDonald PLLC
`101 South Fifth Street3500 National City Tower
`Louisville, KY 40202
`UNITED STATES
`sjh2@gdm.com
`Opposition/Response to Motion
`Brian W. Chellgren
`bwc2@gdm.com
`/bwc/
`01/21/2010
`Opp Response.pdf ( 9 pages )(240899 bytes )
`Exhibit A.pdf ( 20 pages )(760405 bytes )
`Exhibit B.pdf ( 68 pages )(2743321 bytes )
`Exhibit C.pdf ( 65 pages )(4963138 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 77/702,228
`Mark:
`BLU MAGIC
`
`Published in the Oyficial Gazette of July 21, 2009, in International Class 34
`
`Opposition No. 91 192712
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`NATIONAL TOBACCO COMPANY, LP.
`
`OPPOSER,
`
`V.
`
`NEW IMAGE GLOBAL, INC.
`
`APPLICANT.
`
`OPPOSER’S RESPONSE TO APPLICANTS MOTION TO SUSPEND
`
`Opposer,Natior1ai Tobacco Company, LP. hereby responds to App1icant’s
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`Motion to Suspend Opposition and Memorandum in Support Thereof. Applicant seeks to
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`suspend these proceedings pending the outcome of a federal district court action seeking
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`a declaration of Appiicant’s nondnfringernent which Applicant recently instituted in the
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`Central District of California (Case No. 2:09-cv-06761) (the “Federal Action”). For the
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`reasons stated below, Opposer objects to the motion and urges the Board to exercise its
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`discretion to deny any attempt by Applicant to suspend these proceedings. Suspension is
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`a matter squarely within the discretion of the Board. Applicant’S Federal Action has
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`been filed in a court without proper jurisdiction over this matter. As noted in Opposer’s
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`Motion to Dismiss the Federal Action, Applicant had no reasonable apprehension of suit
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`for infringement because Applicant was not actually using the mark in interstate
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`commerce, and even if it had been using the mark, Opposer took no action to create a
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`justicable controversy. Therefore, the Federal Action should not serve as a basis for
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`delaying these proceedings.
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`

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`I.
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`THE DECISION NOT TO SUSPEND IS WITHIN THE BOARD’S DISCRETION.
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`Suspension of Board proceedings pending the iinai determination of another
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`proceeding is soieiy within the discretion of the Board. TBMP §510.02(a). While the
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`Board has often exercised its discretion to suspend proceedings pending federal court
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`litigation, the Board has recognized that it is not always prudent to do so. For example,
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`in 13.1. du Pont de Nemours & Co. V. G.C. Murphy Co., 199 USPQ 807, 808, n.3 (TTAB
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`1978), the Board denied the applicant’s motion to stay, based on the facts presented. A
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`similar conclusion should be reached here.
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`Initial drafts of the Lanham Act included provisions that would have
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`automaticaliy resulted in a stay of Board proceedings pending the resolution of civil court
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`actions. After much discussion of the issue in legislative hearings, such proposals were
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`expressly rejected. Rather, it was determined that each case should be determined upon
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`its own particular facts, within the discretion of the Board. See, David B. Allen, TIPS
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`FROM THE TTAB: Impact of TTAB Decisions in Civil Litigation" The Alp/honse—Gaston
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`Act, 74 Trademark Rep. 180 (1984), quoting H.R. 102, H.R. 5461 and S. 895 before the
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`subcommittee on Trade—Marks, Committee on Patents, 77m Cong. 15‘ Sess., 147-150
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`(1941).
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`II.
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`STATEMENT or RELEVANT FACTS.
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`Opposer distributes chewing tobacco, smoking tobacco, cigarette papers and other
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`tobacco products in the United States. For over a decade, Opposer has distributed a
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`variety of tobacco products under the well—known and famous mark ZIG-ZAG.
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`In 2008,
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`Opposer introduced a new product under the ZIG-ZAG® trademark, namely a cigar
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`wrapper which allows consumers to make their own cigars. Opposer developed six
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`

