Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA956439
`02/25/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Starbuzz Tobacco, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`04/10/2019
`
`20155 Ellipse
`Foothill Ranch, CA 92610
`UNITED STATES
`
`Natu J. Patel
`The Patel Law Firm, P.C.
`22952 Mill Creek Drive
`Laguna Hills, CA 92653
`UNITED STATES
`npatel@thepatellawfirm.com, dngai@thepatellawfirm.com, enguy-
`en@thepatellawfirm.com, kdufek@thepatellawfirm.com
`949-955-1077
`
`Applicant Information
`
`Application No
`
`87818151
`
`Publication date
`
`12/11/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`02/25/2019
`
`Opposition Peri-
`od Ends
`
`04/10/2019
`
`Samer Abdelmaseh
`P.O. Box 3254
`South Amboy, NJ 08879
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 034. First Use: 2015/07/02 First Use In Commerce: 2015/07/02
`All goods and services in the class are opposed, namely: Cigarettes; Hookahs; Smokers' art-
`icles,namely, hookah charcoal; Tobacco
`
`Grounds for Opposition
`
`Fraud on the USPTO
`
`Other
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`The mark is not being used in lawful commerce.
`15 U.S.C. 1051; 37 C.F.R. 2.69 (TMEP 907)
`
`Attachments
`
`Notice of Opposition - Goldstar Tobacco 022519.pdf(1932437 bytes )
`
`

`

`Signature
`
`Name
`
`Date
`
`/natupatel/
`
`Natu J. Patel
`
`02/25/2019
`
`

`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 87/818,151
`Mark:
`G GOLDSTAR TOBACCO SINCE 2015
`Filed:
`
`March 2, 2018
`Published:
`December 11, 2018
`
`
`STARBUZZ TOBACCO, INC.,
`
`
` Opposer,
`
`
` v.
`
`
`
`SAMER ABDELMASEH
`
`
`Applicant.
`
`
`
`
`OPPOSITION NO: ____________
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Starbuzz Tobacco, Inc. (“Opposer” or “Starbuzz”), a corporation organized and
`
`existing under the laws of the State of California, believes that it will be damaged by
`
`registration of the mark shown in U.S. Application Serial No. 87/818,151 in International
`
`Class 34 (the “Application”) and hereby opposes the same.
`
`
`
`As grounds for opposition, it is alleged that:
`
`Opposer’s Background
`
`1.
`
`Starbuzz is a manufacturer and distributor of hookahs, tobacco, charcoal,
`
`and tobacco related goods and services.
`
`2.
`
`Starbuzz is located at 20155 Ellipse, Foothill Ranch, California 92610.
`
`

`

`Opposition
`In the matter of Application Serial No. 87/818,151
`Published On December 11, 2018
`
`
`3.
`
`In or around 2015, Starbuzz and Samer Abdelmaseh (“Applicant”) began
`
`discussing plans to enter into a business venture for the manufacture and sale of shisha
`
`tobacco under the name Gold Star Tobacco.
`
`4.
`
`On or about November 5, 2015, Starbuzz independently created and
`
`finalized the following original graphic design to be used in connection with the planned
`
`business venture (the “Copyrighted Design”):
`
`
`
`Attached hereto as Exhibit 1 is a copy of the Copyrighted Design.
`
`5.
`
`Starbuzz showed Applicant the Copyrighted Design as a potential logo for
`
`the planned business venture.
`
`6.
`
`7.
`
`However, the planned business venture did not materialize.
`
`At all times relevant herein, Starbuzz has been, and still is, the sole owner
`
`of the exclusive rights, title, and interest in the Copyrighted Design.
`
`8.
`
`Starbuzz has never assigned any rights to the Copyrighted Design, or
`
`otherwise authorized any other party to use the design.
`
`9.
`
`In April 2018, Starbuzz sought and was granted copyright registration in
`
`the U.S. for the Copyrighted Design. (Reg. No. VAu 1-313-168). A copy of the
`
`copyright certificate is attached as Exhibit 2.
`
`
`
`2
`
`

