Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1232926
`08/31/2022
`
`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.
`
`08/31/2022
`
`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.
`
`90525624
`
`Opposition filing
`date
`
`Applicant
`
`08/31/2022
`
`Miller, Kyle
`4531 FOSTER AVENUE
`BALTIMORE, MD 21224
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`05/03/2022
`
`Opposition period
`ends
`
`08/31/2022
`
`Class 025. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Sweaters and shirts
`
`Class 034. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Cigars for smokers; Lighters for smokers;
`Smokers merchandise, namely, cigarette rolling papers, tobacco grinders, and ashtrays
`
`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.
`
`4923532
`
`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 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.
`
`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
`
`The mark consists of the word "BACKWOODS" in a stylized font surrounded by
`a border.
`
`

`

`Goods/services
`
`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
`
`Application date
`
`09/16/1997
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BACKWOODS
`
`NONE
`
`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.
`
`4928698
`
`Register
`
`Principal
`
`Registration date
`
`03/29/2016
`
`Word mark
`
`BACKWOODS
`
`Application date
`
`12/23/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`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.
`
`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
`
`BACKWOODS
`
`Application date
`
`12/23/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`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
`
`Application date
`
`07/03/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BACKWOODS
`
`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
`
`BACKWOODS
`
`Application date
`
`07/03/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`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.
`
`6316112
`
`Register
`
`Principal
`
`Registration date
`
`04/06/2021
`
`Application date
`
`11/14/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`BACKWOODS BLACK RUSSIAN
`
`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
`
`Description of
`mark
`
`Goods/services
`
`BACKWOODS DARK LEAF
`
`NONE
`
`Class 034. First use: First Use: Aug 1, 2020 First Use In Commerce: Aug 1,
`2020
`Cigarillos; cigars
`
`

`

`Attachments
`
`86328424#TMSN.png( bytes )
`90196706#TMSN.png( bytes )
`86489218#TMSN.png( bytes )
`86489260#TMSN.png( bytes )
`86430948#TMSN.png( bytes )
`86328668#TMSN.png( bytes )
`86328479#TMSN.png( bytes )
`88933763#TMSN.png( bytes )
`Notice of Opposition re PHATWOODZ 8-31-22.pdf(733013 bytes )
`Exhibit A.pdf(115547 bytes )
`Exhibit B.pdf(94411 bytes )
`Exhibit C.pdf(103716 bytes )
`Exhibit D.pdf(132380 bytes )
`Exhibit E.pdf(116368 bytes )
`Exhibit F.pdf(116875 bytes )
`Exhibit G.pdf(122620 bytes )
`Exhibit H.pdf(112200 bytes )
`Exhibit I.pdf(113060 bytes )
`Exhibit J.pdf(119491 bytes )
`Exhibit K.pdf(107425 bytes )
`Exhibit L.pdf(93177 bytes )
`Exhibit M.pdf(104407 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Russell D. Dize/
`
`Russell D. Dize
`
`08/31/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`In the Matter of Application Serial No. 90/525,624
`Published in the Official Gazette on May 3, 2022
`---------------------------------------------------------------X
`ITG Cigars Inc.,
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`Opposer,
`
`
`:
`
`
`
`
`
`
`
`:
`
`v.
`
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`Kyle Miller,
`
`
`
`
`
`:
`
`
`
`
`
`
`
`:
`
`
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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 mark
`
`shown in Application Serial No. 90/525,624 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. 4,923,532 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. 4,923,532; and
`
`
`
`
`
`(ii)
`
`U.S. Trademark Registration No. 6,541,153 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. 6,541,153;
`
`(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 trademark and U.S. Trademark Registration No.
`
`1,164,008 for “cigars” in International Class 34. 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. 1,164,008;
`
`
`
`2
`
`

`

`
`
`(ii)
`
`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 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.
`
`3,268,658;
`
`
`
`
`
`(iii)
`
`The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,928,698 for “cigarillos, cigars” in International Class 34:
`
`
`
`Attached as Exhibit E 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;
`
`
`
`
`
`(iv) The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,928,699 for “cigarillos, cigars” in International Class 34:
`
`
`
`3
`
`

