Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1165187
`
`Filing date:
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`10/11/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91269584
`
`Party
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`Correspondence
`Address
`
`Defendant
`Kretek International, Inc.
`
`CATHERINE F HOFFMAN
`DICKINSON WRIGHT PLLC
`350 EAST LAS OLAS BLVD, SUITE 1750
`FT. LAUDERDALE, FL 33301
`UNITED STATES
`Primary Email: mhtrademarks@dickinsonwright.com
`Secondary Email(s): choffman@dickinsonwright.com, jdahl-
`gard@dickinsonwright.com, dwtrademarks@dickinsonwright.com, michael-
`froch@kretek.com
`954-991-5420
`
`Submission
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`Filer's Name
`
`Filer's email
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`Opposition/Response to Motion
`
`Julie Dahlgard
`
`mhtrademarks@dickinsonwright.com, dwtrademarks@dickinsonwright.com,
`choffman@dickinsonwright.com, jdahlgard@dickinsonwright.com
`
`Signature
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`Date
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`/julie dahlgard/
`
`10/11/2021
`
`Attachments
`
`Response to Motion to Dismiss.pdf(3125388 bytes )
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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 Applications Serial Nos. 88/499,664 and 88/499,702
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`For the marks VENTURA CIGAR and
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`Published in the Official Gazette on February 2, 2021
`
`
`Republic Brands L.P.,
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`
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`
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`Kretek International, Inc.,
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`
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`Opposer/Respondent,
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`v.
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`
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`
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`Applicant/Petitioner.
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`
`
`
`
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`Opposition No. 91269584
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`PETITIONER’S RESPONSE TO RESPONDENT’S MOTION TO DISMISS
`COUNTERCLAIM FOR FAILURE TO STATE A CLAIM
`
`Petitioner Kretek International, Inc. (“Kretek” “Applicant” or “Petitioner”), by and through
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`
`
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`its undersigned counsel, hereby responds to Respondent Republic Brands L.P.’s (“Opposer” or
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`“Respondent” or “Republic”) Motion to Dismiss Counterclaim for failure to state a claim upon
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`which relief can be granted. As set forth below, Petitioner adequately alleged that Respondent has
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`abandoned its VENTURA WHITES mark. With this Response, Kretek is also filing its First
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`Amended Counterclaim in which the pleadings are clarified. See Exhibit “1.”
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`I.
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`
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`INTRODUCTION
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`Republic filed its Motion to Dismiss Kretek’s Counterclaim misleading the Board as to the
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`facts alleged and ignoring legal standards for notice pleading purposes which do not require
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`premature allegations of specific facts. Under the Board’s notice pleading regime, it is the purpose
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`

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`of discovery, not pleading, to flesh out specific factual issues. Further, dismissals based on failure
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`to state a claim are rarely granted, and require context specific analysis. Republic’s motion instead
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`makes conclusory assertions regarding the insufficiency of Kretek’s claims and ignores facts that
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`Kretek has pled, which more than sufficiently apprise Republic of Kretek’s straightforward and
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`plausible claims of abandonment. Kretek’s counterclaim did not include a claim for fraud, so any
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`arguments by Republic as to a fraud claim are irrelevant and not applicable.
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`
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`Republic has failed to meet its heavy burden of showing that Kretek is not entitled to relief.
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`Tellingly, Republic never states that it was insufficiently apprised of Kretek’s abandonment claim
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`and indeed, does not contend that any of Kretek’s allegations are implausible. Accordingly,
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`Republic’s Motion to Dismiss should be denied. However, with this Response, Kretek is also
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`filing its First Amended Counterclaim in which the pleadings are clarified. See Exhibit “1.”
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`II.
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`LEGAL STANDARDS
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`
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`A motion to dismiss under Rule 12(b)(6) is a test solely of the sufficiency of the allegations.
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`Lewis Silkin LLP v. Firebrand LLC, TTAB Cancellation No. 92067378, 2018 WL 6923002 at *1
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`(TTAB December 21, 2018) (citing Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
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`(Fed. Cir. 1998)). Pleadings are legally sufficient if they “allege sufficient factual matter that, if
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`proved, would allow the Board to … draw a reasonable inference, that (1) [opposer] has standing
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`to maintain the proceeding, and (2) a valid ground exists for opposing.” Covidien LP v. Masimo
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`Corp., 109 USPQ2d 1696, 1697, 2014 WL 977444, at *1 (TTAB 2014). Specifically, a complaint
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`“must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible
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`on its face.”’ Id. (citations omitted).
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`2
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`