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`flavors for ZIG-ZAG cigar wraps, one of which is a blueberry flavored wrap sold under
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`the mark BLUE JUJU. On October 20, 2008, Opposer filed a trademark application for
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`the mark BLUE JUJU, covering “cigar wraps” in International Class 34. Opposer began
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`use in interstate commerce of cigar wraps sold under the BLUE JUJU trademark in early
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`2009, and its application published for opposition on March 3, 2009. On October 27,
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`2009, the United States Patent and Trademark Office (“USPTO”) issued Registration No.
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`3,703,229 for BLUE JUJU.
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`Nearly six months after Opposer applied for its BLUE JUJU trademark and after
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`Applicant had at least constructive notice of Opposer’s trademark application for BLUE
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`JUJU, on March 30, 2009, Applicant filed trademark application Serial No. 77/702,228
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`with the USPTO for the mark BLU MAGIC. The BLU MAGIC application covers a
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`variety of goods including “smoking articles, namely tobacco leaves and flavored tobacco
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`leaves for rolling cigars and cigarillos, flavored tobacco leaves in the form of a sheet for
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`use in rolling cigars and cigarillos and tobacco.” Applicant’s trademark application
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`alleges current use of the mark BLU MAGIC in connection with goods in International
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`Class 34. To establish current use to the USPTO, Applicant submitted what it claimed
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`was an example of its product packaging aiong with its trademark application. An image
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`of the BLU MAGIC specimen submitted to the USPTO appears below:
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`

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`
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`Applicant’s trademark application alleges that it began use of the mark BLU
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`MAGIC at least as early as March 1, 2009. However, Applicant has proffered no
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`evidence that it has actually used the mark in the ordinary course on goods in commerce
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`in the United States, or that it has engaged in anything more than a token use.
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`Unlike the rest of Applicant’s products,
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`there is no indication that Applicant has
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`marketed products under the BLU MAGIC mark on the Internet,. As recently as January
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`4, 2010, Internet searches on Google and Applicant’s own websites at
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`www.newimageglobal.com, www.royalblunts.com, and WWW.trueblunts.com revealed no
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`relevant example of the mark BLU MAGIC used in connection with tobacco products
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`except for references to the dispute between Opposer and Applicant.
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`After becoming aware of the BLU MAGIC trademark application and alleged use
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`of the mark, Opposer sent a letter to Applicant expressing concern that “the marks BLU
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`MAGIC and BLUE 3U}U may be considered to have the same meaning and are certainly
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`used in connection with similar goods.” Specifically, Opposer requested that:
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`1. New Image provide written confirmation that it will phase out all use of
`the mark BLU MAGIC within three months;
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`

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`2. New Image provide written confirmation that it has terminated all plans
`to initiate use of the mark BLU MAGIC or any other mark confusingly
`similar to BLUE JUJU; and
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`3. New Image expressly abandon Application Serial No. 77/702,228; and
`promptly provide to us a confirmation copy of the express abandonment.
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`Opposer did not threaten to seek damages, attach a draft complaint, or threaten to
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`commence civil litigation.
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`instead, Opposer simply asked for confirmation that the above
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`steps had been taken by June 21, 2009.
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`Opposer received no response to its initial letter, and so on July 7, 2009, counsel
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`send a second letter making the same requests. Again, the did not threaten litigation,
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`instead stating: “it is our intention to resolve this matter expeditiously and amicably. We
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`are aware of the upcoming publication of New Image’s application and look forward to
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`receiving written confirmation of the completion of the steps outlined above by July 21 ,
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`2009.” Applicant did not respond to Opposer’s second ietter. On August 16, 2009,
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`Opposer sent a third letter to Applicarit’s counsel, repeating its requests and concluding:
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`“It remains our intention to resolve this matter amicably. However, should New Image
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`ignore this third and final letter, NTC may take whatever steps are necessary to preserve
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`its intellectual property rights. We iook forward to receiving your response and a
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`confirmation copy of the express abandonment no later than September 12, 2009.”
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`Appiicant never responded in any fashion to Opposer’s letters.
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`Instead of responding to Opposer’s requests, Applicant preemptively filed the
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`district court declaratory judgment action at issue on September 17, 2009, and informed
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`Opposer thereof in a September 24, 2009 letter. It did not, however, serve the Complaint
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`until November 25, 2009, a full week afler Opposer filed a Notice of Opposition to
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`