`

`
`
`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. 4,928,699;
`
`
`
`
`
`(v)
`
`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 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. 4,933,398;
`
`
`
`
`
`(vi)
`
`The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,918,877 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. 4,918,877;
`
`
`
`
`
`(vii) The BACKWOODS and Design
`
`trademark and U.S. Trademark
`
`Registration No. 4,923,533 for “Cigarillos, 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. 4,923,533;
`
`
`
`
`
`
`
`(viii) The BACKWOODS WILD ‘N MILD CIGARS and Design trademark and
`
`4
`
`

`

`U.S. Trademark Registration No. 4,918,876 for “Cigarillos, cigars” 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. 4,918,876;
`
`
`
`(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, and subsequently, by Opposer.
`
`
`
`5
`
`

`

`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.
`
`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-in-interest.
`
`12.
`
`Opposer’s BACKWOODS Trademarks are used on packaging for BACKWOODS
`
`cigars, on ancillary and promotional products, 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
`
`Trademarks are recognized by the trade and the public as quality cigars emanating from a single
`
`source; (c) the BACKWOODS Trademarks have built up secondary meaning and extensive
`
`
`
`6
`
`

`

`goodwill; and (d) the BACKWOODS Trademarks have become famous.
`
`
`
`16.
`
`In 2006, Rohr filed a Notice of Opposition (Opposition No. 91171143) against the
`
`application of NHA, Inc. (“NHA”) to register PHATWOODS for a variety of goods in
`
`International Class 34 (U.S. application serial number 78/465,681). Following the commencement
`
`of the Opposition, NHA filed an express abandonment of U.S. application serial number
`
`78/465,681. The TTAB subsequently entered an Order sustaining the Opposition and refusing
`
`registration to NHA.
`
`
`
`17.
`
`On February 11, 2021, Applicant filed U.S. application serial number 90/525,624
`
`for PHATWOODZ for “Sweaters and shirts” in International Class 25, and for “Cigars for
`
`smokers; Lighters for smokers; Smokers merchandise, namely, cigarette rolling papers, tobacco
`
`grinders, and ashtrays” in International Class 34, on an intent-to-use basis (“Applicant’s Mark”).
`
`
`
`18.
`
`In addition, Applicant commenced use of Applicant’s Mark in connection with,
`
`inter alia, the advertisement and promotion of PHATWOODZ smoking products and clothing.
`
`Applicant has displayed Applicant’s Mark in stylized capital letters with a distinctive font and
`
`style that is evocative of the BACKWOODS (Stylized) Trademark:
`
`
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`7
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`(see https://www.instagram.com/phatwoodz/?hl=en):
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`(See also https://twitter.com/phatwoodz):
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`8
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`(See also https://phatwoodz.com/):
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`19.
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`Applicant’s Mark is confusingly similar in appearance, meaning, sound and
`
`commercial impression to the BACKWOODS Trademarks.
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`20.
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`As a preliminary matter, PHATWOODZ and BACKWOODS are confusingly
`
`similar, to wit:
`
`
`
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`
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`(i)
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`the marks each contain:
`
`(a)
`(b)
`(c)
`(d)
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`two syllables;
`a first syllable with exactly four letters; and
`a second syllable with exactly five letters; and
`a second syllable that is nearly identical (i.e., “WOODZ”
`and “WOODS”);
`
`
`the marks are each pronounced in two segments, PHAT-WOODZ
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`(ii)
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`and BACK-WOODS;
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`
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`(iii)
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`the marks each contain an opening segment that begins with a
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`
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`9
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`