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`A. Republic Bears The Heavy Burden of Establishing Legal Insufficiency
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`
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`It is well established that an opposition will not be dismissed “unless it appears beyond
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`doubt” that the opposer is not entitled to relief. U.S. v. Ford Motor Co., 497 F.3d 1331, 1336 (Fed.
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`Cir. 2007); accord Stabilisierrungsfonds Fur Wein v. Zimmermann-Graeff Kg, 199 U.S.P.Q.
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`(BNA) ¶ 488, 1978 WL 21772, at *1 (TTAB 1978) (“A party should not be denied his right to be
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`heard on a notice of opposition unless it is certain beyond any doubt that he cannot prevail under
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`any circumstances.”).
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`
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`When evaluating whether a party states a claim, the pleadings are examined in their
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`“entirety,” and the allegations must be construed “liberally so as to do substantial justice.” Fair
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`Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 2007 WL 4162785, at *2–3 (TTAB 2007). The
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`Board “accepts all well-pleaded factual allegations as true and construes all reasonable inferences
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`in favor of the [oppose or counterclaimant].” Nalco Co. v. Chem-Mod, LLC, 883 F. 3d 1337, 1347
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`(Fed. Cir. 2018). “Dismissal … is appropriate only if it appears certain that opposer is entitled to
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`no relief under any set of facts which could be proved in support of its claim.” Fair Indigo, 2007
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`WL 4162785, at *2. Rule 12(b)(6) movants thus bear a “heavy burden to establish an
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`‘insurmountable bar’” to relief. Son Broad., Inc. v. U.S., 42 Fed. Cl. 532, 537 (Fed. Cl. 1998); In
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`re Nexium (Esomeprazole) Antitrust Litigation, 968 F.Supp.2d 367, 385 (D. Mass. 2013) (same);
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`accord Gucci America, Inc. v. Hall & Associates, 135 F.Supp.2d 409, 412 (SDNY 2001)
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`(“[M]ovant's burden is very substantial as the issue is not whether a plaintiff is likely to prevail”
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`“but whether [it] is entitled to offer evidence” such that motions to dismiss are “disfavored and”
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`“seldom granted”) (internal quotation marks, alterations, and citations omitted).
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`3
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`

