IN the UNITED STATES PATENT and TRADEMARK OFFICE BEFORE the TRADEMARK TRIAL and APPEAL BOARD Notice of Opposition

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1045352 Filing date: 03/27/2020

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 ITG Cigars Inc. Granted to Date 03/29/2020 of previous extension Address 5900 NORTH ANDREWS AVENUE FORT LAUDERDALE, FL 33309 UNITED STATES Party who filed ALTADIS U.S.A. INC. Extension of time to oppose Relationship to Effective February 3, 2020, Altadis U.S.A. Inc. changed its corporate name to party who filed ITG Cigars Inc. ITG Cigars Inc. is therefore the successor-in-interest to, and is in Extension of time privity with, Altadis U.S.A. Inc. to oppose

Attorney informa- CHARLES W. GRIMES, RUSSELL D. DIZE tion GRIMES LLC 3501 BONITA BAY BLVD. BONITA SPRINGS, FL 34134 UNITED STATES [email protected], [email protected] 239-330-9000

Applicant Information

Application No 88118839 Publication date 10/01/2019 Opposition Filing 03/27/2020 Opposition Peri- 03/29/2020 Date od Ends Applicant Dahl, Micheline 4121 Mildred Ave. Unit D Los Angeles, CA 90066 UNITED STATES Goods/Services Affected by Opposition

Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Hoodies Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Dilution by tarnishment Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition

U.S. Registration 4923532 Application Date 07/03/2014 No. Registration Date 03/22/2016 Foreign Priority NONE Date Word Mark BACKWOODS Design Mark

Description of The mark consists of the word "BACKWOODS" in red letters in a stylized font Mark surrounded by a black border. The white background is not claimed as a feature of the mark. Goods/Services Class 034. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00 cigarettes, cigarillos, cigars

U.S. Registration 4928698 Application Date 12/23/2014 No. Registration Date 03/29/2016 Foreign Priority NONE Date Word Mark BACKWOODS Design Mark

U.S. Registration 4928699 Application Date 12/23/2014 No. Registration Date 03/29/2016 Foreign Priority NONE Date Word Mark BACKWOODS Design Mark Description of The mark consists of the stylized and outlined word "BACKWOODS" appearing Mark at the top of a honeycomb patterned background. Goods/Services Class 034. First use: First Use: 2003/06/23 First Use In Commerce: 2003/06/23 cigarillos, cigars

U.S. Registration 4918877 Application Date 07/03/2014 No. Registration Date 03/15/2016 Foreign Priority NONE Date Word Mark BACKWOODS Design Mark

Description of The mark consists of the word "BACKWOODS" in a stylized font surrounded by Mark a border on a honeycomb background design. Goods/Services Class 034. First use: First Use: 2003/06/23 First Use In Commerce: 2003/06/23 Cigarillos, cigars

U.S. Registration 4923533 Application Date 07/03/2014 No. Registration Date 03/22/2016 Foreign Priority NONE Date Word Mark BACKWOODS Design Mark

Description of The mark consists of the stylized word "BACKWOODS" surrounded by a border Mark on a burlap background design. Goods/Services Class 034. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00 Cigarillos, cigars

U.S. Registration 4918876 Application Date 07/03/2014 No. Registration Date 03/15/2016 Foreign Priority NONE Date Word Mark BACKWOODS WILD 'N MILD CIGARS Design Mark

Description of The mark consists of the stylized wording "BACKWOODS WILD 'N MILD CI- Mark GARS" on a burlap background design. Goods/Services Class 034. First use: First Use: 1981/00/00 First Use In Commerce: 1981/00/00 Cigarillos, cigars

U.S. Registration 4933398 Application Date 10/22/2014 No. Registration Date 04/05/2016 Foreign Priority NONE Date Word Mark BACKWOODS WILD 'N MILD CIGARS ALL NATURAL TOBACCO 5 CIGARS Design Mark

Description of The mark consists of the stylized and outlined word "BACKWOODS" appearing Mark 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. Goods/Services Class 034. First use: First Use: 2010/08/16 First Use In Commerce: 2010/08/16 cigarillos, cigars

U.S. Registration 1164008 Application Date 05/17/1979 No. Registration Date 08/04/1981 Foreign Priority NONE Date Word Mark BACKWOODS Design Mark Description of NONE Mark Goods/Services Class 034. First use: First Use: 1979/05/02 First Use In Commerce: 1979/05/02 CIGARS

U.S. Registration 3268658 Application Date 09/16/1997 No. Registration Date 07/24/2007 Foreign Priority NONE Date Word Mark BACKWOODS Design Mark Description of NONE Mark Goods/Services Class 014. First use: First Use: 2006/05/01 First Use In Commerce: 2006/05/01 ashtrays, cigar cases, [ cigarette cases, ] tobacco cases, [ cigarette holders]and cigarette lighters of precious metals Class 034. First use: First Use: 2006/05/01 First Use In Commerce: 2006/05/01 tobacco pouches; cigar [ and cigarette ] cases not of precious metal