`

`consonant, followed by the exact same vowel, and ends with a hard
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`consonant (i.e., PHAT and BACK);
`
`(iv)
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`the predominant pronunciation feature of the first segment of each
`
`mark is the exact same “aaah” sound;
`
`(v)
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`the second segment of the marks is nearly identical and is
`
`pronounced exactly the same, i.e., WOODZ and WOODS; and
`
`
`
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`
`
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`(vi)
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`the commercial impression derived by a consumer from the marks
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`is similar because in each case focus is on the second segment or
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`syllable, namely, the term WOODZ or WOODS.
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`21.
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`In addition, it is highly likely that consumers will interpret “PHAT” as indicating
`
`that PHATWOODZ cigars are an enhanced version of BACKWOODS cigars and/or are
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`BACKWOODS cigars with extra tobacco.
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`22.
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`Furthermore, Applicant’s Mark, as actually used in commerce, is evocative of
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`Opposer’s BACKWOODS (Stylized) Trademark, as evidenced by the following comparison:
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`[remainder of page intentionally left blank]
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`10
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`M_ inbox(26,839) - fdize@gmail.co x—() Phatwoodz (@phawoodz)+ Insti x +
`
`
`
`@ instagram.com/phatwoodz/thl=en
`ex e
`*0@:
`
`
`
`Instagram,
`
`
`
`Sign Up
`
`
`
`++
`179 following
`
`Follow
`phatwoodz
`3 posts
`1,149 followers
`Phatwoodz
`Product/service
`Miami, FL 9
`www.phatwoodz.com
`
`&B POSTS
`
`@ TAGGED
`
`
`
`
`
`Meta
`
`About
`
`Blog
`
`
`Jo
`
`ip
`
`API
`
`Privacy
`
`Terms
`
`Top
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`
`
`Accounts Hashtags
`
`Locations
`
`
`Instagram Lite
`C
`
`jploading & Non-Users
`
`
`
`
`
`
`
`Sort!) * @aea eoegcCegma
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`= 6
`
`Desktop @ Creative Cloud Files” @ @ 74°F sunny A & 9:05AM
`
`
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`11
`11
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`€
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`23.
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`The word portion of the parties’ respective marks is each displayed:
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`
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`
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`(i)
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`in stylized capital letters;
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`(ii) with a similar distinctive font and style; and
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`(iii) with a color scheme that includes the colors red, white and/or black.
`
`24.
`
`Accordingly, the stylization of Applicant’s Mark, as actually used in commerce, is
`
`confusingly similar to the stylization of the BACKWOODS (Stylized) Trademark.
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`25.
`
`Applicant’s cigars and smoker’s articles are exactly the same as the products
`
`commercialized in connection with the BACKWOODS Trademarks and such products would
`
`travel and/or be promoted through the same channels of trade for sale to, and use by, the same
`
`class of purchasers. In addition, Applicant’s clothing is exactly the same as promotional clothing
`
`utilized in connection with BACKWOODS brand cigars.
`
`26.
`
`In view of the above-described similarities, it would be reasonable for consumers
`
`to believe that PHATWOODZ is a line extension of BACKWOODS brand cigars, or is associated
`
`with or authorized by BACKWOODS brand cigars.
`
`27.
`
`Opposer’s rights in the BACKWOODS Trademarks pre-date any rights Applicant
`
`may claim in Applicant’s Mark.
`
`28.
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`Upon information and belief, Applicant’s adoption of a mark that is confusingly
`
`similar in appearance, sound, meaning and commercial impression to the BACKWOODS
`
`Trademarks is an attempt by Applicant to trade on the goodwill associated with the famous and
`
`distinctive BACKWOODS Trademarks.
`
`29.
`
`In view of the foregoing, Applicant’s use of Applicant’s Mark is likely to cause
`
`confusion, mistake or deception as to the source of origin of Applicant’s products in that the
`
`public, the trade and others are likely to believe that Applicant’s products are provided by,
`
`
`
`12
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`

`

`sponsored by, approved by, licensed by, affiliated with or in some other way legitimately
`
`connected to Opposer’s BACKWOODS brand cigars.
`
`
`
`COUNT II
`
`
`
`30.
`
`Opposer repeats and realleges the allegations set forth in paragraphs 1 through 29
`
`as though fully set forth herein.
`
`
`
`31.
`
`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.
`
`
`
`32.
`
`Use of Applicant’s Mark by Applicant will cause dilution of Opposer’s distinctive
`
`and famous BACKWOODS Trademarks.
`
`
`
`33.
`
`Opposer will be damaged by the registrations sought by Applicant because such
`
`registrations would support and assist Applicant in the use of Applicant’s Mark and thereby dilute
`
`Opposer’s distinctive and famous BACKWOODS Trademarks.
`
`
`
`
`
`
`
`13
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`