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`prevent the registration of BLU MAGIC on November 18, 2009. Applicant then filed
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`and served the Amended Complaint on December 9, 2009.
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`Opposer has not filed a compiaint in any court nor taken any other action against
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`Applicant beyond filing this trademark opposition.
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`III.
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`ARGUMENTS
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`While Applicant implies in its motion that judicial economy wili be served by
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`suspending these proceedings, Opposer submits that under the circumstances presented,
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`the opposite is true.
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`On January 15, 2010, Opposer filed a Motion to Dismiss Plaintiff‘ s First
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`Amended Complaint. A copy of the Motion is included as Exhibit A and supporting
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`documents for the Motion are included as Exhibit B. In this Motion, Opposer notes that,
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`upon seeking a declaratory judgment action, courts in the Ninth Circuit consider whether
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`“under all the circumstances an actual or imminent injury caused by the defendant that
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`can be redressed by judicial relief and that is of sufficient immediacy and reality to
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`warrant the issuance of a declaratory judgment” exists. See Monster Cable Products 12.
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`Euroflex SRL, 642 F. Supp.2d l00l, l0l0—ll (ND. Cal. 2009).
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`In this case, Applicant
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`does not appear to be using the BLU MAGIC trademark in the regular course of business
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`and therefore can have no real and reasonable apprehension that it will be liable for
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`manufacturing a product that it does not appear to be distributing in the ordinary course
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`of business. Since Applicant did not properly allege (and indeed, cannot establish) “use,”
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`the only remaining “controversy” is Applicant’s ability register the mark BLU MAGIC,
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`which would be better determined by the TTAB.
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`

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`Opposer anticipates the Court granting the recently filed Motion. There is little
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`reason to grant declaratory judgment regarding infringement when Applicant appears not
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`to have put the allegedly infringing mark into commercial use, such that no infringement
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`can occur. Opposer notes the inefficiency involved with suspending the Board
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`proceeding only to resume shortiy thereafter once the district court case is dismissed.
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`Although a decision by the Board will not operate as a bar to Opposer’s
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`opportunity to bring these matters before the federal courts, the Board’s decision will, as
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`a practical matter, have significant impact on any future proceedings. The opinion and
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`decision of the Board, as a specialized agency, will be given great deference.
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`Even though decisions of the Trademark Office are not binding in regard
`to litigation in the courts on the same or related issues,
`a decision of the
`Patent Office as to the confusing similarity of two marks must be accepted
`as controlling unless the contrary is established by evidence which in
`character and amount carries through conviction
`A district court
`proceeding following a decision of the Trademark Trial and Appeal Board
`is not a trial de novo, ‘in spite of the fact that some courts have loosely
`used this language.’
`[Rather] evidence may be taken de novo, not that
`the district court is to ignore the decision of the Board.
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`Driving Force v. Manpower, Inc., 498 F. Supp. 21, 26,211 USPQ 60, 64 (ED. Pa 1980).
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`Accordingly, any decision by the Board will carry great weight in any further federal
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`court determinations regarding registration and infringement.
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`It is therefore not surprising that the Board’s determination on registration will
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`often operate to dispose of the matters between the parties. For example, if the
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`opposition is successful, then the Applicant is unlikely to continue using the mark BLU
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`MAGlC, if the mark is even in use. On the other hand, if the opposition is unsuccessful,
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`Opposer is unlikely to pursue the matter further. And, even if the matter is pursued
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`further, the parties and the federal court benefit from the Board’s anaiysis and
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`determination.
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`For the foregoing reasons, Opposer requests that the Board deny App1icant’s
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`motion to suspend these proceedings.
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`Respectfully submitted,
`
`/Brian W. Cheilgrenf
`Suzan J. I-Iixon, Esq.
`Brian W. Chellgren, Esq., Ph.D.
`Amy B. Barge, Esq.
`GREENEBAUM DOLL & MCDONALD PLLC
`
`3500 National City Tower
`101 South Fifth Street
`
`Louisville, Kentucky 40202
`(502) 587-3789
`sjh2@gdm.com
`Counsel for Opposer
`National Tobacco Company, L.P.
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`Dated:
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`January 21 , 2010
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing was delivered by First Class Mail,
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`postage prepaid, to the following individual on this 215‘ day of January, 2010.
`
`Mr. Dwayne L. Mason
`Akin Gump Strauss Hauer & Feld LLP
`1111 Louisiana Street
`44”‘ Floor
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`Houston, Texas 77002
`
`New Image Global, Inc.
`1672 Railroad Street
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`Corona, California 92880-2502
`
`/Amy B. Bergel
`Amy B. Berge
`
`

