Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1209987
`05/18/2022
`
`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
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`ITG Cigars Inc.
`
`05/18/2022
`
`714 GREEN VALLEY ROAD
`GREENSBORO, NC 27408
`UNITED STATES
`
`CHARLES W. GRIMES, RUSSELL D. DIZE
`GRIMES LLC
`8890 TERRENE COURT, #102
`BONITA SPRINGS, FL 34135
`UNITED STATES
`Primary email: uspto@gandb.com
`Secondary email(s): grimes@gandb.com, dize@gandb.com,
`kessler@gandb.com
`239-330-9000
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`90691143
`
`Opposition filing
`date
`
`Applicant
`
`05/18/2022
`
`BZZT LLC
`4800 WILLOW AVENUE
`BETHANY, OK 73008
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`01/18/2022
`
`Opposition period
`ends
`
`05/18/2022
`
`Class 034. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Ashtrays; Cigarettes; Cigars; Hu-
`midors;Tobacco; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes;
`Chewing tobacco; Cigar cases; Cigar cutters; Cigarette cases; Cigarette cutters; Cigarette rolling pa-
`pers; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential
`oils, used torefill electronic cigarette cartridges;Electronic cigarette refill cartridges sold empty; Elec-
`tronic cigarettes; Electronic smoking pipes; Filter tips; Flavored tobacco; Flavorings for tobacco sub-
`stitutes, other than essential oils; Herbsfor smoking; Lighters for smokers; Match holders; Oral vapor-
`izers for smoking purposes; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe;
`Smokeless tobacco; Smoker's articles, namely, filter tubes; Smokers' articles in the nature of hemp
`wicks for lighting; Smokers' articles, namely, rehydration tubes; Smokers' mouthpieces for electronic
`cigarettes, cigars, cigarettes; Smokers'rolling trays; Smoking pipes; Smoking tobacco; Snuff boxes;
`Tobacco filters; Tobacco grinders; Tobacco jars; Tobacco pipes; Tobacco substitutes; Tobacco water
`
`

`

`pipes
`
`Applicant information
`
`Application no.
`
`90680956
`
`Publication date
`
`01/18/2022
`
`Opposition filing
`date
`
`Applicant
`
`05/18/2022
`
`Opposition period
`ends
`
`BZZT LLC
`4800 WILLOW AVENUE
`BETHANY, OK 73008
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 025. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Coats; Dresses; Footwear; Gloves; Head-
`wear; Loungewear; Neckwear; Nightwear; Pants; Scarves; Shirts; Shoes; Shorts; Skirts; Sleepwear;
`Socks; Sweaters; Swimwear; Underclothes; Belts; Bottoms as clothing; Jackets; Tops as clothing
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Sections 2 and 43(c)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`6541153
`
`Register
`
`Principal
`
`Registration date
`
`10/26/2021
`
`Word mark
`
`Design mark
`
`BACKWOODS
`
`Application date
`
`09/21/2020
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "BACKWOODS" in a stylized font surrounded by
`a border.
`
`Class 034. First use: First Use: 1981 First Use In Commerce: 1981
`Cigarillos; Cigars
`
`U.S. registration
`no.
`
`4923532
`
`Application date
`
`07/03/2014
`
`