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`B.
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`Pleadings Need Only Allege The Basic Nature of a Counterclaimant’s Claims
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`
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`Board proceedings incorporate the notice pleading regime of Rule 8. Nike, Inc. v. Palm
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`Beach Crossfit Inc. D/B/A Crossfit Citiplace, 116 U.S.P.Q.2d 1025, 2015 WL 5721653, at *3; 37
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`C.F.R. § 2.116(a). Unlike fact pleading, “the notice standard neither requires [a counterclaimant
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`not an opposer] to ‘plead facts establishing a prima facie case’ nor to ‘set forth all facts on which
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`[s]he relies.’” Swierkiewicz v. Sorema N. A., 534 U.S. 506, 511–13 (2002).” Dobyns v. U.S., 91
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`Fed. Cl. 412, 425–26 (Fed. Cl. 2010). Instead, counterclaimant need only provide “a short and
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`plain statement of the[ir] claim[s] showing that” they are “entitled to relief.” Nike, 2015 WL
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`5721653, at *3; 37 C.F.R. § 2.104(a) (“The opposition must set forth a short and plain statement
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`showing why the opposer believes” “it would be damaged by the registration of the opposed mark
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`and state the grounds for opposition.”). Parties then use discovery to flesh out specific factual
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`issues. Swierkiewicz, 534 U.S. at 512 (Notice pleading regime “relies on liberal discovery rules”
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`“to define disputed facts and issues”); see, e.g., McZeal v. Sprint Nextel Corp., 501 F. 3d 1354,
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`1358 (Fed. Cir. 2007) (remand from a reversal of order dismissing claims “will provide an
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`opportunity for” the adducing of “evidence” “supporting” claims) (citation omitted). Pleadings
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`satisfy Rule 8 if they contain sufficient “factual detail to put” parties “on notice as to the basic
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`nature of the claims.” Quebedeaux v. United States, 112 Fed. Cl. 317, 321 (2013). Sufficient notice
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`exists if parties understand “what activity” is unlawful and one “reasonabl[y] expect[s] that
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`discovery will reveal [supporting] evidence.” Nalco, 883 F.3d at 1350 (internal citations, quotation
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`marks, and alterations omitted). Neither specific facts nor every element of a claim need be pled.
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`ABB Turbo Sys. AG v. Turbousa, Inc., 774 F.3d 979, 984 (Fed. Cir. 2014) (‘Specific facts are not
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`necessary.’) (quoting Erickson v. Pardus, 551 U.S. 89, 93 (2007) (per curiam); Nalco, 883 F.3d at
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`1350 (no need to “plead facts establishing that each element of an asserted claim is met”).
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`4
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`

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`C.
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`The Sufficiency of Allegations is a Context-Specific Inquiry.
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`
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`Distinguishing between merely conclusory allegations and those sufficient to support a
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`claim “requires a context-specific assessment” “recogni[zing] that a well-pleaded complaint may
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`proceed even if it strikes a savvy judge that actual proof of the facts is improbable.” ABB, 774 F.3d
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`at 987–88 (internal quotation marks, alterations, and citations omitted). This “context-specific”
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`analysis depends on “experience and common sense.” K-Tech Telecomm., Inc. v. Time Warner
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`Cable, Inc., 714 F.3d 1277, 1283 (Fed. Cir. 2013) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 679
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`(2009)).
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`
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`Even “rather scant” pleadings may satisfy Rule 8. ABB, 774 F.3d at 989 (citation omitted).
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`“The key dividing line seems to be between claims that require suppositions to connote
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`wrongdoing and those based on facts that indicate impropriety on their own.” Dobyns, 91 Fed. Cl.
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`at 430 n.47. Illustratively, “contract claims appear to be the kind of claim for which suppositions
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`are not necessary” such that relatively few facts need to be pleaded. Id.
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`
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`Indeed, the Board itself has noted that whether pleadings are legally sufficient is a “context-
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`specific” inquiry wherein not much has to be pled for “straightforward” claims. See, e.g., Lewis
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`Silkin LLP v. Firebrand LLC, 2018 WL 6923002, at *2, *4 (TTAB 2018) (noting that “a
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`counterclaim to delete goods or services from the registration on the ground that registrant does
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`not use the mark on those goods or services and has no intent to resume use, without regard to
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`likelihood of confusion, is a straightforward abandonment claim” such that, for example,
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`“abandonment was sufficiently pleaded with the allegation ‘[registrant] abandoned all use of the
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`mark with no intent to resume use of the mark’”) (citations omitted).
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`5
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`