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`Case 2:09-cv-06761-PA-DTB Document 19
`
`Filed 001512010
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`Page 1 of 20
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`Bruce H. Jackson State Bar No. 98118
`
`bruce.h.%'ackson(av;bakernet.com
`Irene V.
`utlerrez,
`tate
`ar
`0. 252927
`irene.V. utierrez@bakemet.eom
`B
`R
`c
`IE L
`Two Ernbarcadero Center, 11th Floor
`San Francisco, CA 94111-3802
`Telephone: 415 576 3000
`Facs1m1le:
`415 576 3099
`
`Attorne s for Defendant
`NATIO AL TOBACCO COMPANY, LP
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`WESTERN DIVISION
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`NEW IMAGE GLOBAL, INC., a
`California corporation,
`_
`Plaintlff,
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`V.
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`NATIONAL TOBACCO COMPANY,
`L.P., a Delaware L1m1ted Llabrlrty
`Company,
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`Defendant.
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`
`
`Case No. CV 09-06761 PA (DTBX)
`
`NOTICE OF MOTION, MOTION
`AND MEMORANDUM OF
`POINTS AND AUTHORITIES IN
`SUPPORT OF DEFENDANT
`NATIONAL TOBACCO
`COMPANY L.P.’S MOTION TO
`DISMISS PLA1NTIFF’S FIRST
`AMENDED COMPLAINT
`
`Date: March 1, 2010
`Time: 1:30 .m.
`Dept: Cou room 15
`
`Before
`The Honorable Percy Anderson
`
`ix.)
`
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`28
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`B
`rnbarcadero Cente
`T
`11th Fl
`San Frmc'
`_
`+1 41
`
`9411
`63000
`
`Case No. C 09-06761 PA (DTBX)
`NTC OF MTN, MTN AND MEMO OF POINTS & AUTHORITIES IN SUPP OF DEF'5 MTN TO DISMISS PL’S FIRST AMD COMPLAINT
`SFODMS:’6592154.l
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`

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`Case 2:O9—cv-06761-PA-DTB Document 19
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`Filed 0111 512010
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`Page 2 of 20
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`1
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`2
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`TABLE OF CONTENTS
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`Bags
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`3 NOTICE OF MOTION AND MOTION ..................................................................... ..1
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`4 MEMORANDUM OF POINTS AND AUTHORITIES .............................................. ..3
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`I.
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`STATEMENT OF FACTS ................................................................................. .. 3
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`A.
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`B.
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`C.
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`D.
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`National Tobacco Company’s BLUE IUIU Cigar Wraps Mark ............. ..3
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`Plaintiffs Registration of BLU MAGIC ................................................. .. 3
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`Plaintiffs Allegations of “Use” of BLU MAGIC ................................... .. 6
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`Communication Between the Parties ........
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`............................................. ..7
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`II.
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`ARGUMENT...................................................................................................... .. 9
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`A.
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`B.
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`C.
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`Plaintiffs Declaratory Judgment Action is Anticipatory ........................ .. 9
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`This Court Lacks Subject Matter Jurisdiction Over NTC ..................... .. I1
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`The TTAB is the Proper Forum ............................................................. .. 14
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`III. CONCLUSION ..................................................................................................... .. 15
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`Tll*i1°(ii”l6Mci‘:i:":i‘e:“L“]:‘:l
`San Frmcisoo,
`9411
`+1415 576 3000
`
`Case No. c 09-06761 PA amax)
`NTC or MTN, MTN AND MEMO or POINTS & AUTHORITIES IN SUPP OF DEF’S MTN To DISM.lSS PL’S FIRST AMD COMPLAINT
`SF0DMS/6592154.l
`-
`
`