`

`Register
`
`Principal
`
`Registration date
`
`03/22/2016
`
`Word mark
`
`Design mark
`
`BACKWOODS
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "BACKWOODS" in red letters in a stylized font
`surrounded by a black border. The white background is not claimed as a feature
`of the mark.
`
`Class 034. First use: First Use: 1981 First Use In Commerce: 1981
`cigarettes, cigarillos, cigars
`
`U.S. registration
`no.
`
`4928698
`
`Register
`
`Principal
`
`Registration date
`
`03/29/2016
`
`Word mark
`
`Design mark
`
`BACKWOODS
`
`Application date
`
`12/23/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized and outlined word "BACKWOODS" appearing
`at the top of a patterned background, comprised of irregular shapes, that re-
`sembles woven burlap fabric.
`
`Class 034. First use: First Use: 1981 First Use In Commerce: 1981
`cigarillos, cigars
`
`U.S. registration
`no.
`
`4928699
`
`Register
`
`Principal
`
`Registration date
`
`03/29/2016
`
`Word mark
`
`Design mark
`
`BACKWOODS
`
`Application date
`
`12/23/2014
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized and outlined word "BACKWOODS" appearing
`at the top of a honeycomb patterned background.
`
`Class 034. First use: First Use: Jun 23, 2003 First Use In Commerce: Jun 23,
`2003
`cigarillos, cigars
`
`U.S. registration
`no.
`
`4933398
`
`Register
`
`Principal
`
`Registration date
`
`04/05/2016
`
`Application date
`
`10/22/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`BACKWOODS WILD 'N MILD CIGARS ALL NATURAL TOBACCO 5 CIGARS
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized and outlined word "BACKWOODS" appearing
`at the top of a patterned background, comprised of irregular shapes, that re-
`sembles woven burlap fabric. Under the word "BACKWOODS" appears the
`wording "WILD 'N MILDCIGARS" in stylized, outlined font. A cigar appears diag-
`onally from the bottom left corner toward the upper right corner. A star-shaped
`burst design appears inthe left center of the mark under the wording "WILD 'N
`MILD CIGARS" and overlaps the cigar. The stylized and outlined wording "ALL
`NATURAL TOBACCO" and "5 CIGARS" appears below and to the right of the
`cigar.
`
`Class 034. First use: First Use: Aug 16, 2010 First Use In Commerce: Aug 16,
`2010
`cigarillos, cigars
`
`U.S. registration
`no.
`
`4918877
`
`Register
`
`Principal
`
`Registration date
`
`03/15/2016
`
`Word mark
`
`BACKWOODS
`
`Application date
`
`07/03/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "BACKWOODS" in a stylized font surrounded by
`a border on a honeycomb background design.
`
`Class 034. First use: First Use: Jun 23, 2003 First Use In Commerce: Jun 23,
`2003
`Cigarillos, cigars
`
`U.S. registration
`no.
`
`4923533
`
`Register
`
`Principal
`
`Registration date
`
`03/22/2016
`
`Word mark
`
`Design mark
`
`BACKWOODS
`
`Application date
`
`07/03/2014
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized word "BACKWOODS" surrounded by a border
`on a burlap background design.
`
`Class 034. First use: First Use: 1981 First Use In Commerce: 1981
`Cigarillos, cigars
`
`

`

`U.S. registration
`no.
`
`4918876
`
`Register
`
`Principal
`
`Registration date
`
`03/15/2016
`
`Application date
`
`07/03/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`BACKWOODS WILD 'N MILD CIGARS
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized wording "BACKWOODS WILD 'N MILD CI-
`GARS" on a burlap background design.
`
`Class 034. First use: First Use: 1981 First Use In Commerce: 1981
`Cigarillos, cigars
`
`U.S. registration
`no.
`
`1164008
`
`Register
`
`Principal
`
`Registration date
`
`08/04/1981
`
`Application date
`
`05/17/1979
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BACKWOODS
`
`NONE
`
`Class 034. First use: First Use: May 2, 1979 First Use In Commerce: May 2,
`1979
`CIGARS
`
`U.S. registration
`no.
`
`3268658
`
`Register
`
`Principal
`
`Registration date
`
`07/24/2007
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`BACKWOODS
`
`NONE
`
`Application date
`
`09/16/1997
`
`Foreign priority
`date
`
`NONE
`
`Goods/services
`
`Class 014. First use: First Use: May 1, 2006 First Use In Commerce: May 1,
`
`

`

`2006
`ashtrays, cigar cases, [ cigarette cases, ] tobacco cases, [ cigarette holders]and
`cigarette lighters of precious metals
`Class 034. First use: First Use: May 1, 2006 First Use In Commerce: May 1,
`2006
`tobacco pouches; cigar [ and cigarette ] cases not of precious metal
`
`U.S. registration
`no.
`
`6316112
`
`Register
`
`Principal
`
`Registration date
`
`04/06/2021
`
`Application date
`
`11/14/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`BACKWOODS BLACK RUSSIAN
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 034. First use: First Use: Jan 13, 2020 First Use In Commerce: Jan 13,
`2020
`Cigarillos; Cigars
`
`U.S. registration
`no.
`
`6435525
`
`Register
`
`Principal
`
`Registration date
`
`07/27/2021
`
`Application date
`
`05/26/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`BACKWOODS SMALL BATCH
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 034. First use: First Use: Mar 1, 2021 First Use In Commerce: Mar 1,
`2021
`Cigarillos; cigars
`
`