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`III. ARGUMENT
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`A.
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`Republic’s Motion to Dismiss Wholly Fails to Meet Its Heavy Burden
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`
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`Republic argues that Kretek has made naked assertions that fail to support Kretek’s
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`counterclaim of abandonment.
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` Republic’s assertions baldly mischaracterize Kretek’s
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`abandonment counterclaim and is insufficient for satisfying Republic’s “heavy burden.”
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`Republic’s Motion cannot prevail where it neither asserts lack of notice nor explains what is so
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`conclusory about the counterclaim.
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`
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`Republic’s failure to even assert that the counterclaim insufficiently apprises it of Kretek’s
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`abandonment claim is fatal. See, e.g., Hall v. Bed Bath & Beyond, Inc., 705 F. 3d 1357, 1362 (Fed.
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`Cir. 2013) (reversing dismissal as to a patent infringement claim: “[h]ere the defendants never
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`stated that they were not apprised of Hall's infringement claim and its grounds”). Indeed,
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`Republic’s own Motion to Dismiss shows it understands that Kretek is moving to cancel
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`Republic’s mark's registration based on abandonment. Motion to Dismiss ¶ 2-5. The counterclaim
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`clearly alleges abandonment where Republic is not the owner of the mark at issue at least since
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`April 21, 2017 when the Section 8 and 9 was filed which is over three years prior and as such
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`constitutes abandonment. Counterclaim, ¶¶ 3-7, 10, 11, 13, 17-19, 21, 22.
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`
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`Republic argues that Kretek’s abandonment claim is flawed because Kretek does not argue
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`that Republic discontinued with no intent to resume. However, under Republic’s own admission,
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`Kretek can state a claim for abandonment by EITHER alleging a prima facie case that the mark
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`has been abandoned through three consecutive years of non-use OR facts showing non-use for less
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`than three years coupled with intent not to resume use. See Motion to Dismiss at p. 3. Thus,
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`Kretek’s lack of alleging intent not to resume is not fatal to the counterclaim.
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`6
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`Instead, Republic ignores the notice pleading requirements and instead argues issues of co-
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`branding and packaging which are clearly part of and the purpose of discovery, not pleading, to
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`flesh out any factual issues. If Republic contests Kretek’s abandonment counterclaim, it cannot
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`use a motion to dismiss to attack Kretek’s claims and the facts in the counterclaim must be taken
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`as true. Republic instead wants to assert additional facts to counter Kretek’s claims which are not
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`proper on a motion to dismiss.
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`
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`Respondent cites the non-precedential case Vartan Khazadian v. Triple B Construction Inc.
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`to support its argument that all conclusory allegations in Petitioner’s Counterclaim be discounted.
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`However, the Khazadian case is distinguished as that case was decided on a motion for judgment
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`on the pleadings, not a motion to dismiss and the motion was brought during the discovery period.
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`Here, this case is at the early stages of the case and discovery has not even opened.
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`
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`Here, Kretek has pled facts which if proven establish over three years of nonuse which can
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`establish the abandonment claim. As noted by the Board, this is a context-specific inquiry. See
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`Lewis Silkin, 2018 WL 6923002, at *2, *4. In the precedential Lewis Silkin case, the Trademark