Attachments 86328424#TMSN.png( bytes ) 86489218#TMSN.png( bytes ) 86489260#TMSN.png( bytes ) 86328506#TMSN.png( bytes ) 86328668#TMSN.png( bytes ) 86328479#TMSN.png( bytes ) 86430948#TMSN.png( bytes ) Notice of Opposition re TRAPWOODS 3-27-20.pdf(122875 bytes ) Exhibit A.pdf(1186186 bytes ) Exhibit B.pdf(291087 bytes ) Exhibit C.pdf(285679 bytes ) Exhibit D.pdf(305572 bytes ) Exhibit E.pdf(285326 bytes ) Exhibit F.pdf(300520 bytes ) Exhibit G.pdf(290665 bytes ) Exhibit H.pdf(254218 bytes ) Exhibit I.pdf(384864 bytes )

Signature /Russell D. Dize/ Name Russell D. Dize Date 03/27/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application Serial No. 88/118,839 Published in the Official Gazette on October 1, 2019 ------X ITG Cigars Inc., successor-in-interest to : Altadis U.S.A. Inc., : : Opposer, : : v. : Opposition No.: : Micheline Dahl DBA Trapwoods, : : : Applicant. : ------X

NOTICE OF OPPOSITION

ITG Cigars Inc., successor-in-interest to Altadis U.S.A. Inc., believes that it will be damaged by registration of the mark shown in Application Serial No. 88/118,839 and hereby opposes same. The grounds for the opposition are as follows:

COUNT I

1. Altadis U.S.A. Inc. previously filed requests for extension of time to oppose

Application Serial No. 88/118,839. Effective February 3, 2020, Altadis U.S.A. Inc. changed its corporate name to ITG Cigars Inc. (“ITG”). ITG is therefore the successor-in-interest to, and is in privity with, Altadis U.S.A. Inc.

2. ITG is a corporation organized and existing under the laws of the State of

Delaware, having its principal place of business at 5900 North Andrews Avenue, Fort

Lauderdale, Florida 33309.

3. ITG is a major United States manufacturer and seller of cigars, tobacco, tobacco related products and smoker’s articles. 4. Max Rohr, Inc. (“Rohr”) is a wholly owned subsidiary of ITG.

5. Rohr is the owner of the BACKWOODS (Stylized) trademark and U.S.

Trademark Registration No. 4,923,532 for “cigarillos, cigars” in International Class 34:

(hereinafter, the “BACKWOODS (Stylized) Trademark”). 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.

6. 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. 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. 4,928,698;

(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

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. 4,928,699;

(iii) The BACKWOODS and Design trademark and U.S. Trademark

Registration No. 4,918,877 for “cigarillos, cigars” in International Class 34. Attached as Exhibit

2 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. 4,918,877;

(iv) The BACKWOODS and Design trademark and U.S. Trademark

Registration No. 4,923,533 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. 4,923,533;

(v) 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 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. 4,918,876;

(vi) 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;

(vii) The BACKWOODS trademark and U.S. Trademark Registration No.

1,164,008 for “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. 1,164,008; and

(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 I is a true and correct printout from the U.S. Patent

3 and Trademark Office’s TSDR database showing the current status and title of Registration No.

3,268,658;

The trademarks set forth in paragraphs 5 and 6 above are hereinafter referred to collectively as the “BACKWOODS Trademarks.”

7. ITG is exclusively licensed to use the BACKWOODS Trademarks and 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’s rights to the BACKWOODS Trademarks are derived from its predecessors-in-interest that ultimately became ITG.

10. From their inception, 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 inception, the BACKWOODS Trademarks have been used only in connection with the finest 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 of BACKWOODS merchandise and in selective licensing of the BACKWOODS Trademarks.

4 14. Through long-term use and controlled marketing, the BACKWOODS

Trademarks have become highly distinctive and strongly associated in the United States with cigars of the highest quality 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 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 high quality cigars emanating from a single source;

(c) the BACKWOODS Trademarks have built up secondary meaning and extensive goodwill; and (d) the BACKWOODS Trademarks have become famous.

16. Micheline Dahl DBA Trapwoods (“Applicant”) filed U.S. Trademark Application

Serial No. 88/118,839 for “TRAPWOODS and Design” as a mark for “Hoodies" International

Class 25:

(“Applicant’s Mark”).