`

`U.S. registration
`no.
`
`6598668
`
`Register
`
`Principal
`
`Registration date
`
`12/21/2021
`
`Application date
`
`05/21/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`BACKWOODS DARK LEAF
`
`Description of
`mark
`
`Goods/services
`
`Attachments
`
`NONE
`
`Class 034. First use: First Use: Aug 1, 2020 First Use In Commerce: Aug 1,
`2020
`Cigarillos; cigars
`
`90196706#TMSN.png( bytes )
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`88927791#TMSN.png( bytes )
`Notice of Opposition re BZZT Stylized 5-18-22.pdf(365230 bytes )
`Exhibit A.PDF(218942 bytes )
`Exhibit B.PDF(1115981 bytes )
`Exhibit C.PDF(251185 bytes )
`Exhibit D.PDF(246274 bytes )
`Exhibit E.PDF(259628 bytes )
`Exhibit F.PDF(263423 bytes )
`Exhibit G.PDF(247750 bytes )
`Exhibit H.PDF(258904 bytes )
`Exhibit I.PDF(226332 bytes )
`Exhibit J.PDF(311581 bytes )
`Exhibit K.PDF(235457 bytes )
`Exhibit L.PDF(215370 bytes )
`Exhibit M.PDF(231926 bytes )
`
`Signature
`
`/Russell D. Dize/
`
`Name
`
`Date
`
`CHARLES W. GRIMES, RUSSELL D. DIZE
`
`05/18/2022
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`In the Matter of Application Serial Nos. 90/691,143 and 90/680,956
`Published in the Official Gazette on January 18, 2022
`---------------------------------------------------------------X
`ITG Cigars Inc.,
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`Opposer,
`
`
`:
`
`
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`
`
`
`
`:
`
`v.
`
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`BZZT LLC,
`
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
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`Applicant.
`
`
`:
`---------------------------------------------------------------X
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`
`
`
`
`
`
`Opposition No.:
`
`
`
`
`ITG Cigars Inc. (“ITG”) believes that it will be damaged by registration of the marks
`
`shown in Application Serial Nos. 90/691,143 and 90/680,956 and hereby opposes same. The
`
`grounds for the opposition are as follows:
`
`COUNT I
`
`1.
`
`ITG is a corporation organized and existing under the laws of the State of
`
`Delaware, having its principal place of business at 714 Green Valley Road, Greensboro, NC
`
`27408. 7018
`
`2.
`
`ITG is a major United States manufacturer and seller of cigars, tobacco, tobacco
`
`related products and smoker’s articles.
`
` 3.
`
`4.
`
`
`
`
`
`
`
`Max Rohr, Inc. (“Rohr”) is a wholly owned subsidiary of ITG.
`
`Rohr is the owner of the BACKWOODS (Stylized) trademark and:
`
`(i)
`
`U.S. Trademark Registration No. 6,541,153 for “cigarillos; cigars” in
`
`

`

`International Class 34:
`
`
`
`Attached as Exhibit A is a true and correct printout from the U.S. Patent and Trademark Office’s
`
`TSDR database showing the current status and title of Registration No. 6,541,153; and
`
`(ii)
`
`U.S. Trademark Registration No. 4,923,532 for “cigarillos, cigars” in
`
`
`
`International Class 34:
`
`
`
`Attached as Exhibit B is a true and correct printout from the U.S. Patent and Trademark Office’s
`
`TSDR database showing the current status and title of Registration No. 4,923,532;
`
`(collectively, the “BACKWOODS (Stylized) Trademark”).
`
`
`
`5.
`
`Rohr is also the owner of the following trademarks and U.S. trademark
`
`registrations covering the BACKWOODS trademark and BACKWOODS packaging designs,
`
`several of which incorporate the BACKWOODS (Stylized) Trademark:
`
`
`
`
`
`(i)
`
`The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,928,698 for “cigarillos, cigars” in International Class 34:
`
`
`
`2
`
`

`

`
`
`Attached as Exhibit C is a true and correct printout from the U.S. Patent and Trademark Office’s
`
`TSDR database showing the current status and title of Registration No. 4,928,698;
`
`
`
`
`
`(ii)
`
`The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,928,699 for “cigarillos, cigars” in International Class 34:
`
`
`
`Attached as Exhibit D is a true and correct printout from the U.S. Patent and Trademark Office’s
`
`TSDR database showing the current status and title of Registration No. 4,928,699;
`
`
`
`
`
`(iii)
`
`The BACKWOODS WILD ‘N MILD CIGARS ALL NATURAL
`
`TOBACCO 5 CIGARS and Design trademark and U.S. Trademark Registration No. 4,933,398
`
`for “cigarillos, cigars” in International Class 34. Attached as Exhibit E is a true and correct
`
`
`
`3
`
`