`

`Opposition
`In the matter of Application Serial No. 87/818,151
`Published On December 11, 2018
`
`Applicant’s Background
`
`10.
`
`Starbuzz is informed and believes, and on that basis alleges that, applicant
`
`Samer Abdelmaseh (“Applicant”), is an individual who is a citizen or permanent resident
`
`of the United States and domiciled in New Jersey.
`
`11.
`
`Starbuzz is informed and believes, and on that basis alleges that, Applicant
`
`has designated Joseph E. Sutton of Law Offices, Ezra Sutton, P.A., whose address is 900
`
`US Highway 9, Suite 201, Woodbridge, New Jersey 07095, as the correspondent upon
`
`whom the opposition may be served.
`
`12.
`
`Starbuzz is informed and believes, and on that basis alleges that, on or
`
`about March 2, 2018, Applicant filed U.S. Application Serial No. 87/818,151 for the “G
`
`GOLDSTAR TOBACCO SINCE 2015” design mark (“Applicant’s Mark”) for
`
`“Cigarettes; Hookahs; Smokers’ articles, namely hookah charcoal; Tobacco” in
`
`International Class 034. A copy of a TESS printout of the Application is attached hereto
`
`as Exhibit 3.
`
`13.
`
` Applicant’s Mark is reproduced below:
`
`14. Applicant’s Mark consists of a design that is identical or substantially
`
`
`
`similar to the Copyrighted Design.
`
`
`
`3
`
`

`

`Opposition
`In the matter of Application Serial No. 87/818,151
`Published On December 11, 2018
`
`
`15. The USPTO published Applicant's Mark for opposition in the Official
`
`Gazette on December 11, 2018.
`
`16. On January 3, 2019, Starbuzz filed an extension of time to oppose
`
`Applicant’s Mark, giving Starbuzz until April 10, 2019 to file the opposition. Therefore,
`
`this Notice of Opposition is timely.
`
`GROUNDS FOR OPPOSITION
`
`Standing
`
`17.
`
`Starbuzz re-alleges and incorporates by this reference paragraphs 1 through
`
`16, inclusive, of this Notice of Opposition as if fully set forth herein.
`
`18.
`
`Starbuzz is the sole owner of the copyright for the Copyrighted Design.
`
`Under 17 U.S.C. §§ 106 and 501, Starbuzz has the exclusive rights to produce, reproduce,
`
`publically display, create derivative works of, and distribute copies of its copyrighted
`
`work.
`
`19.
`
`Starbuzz is informed and believes, and on that basis alleges that, Applicant
`
`has misappropriated the Copyrighted Design and reproduced it in Applicant’s Mark
`
`without Starbuzz’s consent, in violation of its exclusive rights under 17 U.S.C. §§ 106
`
`and 501.
`
`20.
`
`In addition, Starbuzz is informed and believes, and on that basis alleges
`
`that, Applicant is further using the Copyrighted Design in connection with the sale of
`
`hookah tobacco and other related products in direct competition with Starbuzz.
`
`21. Therefore, Starbuzz will be damaged by registration of Applicant’s Mark.
`
`
`
`
`
`
`
`4
`
`