17. Applicant’s Mark is confusingly similar in appearance, sound, meaning and commercial impression to the federally registered BACKWOODS Trademarks:

5 18. The similarities between the parties’ marks in terms of visual appearance, spelling, pronunciation and meaning are substantial, to wit:

(a) In each case, the color scheme of the parties’ respective marks is

exactly the same, namely, red, black and white;

(b) In each case, the word portion of the parties’ respective marks is

displayed in the color red;

surrounded by the color black (i.e., a black outline that follows the

contours of the letters in “BACKWOODS”, and a black

background surrounding “TRAPWOODS”);

(d) In each case, the color white appears in the parties’ respective

marks;

(e) In each case, the word portion of the parties’ respective marks is

displayed in capital letters;

(f) Applicant’s Mark utilizes a similar type font and style as

Opposer’s mark. For example, the letters “W”, “O”, “D” and “S”

in the parties’ respective marks are highly similar in type font and

style, to wit:

(i) the letter “O” in “TRAPWOODS” is displayed in an

elongated style, similar to the manner in which the letter

“O” in “BACKWOODS” is displayed in an elongated style;

(ii) the “tails” of the letters “D” and “S” in “TRAPWOODS”

are displayed with “pointed” tips, similar to the manner in

6 which the “tails” of the letters “D” and “S” in

“BACKWOODS” are displayed with “pointed” tips;

(iii) the manner in which the first letter “T” in “TRAPWOODS”

is displayed in an enlarged size is exactly the same as the

manner in which the first letter “B” in “BACKWOODS” is

displayed in an enlarged size;

(g) The parties’ marks each comprise two syllables;

(h) The first syllable of the parties’ respective marks each begins with

a consonant (i.e., the letter “B” in “BACKWOODS” and the letter

“T” in “TRAPWOODS”);

(i) The first syllable of the parties’ respective marks each contains the

“Short A” sound (e.g., as in “Apple”);

(j) The first syllable of the parties’ respective marks each ends with a

hard consonant (i.e., the letter “K” in “BACKWOODS” and the

letter “P” in “TRAPWOODS”);

(k) The second syllable of the parties’ respective marks each consists

of the same word segment, i.e., “WOODS”;

(l) The parties’ marks are each pronounced with an emphasis on the

first syllable, starting with the hard “B” or “T” sound, followed by

the same “Short A” sound, and ending with the hard “K” or “P”

sound, followed by the exact same pronunciation of the second

“WOODS” syllable, to wit:

“B[A]CK-WOODS” and “TR[A]P-WOODS”;

7 (m) While not emphasized in pronunciation, the overall meaning

conveyed by each of the parties’ marks is driven by the second

syllable, i.e., each of the two marks brings to mind images of

“WOODS”; and

(n) The cross bar of the “T” in Applicant’s Mark is the image of a

cigar with smoke rising therefrom, which when combined with the

other elements set forth above, draws an association with

Opposer’s BACKWOODS cigars.

19. Applicant’s goods (i.e., clothing) are related to the goods utilized in connection with the BACKWOODS Trademarks and such goods would travel and/or be promoted through the same channels of trade for sale to, and use by, the same class of purchasers. Therefore, it is highly likely that distributors, retailers and consumers will assume that Applicant’s

“TRAPWOODS and Design” goods are associated with the BACKWOODS brand.

20. Opposer’s rights in the BACKWOODS Trademarks pre-date any rights Applicant may claim in Applicant’s Mark.

21. Upon information and belief, Applicant’s adoption of elements of the distinctive

BACKWOODS (Stylized) Trademark is an attempt by Applicant to trade on the goodwill associated with the famous BACKWOODS Trademarks. This is highlighted by Applicant’s use of a representation of a smoking cigar in its mark which directly associates Applicant’s brand with smoking articles generally, and, it is submitted, Opposer’s famous BACKWOODS

Trademarks.

22. Applicant’s use of Applicant’s Mark is likely to cause confusion, mistake or deception as to the source of origin of Applicant’s goods in that the public, the trade and others

8 are likely to believe that Applicant’s products 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

23. Opposer repeats and realleges the allegations set forth in paragraphs 1 through 22 as though fully set forth herein.

24. Opposer’s BACKWOODS Trademarks are distinctive and famous and had become famous prior to the acquisition of any rights Applicant may claim in Applicant’s Mark.

25. Use of Applicant’s Mark by Applicant will cause dilution of the distinctive quality of Opposer’s famous BACKWOODS Trademarks.

26. 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 rights in its distinctive and famous BACKWOODS Trademarks.

WHEREFORE, Opposer respectfully requests that this Opposition be sustained, and that

Applicant’s U.S. Application Serial No. 88/118,839 be refused in all respects.

Dated: March 27, 2020

Respectfully submitted,

/Russell D. Dize/ Charles W. Grimes Russell D. Dize GRIMES LLC 3501 Bonita Bay Blvd. Bonita Springs, Florida 34134 Telephone No.: (239) 330-9000

Attorneys for Opposer

9 CERTIFICATE OF SERVICE

The undersigned hereby certifies that a copy of the foregoing Notice of Opposition was served on the Applicant on the date indicated below by depositing the same with U.S. Mail, First

Class, postage prepaid, to Applicant’s correspondence address on file with the U.S. PTO:

Micheline Dahl DBA Trapwoods 4121 Mildred Ave., Unit D Los Angeles, CA 90066 and further 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: March 27, 2020

/Russell D. Dize/ Russell D. Dize