`

`printout from the U.S. Patent and Trademark Office’s TSDR database showing the current status
`
`and title of Registration No. 4,933,398;
`
`
`
`
`
`(iv)
`
`The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,918,877 for “Cigarillos, cigars” in International Class 34. Attached as Exhibit
`
`F is a true and correct printout from the U.S. Patent and Trademark Office’s TSDR database
`
`showing the current status and title of Registration No. 4,918,877;
`
`
`
`
`
`(v)
`
`The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,923,533 for “Cigarillos, cigars” in International Class 34. Attached as Exhibit
`
`G is a true and correct printout from the U.S. Patent and Trademark Office’s TSDR database
`
`showing the current status and title of Registration No. 4,923,533;
`
`
`
`
`
`(vi) The BACKWOODS WILD ‘N MILD CIGARS and Design trademark and
`
`U.S. Trademark Registration No. 4,918,876 for “Cigarillos, cigars” in International Class 34.
`
`Attached as Exhibit H is a true and correct printout from the U.S. Patent and Trademark Office’s
`
`TSDR database showing the current status and title of Registration No. 4,918,876;
`
`
`
`(vii) The BACKWOODS trademark and U.S. Trademark Registration No.
`
`1,164,008 for “cigars” in International Class 34. Attached as Exhibit I is a true and correct
`
`printout from the U.S. Patent and Trademark Office’s TSDR database showing the current status
`
`and title of Registration No. 1,164,008;
`
`
`
`(viii) The BACKWOODS trademark and U.S. Trademark Registration No.
`
`3,268,658 for “ashtrays, cigar cases, tobacco cases, and cigarette lighters of precious metals” in
`
`International Class 14, and for “tobacco pouches; cigar cases not of precious metal” in
`
`International Class 34. Attached as Exhibit J is a true and correct printout from the U.S. Patent
`
`and Trademark Office’s TSDR database showing the current status and title of Registration No.
`
`
`
`4
`
`

`

`3,268,658;
`
`
`
`(ix)
`
`The BACKWOODS BLACK RUSSIAN trademark and U.S. Trademark
`
`Registration No. 6,316,112 for “Cigarillos; Cigars” in International Class 34. Attached as
`
`Exhibit K is a true and correct printout from the U.S. Patent and Trademark Office’s TSDR
`
`database showing the current status and title of Registration No. 6,316,112;
`
`
`
`(x)
`
`The BACKWOODS SMALL BATCH trademark and U.S. Trademark
`
`Registration No. 6,435,525 for “Cigarillos; Cigars” in International Class 34. Attached as
`
`Exhibit L is a true and correct printout from the U.S. Patent and Trademark Office’s TSDR
`
`database showing the current status and title of Registration No. 6,435,525; and
`
`
`
`(xi)
`
`The BACKWOODS DARK LEAF trademark and U.S. Trademark
`
`Registration No. 6,598,668 for “Cigarillos; Cigars” in International Class 34. Attached as
`
`Exhibit M is a true and correct printout from the U.S. Patent and Trademark Office’s TSDR
`
`database showing the current status and title of Registration No. 6,598,668.
`
`6.
`
`The trademarks set forth in paragraphs 4 and 5 above are hereinafter referred to
`
`collectively as the “BACKWOODS Trademarks.”
`
`
`
`7.
`
`ITG brings this Opposition on behalf of itself and on behalf of its wholly owned
`
`subsidiary, Rohr, the registered trademark owner (ITG and Rohr are collectively referred to
`
`herein as “Opposer”).
`
`8.
`
`The BACKWOODS Trademarks have been in use in this country since at least as
`
`early as 1979 by Opposer’s predecessors-in-interest.
`
`9.
`
`Opposer is the successor to and owner of all right, title and interest in and to the
`
`BACKWOODS Trademarks derived from the use made of the BACKWOODS Trademarks by its
`
`predecessors-in-interest.
`
`
`
`5
`
`