`

`WHEREFORE, Opposer respectfully requests that this Opposition be sustained and that
`
`Application Serial No. 90/525,624 be refused in all respects.
`
`Dated: August 31, 2022
`
`
`Respectfully submitted,
`
`
`
`
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`
`/Russell D. Dize/
`Charles W. Grimes
`Russell D. Dize
`GRIMES LLC
`8890 Terrene Court, #102
`Bonita Springs, Florida 34135
`Telephone No.: (239) 330-9000
`
`
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`
`
`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: August 31, 2022
`
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` /Russell D. Dize/
`
`Russell D. Dize
`
`
`
`14
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`

`

`EXHIBIT A
`
`

`

`Status Search SN 4,923,532
`8/31/22, 12:16 PM
`
`
`For assistance with TSDR, email teas@uspto.gov and include yourserial number, the documentyouare looking for, and a screenshotof any error messages you have
`received.
`
`Processing Wait Times: Please note that due to an extraordinary surge in applications, processing times are longer than usual. See current trademark processing wait
`
`times for more information,
`
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on:
`
`This page was generated by TSDR on 2022-08-31 12:16:38 EDT
`Mark: BACKWOODS
`
`US Serial Number:
`
`US Registration Number:
`
`86328424
`
`4923532
`
`Register:
`
`Mark Type:
`
`Principal
`Trademark
`
`TM5 CommonStatus Descriptor:
`
`Application Filing Date:
`
`Jul. 03, 2014
`
`Registration Date: Mar, 22, 2016
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status:
`
`Status Date:
`
`Registered. Theregistration date is used to determine when post-registration maintenance documents are due.
`Mar. 22, 2016
`
`Publication Date:
`
`May 19, 2015
`
`Mark Information
`
`MarkLiteral Elements:
`
`BACKWOODS
`
`Standard Character Claim:
`
`No
`
`Notice of Allowance Date:
`
`Jul. 14, 2015
`
`Mark Drawing Type:
`
`5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(SV NUMBER(S) INSTYLIZED FORM
`
`Description of Mark:
`
`The mark consists of the word "BACKWOODS'"inredletters 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 black is/are claimed asa feature of the mark.
`
`Related Properties Information
`
`International Registration 1218845
`Number:
`
`International Application(s)
`/Registration(s) Based on this
`Property:
`
`Claimed Ownership of US
`Registrations:
`
`A0044309/1213845
`
`1164008, 3263658
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`e Brackets[..] indicate deleted goods/services:
`* Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavil of incontestability, and
`« Asterisks * .* identify additional (new) wording in the goods/services,
`For:
`cigarettes,cigarillos, cigars
`
`International Class(es):
`Class Status:
`
`034 - Primary Class
`ACTIVE
`
`Basis:
`
`First Use:
`
`1(a)
`1981
`
`Basis Information (Case Level)
`
`Filed Use:
`
`No
`
`U.S Class(es)}: 002, 008, 009, 017
`
`Use in Commerce:
`
`1981
`
`Currently Use: Yes
`
`https://tsdr.uspto.gov/#tcaseNumber=4,923,532&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`Prumacy
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`Tenth
`
`1/3
`
`

`

`8/31/22, 12:16 PM
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Status Search SN 4,923,532
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently 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 Address: uspto@gandb.com
`Correspondent
`
`Correspondent Name/Address: Russell D. Dize
`GRIMES LLC
`8890 Terrene Court, #102
`Bonila Springs, FLORIDA UNITED STATES 34135
`
`Phone:
`
`(239) 330-9000
`
`Correspondent e-mail: uspto@gandb.com grimes@gandb.com
`dize@gandb.com kessler@gandb.com
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`State or Country Where DELAWARE
`Organized:
`
`Attorney Email Authorized: Yes
`
`Correspondent e-mail Yes
`Authorized:
`
`Date
`Mar. 18, 2022
`
`Mar. 22, 2021
`
`Nov. 06, 2020
`Nov. 06, 2020
`
`Nov, 06, 2020
`Nov. 06, 2020
`Nov. 06, 2020
`Oct. 26, 2020
`
`Jun. 26, 2019
`Jun. 26, 2019
`Mar. 22, 2016
`
`Feb. 19, 2016
`Feb. 18, 2016
`Feb. 11, 2016
`Dec. 16, 2015
`Jan. 28, 2016
`Dec. 16, 2015
`
`Dec, 16, 2015
`Jul. 14, 2015
`
`May 19, 2015
`May 19, 2015
`
`Apr. 29, 2015
`Apr. 10, 2015
`Apr. 07, 2015
`Apr. 03, 2015
`Mar. 19, 2015
`Mar. 19, 2015
`
`Description
`TEAS SECTION 8 & 15 RECEIVED
`
`COURTESY REMINDER- SEC.8 (6-YR) E-MAILED
`
`APPLICANT/CORRESPONDENCE CHANGES(NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`NOTICE OF SUIT
`
`APPLICANT/CORRESPONDENCE CHANGES(NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF OWNER ADDRESSRECEIVED
`REGISTERED-PRINCIPAL REGISTER
`
`NOTICE OF ACCEPTANCE OF STATEMENTOF USE E-MAILED
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`STATEMENT OF USE PROCESSING COMPLETE
`USE AMENOMENTFILED
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`TEAS STATEMENT OF USE RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`NOA E-MAILED - SOU REQUIRED FROM APPLICANT
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`PUBLISHED FOR OPPOSITION
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCERECEIVEDIN LAW OFFICE
`
`Proceeding Number
`
`88888
`
`88888
`
`75298
`75298
`75298
`
`76568
`
`76568
`76568
`
`Byreace ® Fore
`
`https://tsdr.uspto.gov/#caseNumber=4,923,532&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
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`

