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Estta1006645 10/04/2019 in the United States

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Estta1006645 10/04/2019 in the United States Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1006645 Filing date: 10/04/2019 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91239345 Party Plaintiff J.C. Newman Cigar Company Correspondence JORDAN S WEINSTEIN Address BARNES & THORNBURG LLP 1717 PENNSYLVANIA AVENUE NW, SUITE 500 WASHINGTON, DC 20006 UNITED STATES [email protected], [email protected], dbondur- [email protected], [email protected], [email protected] 202-289-1313 Submission Other Motions/Papers Filer's Name Jordan S. Weinstein Filer's email [email protected], [email protected], docketingtm- [email protected] Signature /jsw/ Date 10/04/2019 Attachments Notice of Refiling Rebuttal Testimony Declaration.pdf(10614 bytes ) Rebuttal Testimony Declaration - Andrew Newman - 1003019-signed.pdf(69622 bytes ) Rebuttal Exhibits-Newman Rebuttal Testimony Declaration.pdf(2850367 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD J.C. NEWMAN CIGAR COMPANY, ) ) Opposer, ) ) vs. ) ) Opposition No.: 91/239,345 FAIRMONT HOLDINGS, INC., ) Application No.: 87/544,265 ) Mark: GOLD CROWN Applicant. ) RE-FILING OF REBUTTAL TESTIMONY DECLARATION OF ANDREW NEWMAN Please be advised that the following is a copy of the Rebuttal Testimony Declaration of Andrew Newman, filed earlier today as Paper No. 22. The original filing lacked a Certificate of Service, and the following cures this inadvertence. Opposer apologizes for any inconvenience this may cause. Respectfully submitted, J.C. NEWMAN CIGAR COMPANY By: /jsw/ Jordan S. Weinstein Barnes & Thornburg LLP 1717 Pennsylvania Avenue, N.W. Suite 500 Washington, D.C. 20006 Phone: (202) 289-1313 Fax: (202) 289-1330 [email protected]; [email protected]; [email protected] Date: October 4, 2019 Attorneys for Opposer 1 CERTIFICATE OF SERVICE Pursuant to Trademark Rule 2.119(b)(6), I hereby certify that a true copy of the foregoing RE-FILING OF REBUTTAL TESTIMONY DECLARATION OF ANDREW NEWMAN was served on counsel for Applicant, this 4th day of October, 2019, by sending same via e-mail, Reto: Kimberly Kolback, Esquire Law Offices of Kimberly Kolback 1395 Brickell Avenue Suite 800 Miami, FL 33131 (305) 858-2627 [email protected] /jsw/ Jordan S. Weinstein 2 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD J.C. NEWMAN CIGAR COMPANY, ) ) Opposer, ) ) vs. ) ) Opposition No.: 91/239,345 FAIRMONT HOLDINGS, INC., ) Application No.: 87/544,265 ) Mark: GOLD CROWN Applicant. ) REBUTTAL TESTIMONY DECLARATION OF ANDREW NEWMAN I, Andrew Newman, declare as follows: 37. My name is Andrew Newman. I am the Vice President and General Counsel of Opposer, J.C. Newman Cigar Company. I submit this declaration as rebuttal testimony pursuant to Trademark Rule 2.116(e) and TBMP 703.01. 38. Applicant’s testimony declarant, Mr. Alan Rubin, searched the records of Applicant’s Internet retailer, Thompsoncigar.com, for the word “gold”, and attached his search results to his Testimony Declaration as Exhibit 5. Mr. Rubin claimed that there were 123 products using the word GOLD. 39. But a closer look at Mr. Rubin’s search reveals that only a few cigar makers use the word GOLD to identify cigars, and many of the products listed in Mr. Rubin’s search are not cigars. 40. Attached to my rebuttal declaration as Exhibit 24 is a chart summarizing all of the products in Mr. Rubin’s Exhibit 5 search. 41. The second column from left in my Exhibit 24 lists the manufacturer of each product in Mr. Rubin’s search. The most frequently listed names are highlighted. 1 42. Twenty-eight of the products uncovered in Mr. Rubin’s Exhibit 5 are not cigars at all, but are different products such as lighters, pipe tobacco, cutters or tumblers. 43. Seven of the products listed in Mr. Rubin’s Exhibit 5 are Applicant’s own GOLD CROWN cigars, which are the subject of this opposition proceeding. 44. Seventeen of the “gold” products in Mr. Rubin’s search are not individual products at all, but rather are samplers of various manufacturers’ products assembled into a sampler by Thompson Cigar Company. The individual cigars in these samplers appear elsewhere in Mr. Rubin’s search, so the seventeen samplers are repeat entries. 45. For example, Exhibit 25 attached hereto is a webpage from the Thompsoncigar.com website at https://www.thompsoncigar.com/p/double-down-smooth-to- medium-10-connecticut-robusto-sampler-macanudo-gold-vs-avo-classic/97832/#p-191295, detailing the cigars that are part of the “Double Down Smooth To Medium 10 Connecticut Robusto Sampler Macanudo VS AVO” found on page 14 of Mr. Rubin’s Exhibit 5 search. 