`

`10.
`
`Since their introduction, BACKWOODS cigars have been constantly and
`
`consistently promoted and extensively advertised. Through the efforts of ITG and its predecessors-
`
`in-interest, Opposer’s BACKWOODS cigars are considered to be among the most popular and
`
`best-selling cigars available in the United States and are sold throughout the United States.
`
`
`
`11.
`
`Since their introduction, the BACKWOODS Trademarks have been used only in
`
`connection with quality cigars and licensed merchandise. All use of the BACKWOODS
`
`Trademarks has inured to the benefit of Opposer and its predecessors.
`
`12.
`
`Opposer’s BACKWOODS Trademarks
`
`are used on packaging
`
`for
`
`BACKWOODS cigars, on ancillary and promotional goods, in advertisements, on the Internet
`
`and in other forums.
`
`13.
`
`Opposer is actively engaged in the development and commercial exploitation of
`
`BACKWOODS merchandise under the BACKWOODS Trademarks.
`
`14.
`
` Through
`
`long-term use and controlled marketing,
`
`the BACKWOODS
`
`Trademarks have become distinctive and strongly associated in the United States with quality
`
`cigars emanating from a single source, namely, Opposer.
`
`15.
`
`As a result of the widespread use and display of Opposer’s BACKWOODS brand
`
`cigars: (a) the public and the trade have come to use the BACKWOODS Trademarks to identify
`
`and refer to Opposer’s BACKWOODS brand cigars; (b) cigars marked with the BACKWOODS
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`Trademarks are recognized by the trade and the public as quality cigars emanating from a single
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`source; (c) the BACKWOODS Trademarks have built up secondary meaning and extensive
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`goodwill; and (d) the BACKWOODS Trademarks have become famous.
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`6
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`16.
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`BZZT LLC (“Applicant”) filed the following applications:
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`(a)
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`U.S. Trademark Application Serial No. 90/691,143 for the mark shown
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`below for a variety of goods in International Class 34, including “tobacco” and “cigars,” on an
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`intent-to-use basis; and
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`(b)
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`U.S. Trademark Application Serial No. 90/680,956 for the mark shown
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`below for a variety of goods in International Class 25, including clothing, on an intent-to-use
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`basis:
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` (“Applicant’s Mark”).
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`17.
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`Applicant’s Mark is confusingly similar in appearance, meaning and commercial
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`impression to the BACKWOODS Trademarks.
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`18.
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`Applicant’s Mark is particularly objectionable in the context of Opposer’s
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`BACKWOODS (Stylized) Trademark, as evidenced by the following side-by-side comparison:
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`7
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`19.
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`The similarities between the parties’ marks, as evidenced by the side-by-
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`side comparison in paragraph 18, are astonishing, to wit:
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`(a)
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`the arcuate manner in which Applicant’s Mark is displayed is
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`exactly the same as the arcuate manner in which Opposer’s
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`BACKWOODS (Stylized) Trademark is displayed;
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`(b)
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`in each case, the word portion of the parties’ respective marks is
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`displayed in stylized capital letters;
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`(c)
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`in each case, the word portion of the parties’ respective marks is
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`displayed on a white background;
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`(d)
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`in each case, the word portion of the parties’ respective marks is
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`surrounded by a black outline that follows the contours of the
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`letters;
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`(e)
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`Applicant’s Mark utilizes a similar type font and style as
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`Opposer’s BACKWOODS (Stylized) Trademark. For example,
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`the letter “B” in Applicant’s Mark:
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`(i)
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`is identical to the letter “B” in Opposer’s BACKWOODS
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`(Stylized) Trademark;
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`(ii)
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`is larger than and extends beneath the adjacent letters,
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`similar to the manner in which the letter “B” in Opposer’s
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`BACKWOODS (Stylized) Trademark is larger than and
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`extends beneath the adjacent letters; and
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`(iii)
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`contains “points” extending backwards from top and
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`bottom of the letter, exactly the same as the letter “B” in
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`8
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`

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`Opposer’s BACKWOODS (Stylized) Trademark.
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`
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`20.
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`In Application Serial Nos. 90/691,143 and 90/680,956, Applicant describes
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`Applicant’s Mark as “the stylized word BZZT with a large B hanging lower than the rest of the
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`letters. The word is slightly arched and outlined in the shape of the word.” Similarly, the
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`BACKWOODS (Stylized) Trademark: (i) incorporates a large B hanging lower than the
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`adjacent letters, (ii) is displayed in an arc; and (iii) contains an outline that follows the shape of
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`the word.
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`
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`21.
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`Accordingly, the stylization of Applicant’s Mark is nearly identical to the
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`stylization of the BACKWOODS (Stylized) Trademark.
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`
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`22.
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`The meaning of Applicant’s Mark is also similar to the meaning of the
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`BACKWOODS Trademarks. “BZZT” is the sound that bees make, and bees make the “BZZT”
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`sound in the woods. As such, there is an associative meaning between “BZZT” and
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`“BACKWOODS”, and “BZZT” is evocative of the BACKWOODS Trademarks particularly
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`when displayed in the stylization of the BACKWOODS (Stylized) Trademark.
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`23.
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`Applicant’s “tobacco” and “cigars” are exactly the same as the goods
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`commercialized in connection with the BACKWOODS Trademarks and such goods would travel
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`and/or be promoted through the same channels of trade for sale to, and use by, the same class of
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`purchasers. In addition, Applicant’s clothing is exactly the same as promotional clothing utilized
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`in connection with BACKWOODS brand cigars.
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`24.
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`In view of the above-described similarities, it would be reasonable for consumers
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`to believe that “BZZT” is a line extension of BACKWOODS brand cigars.
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`25.
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`Opposer’s rights in the BACKWOODS Trademarks pre-date any rights Applicant
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`may claim in Applicant’s Mark.
`
`
`
`9
`
`