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`Case 2:09-cv-06761-PA-DTB Document 19
`
`Filed 01/15/2010
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`Page 3 of 20
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`1
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`2
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`3
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`4
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`5
`6
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`7
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`TABLE OF AUTHORITIES
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`CASES
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`Chance v. Pac-Telegraph Teletrac Inc,
`242 F.3d 1151( th C1r. 2001) .......................................................................... ..12
`
`Chesebrou h-Pond's, Inc. v. Faberge, Inc.,
`666 F.2 393 (9th C11". 1982) ..................................................................10, 13, 14
`Case v. Get Oil Co._,
`4 F.3d 7 0 (9th C1r. 1993) .................................................................................. ..5
`
`Pagesgs)
`
`8 Curcio v. Wachovia Mort a e Corp,
`9
`No. 09 Civ. 1498, 200
`.S. Dzst. LEXIS 96155 (S.D. Cal. Oct. 14, 2009) .......4
`Enea Embedded Tech
`2009 U.S. Dist. LEXIS 19639 ........................ ..-. ............................................... .. 13
`
`10
`
`11 Global DNS LLC v. Kook's Custom Headers, Inc.,
`No. 08 Civ. 268, 2008 U.S. D1st. LEXIS 84961 (W.D. Wash. Sept. 22,
`2008) ................................................................................................................. .. 14
`
`12
`
`13 Hancock Park Homeowners Association Est. J 948 v. Hancock Park Home
`Owners Association
`2006 U.S. D1st. LEXIS 96211 (CD. Cal. Sept. 19, 2006) ......................... ..11, 13
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`14
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`15
`16
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`17
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`Love v. United States
`.
`_
`915 F.2d 1242 (9t11 CH. 1988) ............................................................................13
`
`Medlmmune, Inc. v. Genentech, Inc.,
`549 U.S. 118, 127 S. Ct. 764, 166 L. Ed. 2d 604 (2007) ................................... ..9
`
`18 Monster Cable Products v. Euro ex SRL,
`19
`642 F. Supp. 2d 1001 (NB.
`al. 2009)..........................................................9, 10
`In re: NI/ID1.A GPULiti ation
`_
`No. 03 Cw. 4312, 20 9 U.§. Dist. LEXIS 108500
`(N.D. Cal. Nov. 19, 2009) .................................................................................. ..6
`Pollution Denim & Co. v. Pollution Clothing Co.,
`I
`547 F. Supp. 2d 1132 (CD. Cal. 2007) ...................................................... ..11, 13
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`20
`21
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`22
`
`23 Rhoades v. Avon Products,
`-
`24
`504 F.3d 1151 (9th C1r. 2007) ................................................................ ..9, 10, 11
`Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha,
`77 U.S.P.Q. 2d 1917 (TTAB 2006) .................................................................. ..11
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`25
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`26
`27
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`23
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`Surgfoot LC v. Sure Foot _CoEp.
`31 F.3d 1236 (10th C1r. 008) ............................................................................9
`
`VEOHNetworlcs, Inc. v. UMG Recordin 5', Inc,
`522 F. Supp. 2d 1265 (SD. Cal. 200
`............................................................ .. 14
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`T12: Efisfgéli
`San Fraixgigg,
`9411
`+1 415 576 3°00
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`Case No. C 09-06761 PA (DTBX)
`11
`NTC OF MTN, MTN AND MEMO OF POINTS & AUTHORITIES IN SUPP OF DEF'S MTN TO DISMISS PL’S FIRST AMD COMPLAINT
`SFODMSl6592154.1
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`

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`Case 2:09-cv-06761-PA-DTB Document 19
`
`Filed 01/1512010
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`Page 4 of 20
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`Wells Far§'o & Co. v. Stagecoach Properties Inc. ,
`685 F. d 302 (9th Cir. 1982) ............................................................................ ..10
`
`2 3
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`4 United States Code
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`STATUTES
`
`15 U.S.C.
`15 U.S.C.
`15 U.S.C.
`15 U.S.C.
`28 U.S.C.
`28 U.S.C.
`28 U.S.C.
`28 U.S.C.
`28 U.S.C.
`28 U.S.C.
`
`1114 .... .; ......................................................................................... ..12
`1119 ............................................................................................... ..15
`1125 ..........................
`................................................................... ..12
`1501 ..............................................................................
`............... ..12
`1121 .................................................................................................12
`1331 a .......................................................................................... ..12
`1338 a .......................................................................................... ..12
`1367 ............................................................................................... ..12
`2201 ............................................................................................... ..11
`2202 ............................................................................................... ..11 '
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`Tflakg&|:DMc!§a1ziEI.LP
`gm», 1:1
`San Francisco,
`9411
`+3 415 5703000
`
`Case ND. C 09-06761 PA (DTBX)
`NTC OF MTN, MTN AND MEMO OF POINTS & AUTHORITIES IN SUPP OF DEF’S MTN T0 DISMISS PL’S FIRST AMD COMPLAINT
`SFODMS/6592154,1
`
`