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`Trial and Appeal Board found that detailed pleading is not required for an abandonment claim. Id.
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`at *6. Petitioner’s counterclaim includes supported allegations of abandonment and clearly alleges
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`abandonment where Republic is not the owner of the mark at issue at least since April 21, 2017
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`when the Section 8 and 9 was filed which is over three years prior and as such constitutes
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`abandonment. Counterclaim, ¶¶ 3-7, 10, 11, 13, 17-19, 21, 22.
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`CONCLUSION
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`Petitioner submits that it has sufficiently pleaded the factual basis to allow Respondent to
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`submit a response and to give fair notice to the Respondent of the abandonment claim made by
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`Opposer. Petitioner further submits that it did not allege fraud in the Counterclaim at this time and
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`7
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`reserves its rights to allege fraud going forward. Accordingly, Respondent’s motion should be
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`denied.
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`
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`WHEREFORE, Applicant/Petitioner Kretek International, Inc. respectfully requests that
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`Respondent’s Motion to Dismiss the Counterclaim be denied. In the event that the Board is inclined
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`to grant the Motion to Dismiss (which Kretek finds would be improper and highly objectionable),
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`with this Response, Kretek is also filing its First Amended Counterclaim in which the pleadings
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`are clarified. See Exhibit “1.”
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`Date: October 11, 2021
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`Respectfully submitted,
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`By: /Julie Dahlgard/
`Catherine F. Hoffman
`Julie Dahlgard
`Dickinson Wright PLLC
`350 East Las Olas Blvd, Suite 1750
`Ft. Lauderdale, FL 33301
`Telephone: (954) 991-5420
`Facsimile: (844) 670-6009
`choffman@dickinsonwright.com
`jdahlgard@dickinsonwright.com
`mhtrademarks@dickinsonwright.com
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`Attorneys for Kretek International, Inc.
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`8
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing has been served on Counsel
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`for Opposer/Respondent by forwarding said copy on October 11, 2021, via email to:
`
`
`Antony J. McShane
`NEAL, GERBER & EISENBERG LLP
`2 N. LaSalle Street, Suite 1700
`Chicago, IL 60602
`ecfdocket@nge.com
`amcshane@nge.com
`temanuelson@nge.com
`acrawford@nge.com
`ecfdocket@nge.com
`lstark@nge.com
`
`
`/Julie Dahlgard/
`Julie Dahlgard
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`4818-9459-6093 v3 [86863-157]
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`9
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`EXHIBIT 1
`EXHIBIT 1
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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 Applications Serial Nos. 88/499,664 and 88/499,702
`
`For the marks VENTURA CIGAR and
`
`Published in the Official Gazette on February 2, 2021
`
`
`Republic Brands L.P.
`f/k/a Republic Tobacco L.P.,
`
`
`
`
`
`Kretek International, Inc.,
`
`
`
`
`
`Opposer/Respondent,
`
`v.
`
`
`
`
`
`Applicant/Petitioner.
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`
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`
`
`
`
`Opposition No. 91269584
`
`ANSWER TO NOTICE OF OPPOSITION, AMENDED AFFIRMATIVE DEFENSES
`AND FIRST AMENDED COUNTERCLAIM FOR CANCELLATION
`
`Applicant Kretek International, Inc. (“Kretek” “Applicant” or “Petitioner”), by and through
`
`
`
`
`its undersigned counsel, submits its Answer to the Notice of Opposition filed by Republic Tobacco
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`L.P. (“Opposer”) and states:
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`1.
`
`In response to Paragraph 1 of Opposer’s Notice of Opposition Applicant states that
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`the allegations state legal conclusions to which no response is required. To the extent a response
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`is required, Applicant is without knowledge or information sufficient upon which to form a basis
`
`of belief as to the accuracy of the allegations set forth therein, and therefore denies the same.
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`2.
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`In response to Paragraph 2 of Opposer’s Notice of Opposition Applicant states that
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`the allegations state legal conclusions to which no response is required. To the extent a response
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`