`

`26.
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`Upon information and belief, Applicant’s adoption of a mark that is confusingly
`
`similar in appearance, meaning and commercial impression to the BACKWOODS Trademarks is
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`an attempt by Applicant to trade on the goodwill associated with the famous and distinctive
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`BACKWOODS Trademarks.
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`27.
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`In view of the foregoing, Applicant’s use of Applicant’s Mark is likely to cause
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`confusion, mistake or deception as to the source of origin of Applicant’s goods in that the public,
`
`the trade and others are likely to believe that Applicant’s goods are provided by, sponsored by,
`
`approved by, licensed by, affiliated with or in some other way legitimately connected to
`
`Opposer’s BACKWOODS brand cigars.
`
`COUNT II
`
`
`
`28.
`
`Opposer repeats and realleges the allegations set forth in paragraphs 1 through 27
`
`as though fully set forth herein.
`
`
`
`29.
`
`Opposer’s BACKWOODS Trademarks are distinctive and famous and had
`
`become distinctive and famous prior to the acquisition of any rights Applicant may claim in
`
`Applicant’s Mark.
`
`
`
`30.
`
`Use of Applicant’s Mark by Applicant will cause dilution of Opposer’s distinctive
`
`and famous BACKWOODS Trademarks.
`
`
`
`31.
`
`Opposer will be damaged by the registration sought by Applicant because such
`
`registration would support and assist Applicant in the use of Applicant’s Mark and thereby dilute
`
`Opposer’s distinctive and famous BACKWOODS Trademarks.
`
`
`
`
`
`
`
`10
`
`

`

`WHEREFORE, Opposer respectfully requests that this Opposition be sustained and that
`
`Application Serial Nos. 90/691,143 and 90/680,956 be refused in all respects.
`
`Dated: May 18, 2022
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Russell D. Dize/
`Charles W. Grimes
`Russell D. Dize
`GRIMES LLC
`8890 Terrene Court, #102
`Bonita Springs, Florida 34135
`Telephone No.: (239) 330-9000
`
`Attorneys for Opposer
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the aforementioned Notice of Opposition was filed
`
`with the Trademark Trial and Appeal Board on the date indicated below online through the
`
`ESTTA system of the United States Patent and Trademark Office.
`
`Dated: May 18, 2022
`
`
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` /Russell D. Dize/
`
`Russell D. Dize
`
`
`
`11
`
`