`

`Opposition
`In the matter of Application Serial No. 87/818,151
`Published On December 11, 2018
`
`
`Unlawful Use
`
`22.
`
`Starbuzz re-alleges and incorporates by this reference paragraphs 1 through
`
`21, inclusive, of this Notice of Opposition as if fully set forth herein.
`
`23.
`
`In order to obtain federal registration, an applicant must demonstrate, prior
`
`to registration, lawful use of its mark in commerce that is compliant with applicable
`
`federal laws. TMEP §907; 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69.
`
`24.
`
`Since Starbuzz is the sole owner of the Copyrighted Design and Applicant
`
`did not receive Starbuzz’s authorization to use or create a derivative work of the
`
`Copyrighted Design, Applicant’s use of Applicant’s Mark in commerce violates 17
`
`U.S.C. §§106, 501 and is unlawful.
`
`25. Therefore, Applicant is unable to satisfy the lawful use in commerce
`
`requirement for trademark registration.
`
`Fraud on the Patent and Trademark Office
`
`26.
`
`Starbuzz re-alleges and incorporates by this reference paragraphs 1 through
`
`25, inclusive, of this Notice of Opposition as if fully set forth herein.
`
`27.
`
`Starbuzz is informed and believes, and on that basis alleges that, through
`
`his participation in the failed business venture with Starbuzz, Applicant had actual and
`
`constructive knowledge that Starbuzz is the creator and owner of the Copyrighted
`
`Design.
`
`28.
`
`Starbuzz is informed and believes, and on that basis alleges that, when
`
`Applicant signed the declaration in the Application, Applicant was aware that he was not
`
`the owner of the Copyrighted Design, and that he did not have Starbuzz’s authorization to
`
`use or apply to register Applicant’s Mark.
`
`
`
`5
`
`

`

`Opposition
`In the matter of Application Serial No. 87/818,151
`Published On December 11, 2018
`
`
`29. Applicant’s statement that he believes he is “the owner of the trademark
`
`sought to be registered” and that to the best of his knowledge and belief, “no other
`
`person, firm, corporation, or association has the right to use the mark in commerce” is
`
`material to the Application.
`
`30. Applicant has committed fraud on the United States Patent and Trademark
`
`Office (“USPTO”) by willfully and knowingly making false claims in his declaration
`
`regarding Applicant’s ownership of Applicant’s Mark and others’ rights to use the mark
`
`in commerce.
`
`31. Additionally, Starbuzz is further informed and believes, and on that basis
`
`alleges that, Applicant also falsely alleged a date of first use in commerce of July 2, 2015
`
`in the Application with the full knowledge that the Copyrighted Design was not finalized
`
`by Starbuzz until November 5, 2015, approximately four months after Applicant’s
`
`alleged date of first use.
`
`32.
`
`Starbuzz is informed and believes, and on that basis alleges that, since the
`
`Copyrighted Design was not finalized until November 5, 2015, Applicant could not
`
`possibly have used the mark on July 2, 2015. As such, Applicant made said false
`
`statement knowing that the allegation could not be supported.
`
`33. Therefore, Applicant has further committed fraud on the USPTO by
`
`willfully and knowingly making false claims regarding the date of first use in commerce.
`
`WHEREFORE, Starbuzz believes that it will be damaged by registration of
`
`Applicant’s Mark. Starbuzz prays that this Opposition be sustained in favor of Opposer
`
`and that Application Serial No. 87/818,151 be denied registration.
`
`
`
`6
`
`

`

`Opposition
`In the matter of Application Serial No. 87/818,151
`Published On December 11, 2018
`
`
`Starbuzz hereby consents and appoints Natu J. Patel of The Patel Law Firm, P.C.,
`
`22952 Mill Creek Drive, Laguna Hills, CA 92653, who is a member of the Bar of the
`
`State of California, as its duly authorized agent and attorney to prosecute this Opposition
`
`and to transact all business in the Patent and Trademark Office and in the United States
`
`Courts, to sign his name to all papers which may hereinafter be filed in connection
`
`therewith, and to receive all official communications in connection with this Opposition.
`
`Dated: February 25, 2019.
`
`
`
`
`
`
`
`
`
`
`
`
`
` Respectfully Submitted,
` THE PATEL LAW FIRM, P.C.
`
`
`
`
`
`
`
`
`
`
` Natu J. Patel
`
`
`
`
`
`
` Daniel H. Ngai
`
`
`
`
`
`
` Ellena Nguyen
`
`
`
`
`
` Attorneys for Opposer
`
`
`
`
`
`
` Starbuzz Tobacco, Inc.
`
`The Patel Law Firm, P.C.
`22952 Mill Creek Drive
`Laguna Hills, CA 92653
`Telephone:
`(949) 955-1077
`Facsimile:
`(949) 955-1877
`NPatel@thePatelLawFirm.com
`
`
`
`
`
`7
`
`