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`is required, Applicant is without knowledge or information sufficient upon which to form a basis
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`of belief as to the accuracy of the allegations set forth therein, and therefore denies the same.
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`3.
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`In response to Paragraph 3 of Opposer’s Notice of Opposition Applicant states that
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`the allegations state legal conclusions to which no response is required. To the extent a response
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`is required, Applicant is without knowledge or information sufficient upon which to form a basis
`
`of belief as to the accuracy of the allegations set forth therein, and therefore denies the same.
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`4.
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`In response to Paragraph 4 of Opposer’s Notice of Opposition Applicant states that
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`the allegations state legal conclusions to which no response is required. To the extent a response
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`is required, Applicant is without knowledge or information sufficient upon which to form a basis
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`of belief as to the accuracy of the allegations set forth therein, and therefore denies the same.
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`5.
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`In response to Paragraph 5 of Opposer’s Notice of Opposition, Applicant states that
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`the allegations state legal conclusions to which no response is required. To the extent a response
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`is required, Applicant admits that it filed applications for the marks VENTURA CIGAR (standard
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`character mark) and V VENTURA CIGAR VENTURACIGAR.COM and Design based on
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`Section 1(a) in connection with cigars; lighters for smokers; cigar cutters; ashtrays; tobacco pipes;
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`pipe tobacco; humidors; humidors having digital hygrometers; cigar humidifiers. The allegations
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`are otherwise denied.
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`6.
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`In response to Paragraph 6 of Opposer’s Notice of Opposition, Applicant states that
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`the allegations state legal conclusions to which no response is required. To the extent a response
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`is required, Applicant denies that Opposer will be damaged by the registration of Trademark
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`Application Numbers 88/499,664 and 88/499,702 for the marks VENTURA CIGAR and V
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`VENTURA CIGAR VENTURACIGAR.COM and Design. To the extent a further response is
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`2
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`required, Applicant is without knowledge or information sufficient upon which to form a basis of
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`belief as to the accuracy of the allegations set forth therein, and therefore denies the same.
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`7.
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`Applicant denies each and every allegation set forth in Opposer’s Notice of
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`Opposition that is not specifically set forth herein.
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`AMENDED AFFIRMATIVE DEFENSES
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`Opposer is not the owner of the VENTURA WHITES mark.
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`Opposer does not have continuous use.
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`8.
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`9.
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`10.
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`Opposer’s claims are barred in whole or in part by estoppel, acquiescence, and/or
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`waiver, based on Applicant’s use of the marks VENTURA CIGAR and V VENTURA CIGAR
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`VENTURACIGAR.COM and Design.
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`11.
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`12.
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`Absence of likelihood of confusion.
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`Applicant alleges it lacks sufficient knowledge or information upon which to
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`ascertain whether as yet unstated additional affirmative defenses are available. Applicant reserves
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`the right to assert additional defenses ascertained by further investigation and discovery.
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`FIRST AMENDED COUNTERCLAIM FOR CANCELLATION OF REG. NO. 2,146,739
`ABANDONMENT OF THE MARK
`
`1.
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`Petitioner, Kretek International, Inc., believes it will be damaged by the continued
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`existence of U.S. Reg. No. 2,146,739 for VENTURA WHITES and Design for cigarette rolling
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`papers. As grounds for cancellation, Petitioner alleges:
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`2.
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`Petitioner has standing. Petitioner’s applications Ser. Nos. 88/499,664 and
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`88/499,702 are being challenged based on purported rights in VENTURA WHITES and Design,
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`U.S. Reg. No. 2,146,739.
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`3
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`3.
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`Petitioner is requesting cancellation of U.S. Reg. No. 2,146,739 based on
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`abandonment and because Republic Tobacco L.P. was not the owner of the mark at the time the
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`combined Section 8 & 9 was filed on April 21, 2017 for Reg. No. 2,146,739.
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`4.
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`According to the USPTO records, on April 21, 2017, Republic Tobacco L.P. filed
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`a combined Section 8 declaration of use and Section 9 renewal for Reg. No. 2,146,739.
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`5.
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`According to the USPTO records, on April 21, 2017, the combined declaration of
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`use and renewal under Sections 8 and 9 for U.S. Reg. No. 2,146,739, included a declaration signed
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`by Seth I Gold, Executive Vice President, stating that:
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`Declaration
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` Unless the owner has specifically claimed excusable nonuse, the mark is in use in
`commerce on or in connection with the goods/services or to indicate membership in
`the collective membership organization identified above, as evidenced by the attached
`specimen(s).
` The specimen(s) shows the mark as currently used in commerce on or in connection
`with the goods/services/collective membership organization.
` The registrant requests that the registration be renewed for the
`goods/services/collective organization identified above.
` To the best of the signatory's knowledge, information, and belief, formed after an
`inquiry reasonable under the circumstances, the allegations and other factual
`contentions made above have evidentiary support.
` The signatory being warned that willful false statements and the like are punishable by
`fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false
`statements and the like may jeopardize the validity of this submission, declares that all
`statements made of his/her own knowledge are true and all statements made on
`information and belief are believed to be true.
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`6.
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`Further, the combined Section 8 and 9 filing declared that: “For International Class
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`034, the mark is in use in commerce on or in connection with all goods/services, or to indicate
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`membership in the collective membership organization, listed in the existing registration for this
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`specific class: cigarette rolling papers ; or, the owner is making the listed excusable nonuse claim.
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`4
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`The owner is submitting one(or more) specimen(s) showing the mark as used in commerce on or
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`in connection with any item in this class, consisting of a(n) photo of product.”
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`7.
`
`Upon information and belief, and based on the specimen of use, Respondent was
`
`not owner of the VENTURA WHITES and Design mark on April 21, 2017.
`
`8.
`
`According to the USPTO records, on April 21, 2017, the combined declaration of
`
`use and renewal under Sections 8 and 9 for U.S. Reg. No. 2,146,739, included one specimen of
`
`use shown immediately below:
`
`9.
`
`In the specimen shown above, the trademark wording on the front of the package
`
`reads “VENTURA WHITES by GAMBLER” and the packaging includes an image of the head of
`
`
`
`a man wearing a hat and smoking a cigarette.
`
`
`
`5
`
`