`

`EXHIBIT A
`
`

`

`
`
`
`
`For assistance with TSDR, email teas@uspto.gov and include your serial number, the document you are looking for, anda screenshotof any error
`
`messages you have received,
`~
`r
`
`
`
`Processing Wait Times: Please note that due to an extraordinary surge in applications, processing times are fonger than usual. See current trademark
`processing wait times for more information.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`i
`}
`i
`This page was generated by TSBR0onp2022-05-18 &52:44EDT
`Generated on:
`Mark: BACKWOODS
`
`i
`i
`
`Back to Search
`
`Print
`
`US Serial Number:
`
`US Registration Number:
`
`Register:
`
`Mark Type:
`TM5 Common Status
`Descriptor:
`
`Status:
`
`Status Date:
`
`90196706
`6541153
`Principal
`Trademark -
`
`“Application Filing Date: Sep. 21, 2020
`Registration Date: Oct.26 2021
`
`/
`
`
`LIVE/REGISTRATION/[ssued and Active
`
`The trademark application has been registered with the Office.
`
`Registered, TheregistrationdateisisS usedtodeterminewhen post-registration maintenancedocumentsaareedue.
`
`Oct. 26, 2021
`
`Publication Date:
`
`Mar. 16, 2021
`
`Notice of Allowance Date: May 11, 2021
`
`Mark Information
`
`Mark Literal Elements:
`
`BACKWOODS
`
`
`
`Standard Character Claim:
`
`Mark Drawing Type:
`
`Description of Mark:
`
`Design Search Code{s):
`
`
`No
`3-AN ILLUSTRATIONDRAWINGWHICHINCLUDES WORD(SLETTER(S)NUMBER(S)
`
`Themarkconsists ofthe word "BACKWOODS"ina siyizedfontsurrounded by aborder.
`26.13,o7- Quadrilateralswith a decorative border, includingscalloped,ruffedand zigzagedges.
`
`Related Properties Information
`1590958
`
`International Registration
`Number:
`
`A0106737/1590958
`
`International Application
`(s) ‘Registration(s) Based on
`this Property:
`
`Goodsand Services
`
`
`
`| Note:
`: The following symbols indicate that the registrant/owner has amended the goods/services:
`+ Brackets {..] indicate deleted goods/services;
`« Double parenthesis ((..}) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`+ Asterisks *..* identify additional (new) wording in the goods/services.
`For:
`International Class{es):
`Class Status:
`
`
`U.S Class(es}: 002, 008. 009, 017
`
`Cigarillos: Cigars
`034- Primary|Cass
`ACTIVE
`tifa).
`4981
`
`Basis:
`
`First Use:
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Use in Commerce: 1981
`
`Currently Use: Yes
`
`https://tsdr.uspto.gov/
`
`5/18/2022
`
`

`

`Filed {TU: Yes
`Filed 44D: No
`Filed 44E: No
`wiled 468:No
`siled No Basie: No
`
`Stee
`x
`sts ates
`
`wn nit ase
`weit wit tae
`
`ce ce
`
`Currently ITU: No
`:
`Currently 44E: No
`Currently 66A: Noo” SO
`currently No Basis: a cect paini eee mate
`asia ee
`
`.
`
`Current Owner(s) Information
`
`Owner Name: Max Rohr, Inc.
`Owner Address: 103 Foulk Road, Suite 253°
`Wilmington, DELAWAREEUNITED STATES 19803
`Legal Entity Type: CORPORATION —
`
`Attorney/CorrespondenceInformation
`
`Attorney of Record
`
`Attorney Name: Russell D. Dize
`Attorney Primary Email uspto@gandb.<com
`Address:
`
`State or Country Where DELAWARE
`Organized:
`
`Attorney Email Authorized: Yes
`
`Correspondent
`Correspondent Russell D. Dize
`Name/Address: GRIMES LLC
`8880 Terrene Court, #102
`Bonita Springs. FLORIDA UNITED STATES 34135
`Phone: (239)330-9000
`
`Correspondent e-mail: uspto@gandb.ccomn grimes@gandb.ccom
`Correspondent e-mail Yes
`dize@gandb.com kessler@gandb.com
`Authorized:
`
`i
`
`|i
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`|i| |i
`
`‘Proceeding Number
`Description
`ate
`vobrecams mnmeek
`lonvaso
`NOTICEOFACCEPTANCE OF STATEMENT OFUSEE:MAILED
`|Sep. 21, 2021
`“ALLOWED PRINCIPALREGISTER- souACCEPTED|
`[Sep. 18, 2021
`Serena >SATEMENT OFUorerocessnscovmeTe snstnmnnsn
`laeg 17 200
`ee aminouo
`sonennn
`ru. 20
`CASE ASSIGNED TO INTENTTO USE PARALEGAL Cee 66280
`[Aug. 47, 2021
`TEAS STATEMENTOFUSE RECEIVED ee
`jAug. 09, 2021
`NOE-MAILED -SOU REQUIREDFROMAPPLICANT
`[May 11, 2021
`
`OFFICIAL GAZETTE PUBLICATIONCONFIRMATIONEMAILEDeee
`Mar. 16,2021
`
`aan pususHcDronorrosiin
`secesmunonnesennnreseanee
`|
`
`Soe NOTIFICATION ne NOTE of rucaTionwiteD”oceanaansin ints
`ro. 2420
`Rppnoven ron mus eRncPa meas
`cupssusan ie
`Ian00 an
`eee "0 ieee
`ssn rnin
`Ie. 8,20
`|Nov. 08, 2020 ae APPLICANT/GORRESPONDENCECHANGES(NON-RESPONSIVE)ENTERED888880 .
`iNov. 06, 2020
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`nov. 06, 2020
`ATTORNEY/DOM.REP,REVOKEDANDIORAPPOINTED
`oe
`[Nov. 06, 2020
`7 TEAS REVOKE/APP/CHANGE ADDROF ATTY/DOMREPRECEIVEDOO —
`
`ov. 06, 2020
`a TEASClCHANGE OF OWNER ADDRESSRECEIVED
`Oct. 30, 2020
`NOTICE OF DESIGN SEARCH CODE E.MAILED: a
`Oct.29, 2020
`NEWAPPLICATIONOF
`TE
`
`Sep.24, 2020
`NEWAPPLICATIONENTEREDINTRAM—
`
`a
`
`se
`
`ues
`
`/
`
`
`
`
`
`eeeetnenmenmarinmnmnemanapnananneyannaaaaean
`
`https://tsdr.uspto.gov/
`
`5/18/2022
`
`