`

`8/31/22, 12:16 PM
`i Mar. 16, 2015
`
`Mar. 07, 2015
`
`Oct. 22, 2014
`Oct. 21, 2014
`Oct. 14, 2014
`Jul, 09, 2014
`Jul. 07, 2014
`
`Status Search SN 4,923,532
`
`ASSIGNED TO LIE
`TEAS RESPONSETO OFFICE ACTION RECEIVED
`NON-FINAL ACTION MAILED
`
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTEREDIN TRAM
`NEW APPLICATION ENTERED IN TRAM
`
`76568
`
`90334
`90334
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Feb. 18, 2016
`
`AssignmentAbstract Of Title Information - Click to Load
`
`Proceedings- Click to Load
`
`https://tsdr.uspto.gov/#tcaseNumber=4,923,532&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`Privacy - Terms
`
`3/3
`
`

`

`EXHIBIT B
`
`

`

`Status Search SN 6,541,153
`8/31/22, 12:18 PM
`
`
`For assistance with TSDR, email teas@uspto.gov and include your serial number, the documentyouare looking for, and a screenshotof any error messages you have
`received.
`
`
`
`Processing Wait Times: Please note that due to an extraordinary surge in applications, processing times are longer than usual. See current trademark processing wait
`
`times for more information.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Generated on: This page was generated by TSDR on 2022-08-31 12:18:33 EDT
`Mark: BACKWOODS
`
`cKWO0
`
`US Serial Number: 90196706
`
`US Registration Number: 6541153
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 CommonStatus Descriptor:
`
`Application Filing Date: Sep, 21, 2020
`
`Registration Date: Oct. 26, 2021
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine whenpost-registration maintenance documentsare due,
`Status Date: Oct. 26, 2021
`
`Publication Date: Mar. 16, 2021
`
`Notice of Allowance Date: May 11. 2021
`
`Mark Information
`
`Mark Literal Elements: BACKWOODS
`
`Standard Character Claim: No
`
`Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`Description of Mark: The mark consists of the word "BACKWOODS'’in a stylized font surrounded by a border.
`
`Design Search Code(s): 26.13.07 - Quadrilaterals with a decorative border, including scalloped, ruffled and zig-zag edges
`
`Related Properties Information
`
`International Registration 1590958
`Number:
`
`International Application(s) A0106737/1590958
`{Registration(s) Based onthis
`Property:
`
`Goods and Services
`
`Note:
`The following symbols indicate thatthe registrantfowner has amended the goods/services:
`e Brackets {..] indicate deleted goods/services:
`= Double parenthesis((..)) identify any goods/services not claimed in a Section 16 affidavit of incontestability; and
`« Asterisks ‘,.” identify additional (new) wording in the goods/services.
`For: Cigarillos; Cigars
`
`International Class({es): 034 - Primary Class
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1981
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`U.S Class(es): 002, 008, 009, 017
`
`Use in Commerce: 1981
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`https://tsdr.uspto.gov/#caseNumber=6,541,1 53&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=st