`

`Opposition
`In the matter of Application Serial No. 87/818, 151
`Published On December 11, 2018
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of this NOTICE OF OPPOSITION is being served via email,
`
`on this the 25th day of February, 2019 to the following:
`
`Samer Abdelmaseh’s Attorney/Representative:
`
`Joseph E. Sutton
`Law Offices, Ezra Sutton, PA.
`900 US. Highway 9
`Suite 201
`
`Woodbridge, New Jersey 07095
`trademarks@ezrasutton.com
`jsutton@ezrasutton.com
`Tel: (732) 634-3520
`Fax: (732) 634-3511
`
`KoreyDuéek
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 1
`
`Exhibit 1
`
`

`

`
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 2
`Exhibit 2
`
`
`
`
`

`

`Certificate of Registration
`
`
`
`This Certificate issued under the seal of the Copyright
`Office in accordance with title 17, United States Code,
`
`attests that registration has been made for the work
`identified below. The information on this certificate has
`been made a part of the Copyright Office records.
`
`1
`
`7
`Acting United States Register of Copyrights and Director
`
`Registration Number
`VAu 1-313-168
`Effective Date of Registration:
`April 04, 2018
`
`Title
`
`Title of Work: Goldstar Tobacco Since 2012
`
`Completion/Publication
`
`
`
`Year of Completion:
`
`2015
`
`Author
`
`
`
`0
`
`Starbuzz Tobacco, lnc.
`Author:
`2—D artwork
`Author Created:
`Work made for hire: Yes
`Domiciled in: United States
`
`Copyright Claimant
`
`
`
`Copyright Claimant:
`
`Starbuzz Tobacco, Inc.
`10871 Forbes Avenue, Garden Grove. CA, 92843. United States
`
`Certification
`
`
`
`Name: Majda Haddoudi
`Date: April 04, 2018
`Applicant's Tracking Number:
`5015-4516
`
`
`Page 1 of 1
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`

`

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`
`Exhibit 3
`
`Exhibit 3
`
`

`

`2/19/2019
`
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`
`Word Mark
`Goods and
`Services
`Mark
`Drawing
`Code
`Design
`Search Code
`
`G GOLDSTAR TOBACCO SINCE 2015
`IC 034. US 002 008 009 017. G & S: Cigarettes; Hookahs; Smokers' articles, namely, hookah charcoal; Tobacco. FIRST USE:
`20150702. FIRST USE IN COMMERCE: 20150702
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`01.01.09 - Stars, two ; Two stars
`
`01.01.13 - Stars - multiple stars with five points
`
`01.15.15 - Fire (flames), emanating from objects, words or numbers
`
`19.05.25 - Boxes, cardboard (packing or storage) ; Cartons, packing or storage ; Dumpster ; Freight containers ; Other large containers
`; Pallets for storing or moving cargo or freight ; shipping containers
`
`26.01.17 - Circles, two concentric ; Concentric circles, two ; Two concentric circles
`
`87818151
`
`Joseph E. Sutton
`
`Serial
`Number
`Filing Date March 2, 2018
`Current
`1A
`Basis
`Original
`Filing Basis 1A
`Published for
`Opposition December 11, 2018
`Owner
`(APPLICANT) Samer Abdelmaseh INDIVIDUAL UNITED STATES P.O. Box 3254 South Amboy NEW JERSEY 08879
`Attorney of
`Record
`Prior
`Registrations 4489270;4534288;4879623
`Disclaimer
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "TOBACCO SINCE 2015" APART FROM THE MARK AS SHOWN
`Description
`Color is not claimed as a feature of the mark. The mark consists of an enlarged letter "G" that surrounds the entire mark having an open
`of Mark
`space at the right side, and having a star shape in the open space; and the words "GOLDSTAR TOBACCO" are placed in a circular
`fashion within the enlarged letter "G", which forms an inner circular space and said circular space encloses a drawing of a flame placed
`in an open container, having above it the words "SINCE 2015".
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Live/Dead
`Indicator
`
`LIVE
`
`
`
`
`
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`
`
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