`

`TM Staff and Location information
`
`| TM Staff information - None
`' File Location
`i
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Sep. 18, 2021
`
`Assignment Abstract Of Title information - Click to Load.
`
`Proceedings- Click to Load
`
`
`
`
`
`} |} |
`
`https://tsdr.uspto.gov/
`
`Privacy - Terms
`
`5/18/2022
`
`

`

`EXHIBIT B
`
`

`

`
`
`Processing Wait Times: Please note that due to an extraordinary surge in applications, processing times are longer than usual. Seecurrenttrademark
`
`
`
`processingwaittimesfor more information.
`
`
` For assistance with TSDR, email teas@uspto.gov and include your serial number, the document you are looking for, and a screenshot of any error
`messages you have received.
`
`
`
`
`
`STATUS MAINTENANCEBacktoSearch|DOCUMENTS Print
`Generated on: This page was generated by TSDR on 2022-05-18 14:53:14 EDT
`Mark: BACKWOODS
`
`
`
`
`US Serial Number: 86328424
`
`US Registration Number: 4923532
`Register: Principal
`
`Mark Type: Trademark
`TM5 CommonStatus
`Descriptor:
`
`©
`
`Application Filing Date: Jul. 03, 2014
`
`Registration Date: Mar. 22, 2016
`
`LIVE/REGISTRATION/Issued and Active
`
`ThetrademarkapplicationhasbeenregisteredwiththeOffice.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`Status Date: Mar. 22. 2016
`
`Publication Date: May 19, 2015
`
`Notice of Allowance Date: Jul. 14, 2015
`
`Mark Information
`
`Mark Literal Elements: BACKWOODS
`
`Standard Character Claim: No
`
`Mark Drawing Type: 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)’ NUMBER(S)INSTYLIZED FORM
`
`Description of Mark: The mark consists of the word "BACKWOODS'"in red letters in a stylized font surrounded by a black border. The white backgroundis not claimed
`as a feature of the mark.
`
`Color Drawing: Yes
`
`Color(s) Claimed: The color(s) red and biack is/are claimed as a feature of the mark.
`
`Related Properties Information
`
`International Registration 1218845
`Number:
`
`International Application A0044309/1218845
`(s) /Registration(s) Based on
`this Property:
`
`Claimed Ownership of US 1164008, 3268658
`Registrations:
`
`Goods and Services
`
`Note;
`Thefollowing symbols indicate that the registrant/owner has amended the goods/services:
`* Brackets[..] indicate deleted goods/services;
`* Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`+ Asterisks *..* identify additional (new) wording in the goods/services.
`For: cigarettes, cigarillos, cigars
`
`international Class(es): 034 - Primary Class
`Class Status: ACTIVE
`
`Basis: 1(a)
`First Use: 1981
`
`U.S Class(es): 002, 008, 009, 017
`
`Use in Commerce: 1981
`
`https://tsdr.uspto.gov/
`
`5/18/2022
`
`

`

`
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`Filed No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Max Rohr,Inc.
`
`Owner Address: 103 Foulk Road, Suite 253
`Wilmington, DELAWARE UNITED STATES 19803
`
`Legal Entity Type: CORPORATION
`
`Attorney/CorrespondenceInformation
`
`Attorney of Record
`Attorney Name: Russell D. Dize
`
`Attorney Primary Email uspto@gandb.com
`Address:
`
`Correspondent
`Correspondent Russell D. Dize
`Name/Address: GRIMES LLC
`8890 Terrene Court, #102
`Bonita Springs, FLORIDA UNITED STATES 34135
`(239) 330-9000
`
`Phone:
`
`Correspondent e-mail: uspto@gandb.com