`

`10.
`
`The statement “VENTURA WHITES by GAMBLER” on the current use specimen
`
`packaging submitted April 21, 2017, is an admission that the source of VENTURA WHITES
`
`cigarette rolling papers on April 21, 2017 is GAMBLER.
`
`11.
`
`According to USPTO records, Respondentis not the owner of the GAMBLER
`
`brand and has not been the owner of the GAMBLER brand for cigarette rolling papers since March
`
`31, 2000.
`
`12.
`
`According to USPTO records, Top Tobacco L.P. currently owns the GAMBLER
`
`mark for cigarette papers and owned the GAMBLER brand for cigarette papers on April 21, 2017.
`
`13.
`
`Thus, the specimen submitted on April 21, 2017 does not show use of the
`
`VENTURA WHITES mark by Respondent.
`
`14.
`
`According to the USPTO records, in the years prior to April 21, 2017, Top Tobacco
`
`L.P. submitted specimens shown in Composite Exhibit “A” for Reg. Nos. 2947537 (1 page
`
`submitted July 7, 2014) and 4972872 (3 pages submitted Oct. 16, 2015) for the mark GAMBLER
`
`and Reg. No. 5049549 (2 pages submitted Feb. 22, 2016) for the mark
`
`.
`
`15.
`
`The packaging shown in the VENTURA WHITES specimen submitted April 21,
`
`2017, is similar in appearance to the packaging of goods shown in Exhibit “A.” Due to this
`
`similarity, at the time the combined Section 8 & 9 was filed on April 21, 2017, consumers would
`
`likely have believed that the VENTURA WHITES cigarette rolling papers shown in the specimen
`
`submitted April 21, 2017 were offered by GAMBLER brand and not Respondent.
`
`16.
`
`Likewise, consumers today would also believe that the VENTURA WHITES
`
`cigarette rolling papers were offered by GAMBLER brand and not Respondent because they are
`
`advertised as “Ventura Whites Rolling Papers by Gambler” on
`
`the web page
`
`
`
`6
`
`