46. Exhibit 25 shows that the “Double Down Smooth To Medium 10 Connecticut Robusto Sampler Macanudo VS AVO” is a ten-cigar bundle consisting of five AVO Classic New Release Robusto Connecticut cigars and five Macanudo Gold Crystal Robusto Connecticut cigars. 47. But the Macanudo Gold Label Crystal Tube Connecticut Robusto Cigar is already listed on Mr. Rubin’s Exhibit 5, at page 7. Therefore the “Double Down Smooth To Medium 10 Connecticut Robusto Sampler Macanudo VS AVO” is a repeat entry. 48. Similarly, Exhibit 26 attached hereto is a webpage from the Thompsoncigar.com website at https://www.thompsoncigar.com/p/macanudo-10-cigar-sampler/93953/#p-186988, 2 detailing the cigars that are part of the “Macanudo 10 Cigar Sampler” found on page 15 of Mr. Rubin’s Exhibit 5 search. 49. Exhibit 26 shows that the “Macanudo 10 Cigar Sampler” is a ten-cigar bundle consisting of two Macanudo Café Hyde Park cigars, two Macanudo Cru Royale Robusto Habano cigars, four Macanudo Especiale Torpedo Habano cigars, and two Macanudo Gold Crystal Connecticut cigars. 50. But the Macanudo Gold Label Crystal Tube Connecticut Robusto Cigar was already listed on Mr. Rubin’s Exhibit 5, at page 7. Therefore the “Macanudo 10 Cigar Sampler” is a repeat entry. 51. Next, Exhibit 27 attached hereto is a webpage from the Thompsoncigar.com website at https://www.thompsoncigar.com/p/the-weekend-sampler/66353/#p-139688, detailing the cigars that are part of “The Weekend Sampler” found on page 18 of Mr. Rubin’s Exhibit 5 search. 52. Exhibit 27 shows that the “Weekend Sampler” is an eighteen-cigar bundle consisting of two of each of the following cigars: Arturo Fuente Double Chateau Fuente Natural, Arturo Fuente Select Privada #1, Maduro Lonsdale, Aging Room B-T112 Vivase Habano Toro, CAO Brazilia Gol Brazilia, CAO Gold Robusto Connecticut, La Gloria Cubana Serie R No. 5 Maduro, PDR 1878, Reserva Dominicana Toro Oscura, Rocky Patel Olde World Reserve Toro Corojo, and Zino Platinum Grand Master Connecticut.cigars. 53. But the CAO Gold Robusto Connecticut cigar – the only cigar in the “Weekend Sampler” that includes the word “gold” in its name – was already listed on Mr. Rubin’s Exhibit 5, at page 11. Therefore, the “Weekend Sampler” is also a repeat entry. 3 54. Of the remaining 71 products in Mr. Rubin’s Exhibit 5, 64 (90%) come from only six brands: Rocky Patel, CAO, 5 Vegas, Colibrí, Macanudo, and Acid. 55. In sum, the attached Exhibit 24 demonstrates that only a few manufacturers use the word “gold” as part of a cigar name. 56. Similarly, Mr. Rubin made a search of the Thompsoncigar.com website for the term “Crown” and attached it to his testimony declaration as Exhibit 6. Mr. Rubin claims that there are 98 products using the word CROWN. 57. Attached to my Rebuttal declaration as Exhibit 28 is a chart summarizing all of the “crown” products on Mr. Rubin’s Exhibit 6. Once again, the column second from left in my Exhibit 25 lists the manufacturer of each product in Mr. Rubin’s search, with the most frequently listed names highlighted. 58. Rather than 98 products in Mr. Rubin’s search, I counted 102. 59. Three of the products listed in Mr. Rubin’s Exhibit 6 are Applicant’s own GOLD CROWN cigars, which are the subject of this opposition proceeding. 60. Twenty of the products listed in Mr. Rubin’s Exhibit 6 are Opposer J.C. Newman Cigar Company’s own DIAMOND CROWN products, and are the basis for this Opposition proceeding. 61. One of the products listed in Mr. Rubin’s Exhibit 6 is pipe tobacco, and is not a cigar at all. 62. Fourteen of the “crown” products that came up in Mr. Rubin’s search are not individual products at all, but rather are samplers of various manufacturers’ assembled into a sampler up by Thompson Cigar Company. The individual cigars in thirteen of these samplers already appear elsewhere in Mr. Rubin’s search, so thirteen of the samplers are repeat entries. 4 63. For example, Exhibit 29 attached hereto is a webpage from the Thompsoncigar.com website at https://www.thompsoncigar.com/p/dominican-dynamite-dozen- cigar-sampler/87658/#p-180551, detailing the cigars that are part of the “Dominican Dynamite Dozen Cigar Sampler” found on page 16 of Mr. Rubin’s Exhibit 6. 64. Exhibit 29 shows that the “Dominican Dynamite Dozen Cigar Sampler” is a twelve-cigar bundle consisting of three of each of the following cigars: Aging Room Rondo Habano, Cohiba Robusto Cameroon, Shrouded Crown Toro Claro, and Montecristo Classic Churchill. 65. But the Shrouded Crown Toro Claro Cigar was already listed on Exhibit 6, at page 7. Therefore this “Dominican Dynamite Dozen Cigar Sampler” is a repeat entry. 66. Exhibit 30 attached hereto is a webpage from the Thompsoncigar.com website at https://www.thompsoncigar.com/p/secret-stash-fifteen-sampler/90545/#p-183478, detailing the cigars that are part of the “Secret Stash Fifteen Sampler” found on page 16 of Mr.
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