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`Case 2:09-cv-O6761—PA-DTB Document 19
`
`Filed 01!’! 52010
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`Page 5 of 20
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`NOTICE OF MOTION AND MOTION
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`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
`
`NOTICE IS HEREBY GIVEN that on March 1, 2010, at 1:30 p.m., or as soon
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`thereafter as counsel may be heard, before The Honorable Percy Anderson, in
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`Courtroom 15 of the above-entitled Court, located at 312 North Spring Street, Los
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`Angeles, CA 90012-4793, Defendant National Tobacco Company, L.P. (“NTC”) will
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`and hereby does move this Court for an order dismissing the First Amended
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`Complaint for Declaratory Judgment, filed by Plaintiff New Image Global, Inc. on
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`December 9, 2009.
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`This motion is based on the following grounds:
`Defendant National Tobacco Company, L.P. moves to dismiss the Amended
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`Complaint of plaintiff New Image Global, Inc. (“Plaintiff”) seeking a declaratory
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`judgment that Plaintiffs supposed “use” of the trademark BLU MAGIC on its
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`tobacco wrap products does not infringe NTC’s rights in the registered trademark
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`BLUE IU.TU® for cigar Wraps (“BLUE IUIU Cigar Wraps”) under Section 43 of the
`Lanham Act or under Common Law. Plaintiff s Amended Complaint should be
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`dismissed because (a) Plaintiff fails to allege more than cursory facts to support this
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`Court’s exercising its discretionary power to accept jurisdiction over this declaratory
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`judgment action and (b) Plaintiff fails to sufficiently allege use in United States
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`commerce. Finally, this court has discretion to dismiss this action in order to allow
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`the Trademark Trial and Appeal Board (“TTAB”) to address NTC’s pending
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`opposition to Plaintiffs application for the BLU MAGIC trademark.
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`This motion is made following the conference of counsel pursuant to L.R. 7-3,
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`which took place on January 4, 2010.
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`This motion is based upon this notice of motion and motion, the following
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`memorandum of points and authorities, the declaration of Joi Michelle Lakes, and the
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`Baker & McKa1zie LLP
`Two Embarcadem Cente
`11th Floor
`San Francisco, CA 9411
`+1 415 576 3000
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`Case No. C 09-06761 PA aarsx)
`NTC OF MTN, MTN AND MEMO or POINTS & AUTHORITIES IN SUPP or DEF’S MTN T0 D1sM1ss PL’S FIRST AMI) COMPLAINT
`SFODMSl6592l 54.1
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`1
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`

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`Case 2:09—cv-06761-PA-DTB Document 19
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`Filed 01/15/2010
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`Page 6 of 20
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`proposed order submitted herewith, and upon such other matters as may be presented
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`to the Court at the time of the hearing.
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`Dated: January 15, 2010
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`Respectfially submitted,
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`_
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`BAKER & MCKENZIE LLP
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`FR‘}E‘{q%Ev‘."é1%$%?ESR?a%z
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`By:/s/ Bruce H. Jackson
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`Attorne s for Defendant
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`Case No. C 09-0676: PA (DTBX)
`NTC OF MTN, MTN AND MEMO o1= POINTS & AUTHORITIES 1N SUPP or DEF’S MTN TO DISMISS PL’S FIRST AMD COMPLAINT
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`SFODMS/65921S4.1
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`