`

`https://www.rollyourown.com/index.php?main_page=popup_image&pID=2727. See attached
`
`Exhibit “B.”
`
`17.
`
`Upon information and belief, any use of VENTURA WHITES by Top Tobacco
`
`L.P. on April 21, 2017, did not inure to the benefit of Respondent.
`
`18.
`
`Upon information and belief, any current use of VENTURA WHITES by Top
`
`Tobacco L.P. does not inure to the benefit of Respondent.
`
`19.
`
`Upon information and belief, on April 21, 2017, Respondent improperly claimed
`
`ownership of the VENTURA WHITES and Design mark, which is the subject of Reg. No.
`
`2,146,739.
`
`20.
`
`As the Respondent improperly claimed ownership of the VENTURA WHITES
`
`mark on April 21, 2017, the combined section 8 and section 9 filed April 21, 2017 is void ab initio
`
`and Reg. No. 2,146,739 should be cancelled.
`
`21.
`
`Upon information and belief, Respondent continues to improperly claim ownership
`
`of the VENTURA WHITES and Design mark, which is the subject of Reg. No. 2,146,739.
`
`22.
`
`As cigarette papers bearing the mark VENTURA WHITES continue to be
`
`advertised as “by GAMBLER” more than three years after April 21, 2017, Respondent has
`
`abandoned the VENTURA WHITES mark.
`
`23.
`
`Upon information and belief, Respondent is not using the
`
` mark
`
`on or in connection with cigarette rolling papers with no intent to resume such use.
`
`24.
`
`Upon information and belief, Respondent has not used the
`
` mark
`
`on or in connection with cigarette rolling papers for three consecutive years.
`
`
`
`7
`
`

`

`
`
`WHEREFORE, Applicant/Petitioner Kretek International, Inc. respectfully requests that the notice
`
`of opposition be dismissed with prejudice, the counterclaim be sustained and U.S. Registration
`
`No. 2,146,739 be cancelled.
`
`
`
`
`
`
`
`
`
`Date: October 11, 2021
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Julie Dahlgard/
`Catherine F. Hoffman
`Julie Dahlgard
`Dickinson Wright PLLC
`350 East Las Olas Blvd, Suite 1750
`Ft. Lauderdale, FL 33301
`Telephone: (954) 991-5420
`Facsimile: (844) 670-6009
`choffman@dickinsonwright.com
`jdahlgard@dickinsonwright.com
`mhtrademarks@dickinsonwright.com
`
`Attorneys for Kretek International, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`

`

`CERTIFICATE OF SERVICE
`
`
`I hereby certify that a true and complete copy of the foregoing has been served on Counsel
`
`for Opposer/Respondent by forwarding said copy on October 11, 2021, via email to:
`
`
`Antony J. McShane
`NEAL, GERBER & EISENBERG LLP
`2 N. LaSalle Street, Suite 1700
`Chicago, IL 60602
`ecfdocket@nge.com
`amcshane@nge.com
`temanuelson@nge.com
`acrawford@nge.com
`ecfdocket@nge.com
`lstark@nge.com
`
`
`/Julie Dahlgard/
`Julie Dahlgard
`
`
`
`4830-3827-3278 v1 [86863-157]
`
`
`
`9
`
`

`

`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
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`EXHIBIT B
`EXHIBIT B
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`ZC Ventura Whites Rolling Papers B
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`Order Online or Toll Free (800) 269-1760
`Specializing in Premium Cigars, Pipe Tobacco and Smoking Accessories Since 1911
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`CATEGORIES
`
`Home :: Rolling Papers & Hand Rollers:: Rolling Papers :: Ventura Whites Rolling Papers :: Ventura Whites Rolling
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`CUSTOMERS WHO BOUGHT
`NORAD STORKCE &pEvions||THIS PRODUCT ALSO PURCHASED...
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`Ventura Whites Rolling Papers by Gambler
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`
`MONTHLY SPECIALS
`
`CUSTOMERS WHO BOUGHT
`fORACEO STORAGE &DEVICRS|THIS PRODUCT AISO PURCHASED...
`
`ZANZIBAR CLOVE HERBAL
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`ZC Ventura Whites Rolling Papers B.
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