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`Case 2:09-cv-06761-PA-DTB Document 19
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`Filed 01/15/2010
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`Page 7 of 20
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`ts.)
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`-lib.)
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`I.
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`STATEMENT OF FACTS
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`A.
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`National Tobacco Companfs BLUE JUJU Cigar Wraps Mark
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`NTC distributes chewing tobacco, smoking tobacco, cigarette papers and other
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`tobacco products in the United States. For over a decade, NTC has distributed a
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`variety of tobacco products under the well-known and famous mark “ZIG-ZAG." In
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`2008, NTC introduced a new product under the ZIG-ZAG® trademark which is a
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`cigar Wrapper, allowing consumers to make their own cigars. NTC’s ZIG—ZAG Cigar
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`#5GKDOO‘-~10\U1 Wraps are comprised of two homogenized tobacco sheets, measuring 1 7/8 inches by
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`4 3/8 inches, pre-rolled around a plastic straw, which are then removed from the
`package by consumers in order to roll their own cigars.‘ NTC developed six flavors
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`for ZIG-ZAG Cigar Wraps, one of which is a blueberry flavored wrap sold under the
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`mark “BLUE JUJU.” On October 20, 2008, NTC filed a trademark application for
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`BLUE IUIU, covering “cigar wraps” in Class 34. See BLUE IUJU trademark
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`application, attached as Lakes Decl‘. Ex. A. NTC began use in United States
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`commerce of ZIG-ZAG Cigar Wraps sold under the BLUE JUJU trademark in early
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`2009, and its application published for opposition on March 3, 2009. Id. On
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`October 27, 2009, the United States Patent and Trademark Office issued Registration
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`20 No. 3,703,229 for BLUE IUJU. Id.
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`B.
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`Plaintiff’s Registration of BLU MAGIC
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`Nearly six months after NTC applied for its BLUE JUIU trademark and after
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`Plaintiff had at least constructive notice ofNTC’s trademark application for BLUE
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`JUJU, on March 30, 2009, Plaintiff filed trademark application No. 77/702228 with
`the United States Patent and Trademark Office (“USPTO”) for “BLU MAGIC.” The
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`26 BLU MAGIC application covers a variety of goods including “smoking articles,
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`23
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`Baker & McKen ' LLP
`T“ E"ihi’ifi'le W
`San Frmcisco,
`9411
`+1415 575 3°00
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`‘Plaintiff calls its products as “tobacco wraps,” see Am. Compl. 1] 7. NTC calls its
`roducts “cigar wraps.” Both products allow consumer to_ roll their own cigars. Both
`TC and Plaintiffs products are referred to l'161'C1I1 as “cigar wraps.”
`3
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`Case No. c 09-06761 PA (DTBX)
`NTC OF MTN, MTN AND MEMO OF POINTS 8!. AUTHORITIES IN SUPP OF DEF’S MTN T0 DISMISS PL‘S FIRST AMD COMPLAINT
`SFODMS/6592154.]
`.
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`

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`Case 2:09—cv-06761-PA-DTB Document 19
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`Filed 0111512010
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`Page 8 of 20
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`namely tobacco leaves and flavored tobacco leaves for rolling cigars and cigarillos,
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`flavored tobacco leaves in the form of a sheet for use in rolling cigars and cigarillos
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`and tobacco.” Am. Compl. fil 8. Plaintiffs BLU MAGIC application, of which this
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`Court may take judicial notice, as it is publically available on the USPTO’s website,
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`see Curcio v. Wachovia Mortgage Corp., No. 09 Civ. 1498, 2009 U.S. Dist. LEXIS
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`96155, at *l() (S.D. Cal. Oct. 14, 2009) (taking judicial notice of printouts provided
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`by a government agency on its website), alleges current use of the mark in connection
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`with goods in Class 34_ (Which covers, among other things, tobacco products). See
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`BLU MAGIC application, attached as Lakes Decl. Ex. B. In order to establish current
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`use to the USPTO, Plaintiff submitted what it claimed was an example of its product
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`packaging, known as a “specimen,” along with its trademark application. An image 0
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`the BLU MAGIC specimen submitted to the USPTO appears below:
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`The BLU MAGIC specimen depicts “BLU MAGIC” in superimposed text over
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`the word “Blueberry.” The specimen also depicts a graphic of the numerals “X2XL”
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`in a text covered With diamonds, and Plaintiffs “ROYAL BLUNTS” house mark (the
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`Baker 8.: McKmzie LLP
`Two Embarcadero Center
`11111 Flour
`San Frmcisou, CA 9411
`+1 415 S76 3000
`
`Case No. C 09-06761 PA (DTBx)
`NTC OF MTN, MTN AND MEMO OF POINTS & AUTHORITIES IN SUPP OF DEF’S MTN TO DISMISS PL’S FIRST AMD COMPLAINT
`SFODMSl6592l 54.1
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`Case 2:09-cv-O6T61—PA-DTB Document 19
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`Filed 01!’! 5/2010
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`Page 9 of 20
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`trademark under which a category of Plaintiffs goods are sold). See Lakes Decl.,
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`Ex. B. Though the BLU MAGIC specimen submitted with Plaintiffs trademark
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`application only depicted the front of the product packaging, Plaintiff attached a
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`photograph ofthe back of the packaging as Exhibit A to its Amended Complaint. See
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`Am. Compl., Ex. A. On the back of the packaging, the ROYAL BLUNTS house
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`mark appears, along with the word “Blueberry” partially covered by BLU MAGIC.
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`The back of the packaging also includes pictures of products identified as “perforated
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`cigarillos and tipped cigars,” and bears the phrase “Made in Mexico.” See Am.
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`Compl., Ex. A.
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`Plaintiff adopted the “BLU MAGIC” mark after NTC’s BLUE JUJU mark was
`published to the public, and took advantage ofthe similar meanings ofthe words
`comprising both marks. “BLU” is merely a spelling variation of the word “BLUE.”
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`Indeed, in “Notice of Pseudo Mark for Serial Number: 77702228” dated April 3,
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`2009, the USPTO notified Plaintiff that BLU is simply an alternate spelling of BLUE.
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`See BLU MAGIC trademark application file wrapper, attached as Lakes Decl., Ex. B.
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`“MAGIC,” in turn, is interchangeable with the word “IUJU.” JUJU is defined by
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`Random House dictionary as “an object venerated superstitiously and used as a fetish '
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`or amulet by tribal peoples of West Africa” or, alternately, “the magical power
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`attributed to such an object.” Random House Dictionary (2009), available at
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`http://dictionary.reference.com/browse/juju (emphasis added). This court may take
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`judicial notice of dictionary definitions of terms. See Cose v. Getty Oil Co., 4 F.3d
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`700, 705 (9th Cir. 1993) (taking judicial notice of dictionary definition of undefined
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`terms).
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`In sum, Plaintiffs “BLU MAGIC” mark for cigar Wraps is the functional
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`equivalent ofNTC’s BLUE IUJU mark for its ZIG—ZAG Cigar Wraps. Despite
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`Plaintiff’ s vague claim in the Amended Complaint that Plaintiff “has developed a
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`family of trademarks it associated with its products and services, including its BLU
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`MAGIC mark,” Am. Compl. ll 6, a review of the Plaintiffs website reveals that none
`5
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`Case No. C 09-06761 PA (DTBX)
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`NTC OF MTN, MTN AND MEMO OF POINTS &. AUTHORITIES IN SUPP OF DEF’S MTN TO DISMISS PI_.’S FIRST AMD COMPLAINT
`SFODMS/6592154.]
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`Baker 3.: McKenzie LLP
`Two Embarcadero Center
`11111 Floor
`San Flmcisw, CA 9411
`+1 415 576 3000
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`

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`Case 2:09~cv—06T61—PA—DTB Document 19
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`Filed 01/1512010
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`Page 10 of 20
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`of Plaintiff’ s other products sold under the “ROYAL BLUNTS” house mark use any
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`type of “family of marks” type names — instead, they are marketed simply as
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`“Blueberry,” “Sourapple,” “Grape,” “Cloves,” “Passion Fruit,” and other stand—alone
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`flavor names. See printouts of Plaintiff 3 website wWw.royalblunts.com, attached to
`Lakes Decl., Ex. D. -Hence, the adoption by Plaintiff of the mark BLU MAGIC for
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`cigar wraps cannot be explained by the product fitting into any “family of marks”
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`already owned by Plaintiff. In contrast, all six flavors of ZIG—ZAG Cigar Wraps have
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`fanciful names — “Purple Thunder,” “Peach Frenzy,” “Cherry Rush,” “Blue JuJu,”
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`“Apple Blitz,” and “Melon Burst.” See examples of ZIG—ZAG Cigar Wraps, attached
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`to Lakes Decl., Ex. H.
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`C.
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`Plaintiffs Allegations of “Use” of BLU MAGIC
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`Plaintiffs Amended Complaint alleges in a cursory manner that it “began use
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`of the mark BLU MAGIC at least as early as March 1, 2009,” and has “continuously
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`manufactured tobacco wraps and used the mark BLU MAGIC to identify certain of its
`tobacco Wraps.” Am. Compl. fil 7. Despite that statement, the Amended Complaint
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`proffers no evidence that Plaintiff has actually used the mark in the ordinary course on
`goods in United States commerce, or that Plaintiff has engaged in anything more than
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`a token use.
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`There is no indication that Plaintiff has marketed products under the BLU
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`MAGIC mark on the Internet, unlike the rest of Plaintiffs products. This court may
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`take judicial notice of documents publically available on the Internet, such as
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`Plaintiffs websites. See In re: NVIDIA GPULitigation, No. -08 Civ. 4312, 2009 U.S.
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`Dist. LEXIS 108500, at *29 (N.D. Cal. Nov. 19, 2009) (holding that court may
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`consider by taking judicial notice any documents “capable of accurate and ready
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`determination by resort to sources whose accuracy cannot reasonably be questioned,”
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`including non-government webpages). As recently as January 4, 2010, Internet
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`searches on Google revealed no relevant examples of BLU MAGIC used in
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`connection With tobacco products except for references to the disput