Gran Habano v Gran Puro PC

8/14/2019 Gran Habano v Gran Puro PC

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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA306410

Filing date: 09/16/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Petition for Cancellation

Notice is hereby given that the following party requests to cancel indicated registration.

Petitioner Information

Name Santa Cruz Tobacco Co., Inc.

Entity Corporation Citizenship Florida

Address 3261 NW 82nd AvenueDoral, FL 33122UNITED STATES

Correspondenceinformation

Jesus Sanchelima, Esq.Counsel for PetitionerSanchelima and Associates P.A.235 S.W. Le Jeune RoadMiami, FL 33134UNITED [email protected] Phone:305-447-1617

Registration Subject to Cancellation

Registration No 3066902 Registration date 03/07/2006

Registrant General Cigar Co., Inc.7300 Beaufont Springs DriveRichmond, VA 23225UNITED STATES

Goods/Services Subject to Cancellation

Class 034. First Use: 2003/07/06 First Use In Commerce: 2003/07/06All goods and services in the class are cancelled, namely: Cigars

Grounds for Cancellation

Torres v. Cantine Torresella S.r.l.Fraud 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)

Abandonment Trademark Act section 14

Priority and likelihood of confusion Trademark Act section 2(d)

Mark Cited by Petitioner as Basis for Cancellation

U.S. ApplicationNo.

77129912 Application Date 03/13/2007

Registration Date NONE Foreign PriorityDate

NONE

Word Mark GRAN HABANO
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Design Mark

Description ofMark

NONE

Goods/Services Class 034. First use: First Use: 1997/07/28 First Use In Commerce: 1997/07/28

cigars made from cuban seed tobacco

Attachments 77129912#TMSN.jpeg ( 1 page )( bytes )090916v2PetitionCancel .pdf ( 3 pages )(75848 bytes )

Certificate of Service

The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their addressrecord by First Class Mail on this date.

Signature /Jesus Sanchelima/

Name Jesus Sanchelima, Esq.

Date 09/16/2009


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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Registration No. 3,066,902

Registration date: March 7, 2006

Supplemental Register Date: May 9, 2003For the Mark: GRAN PURO

SANTA CRUZ TOBACCO CO., INC.

Petitioner,

v. Cancellation No.

GENERAL CIGAR CO.,INC.

Registrant.

________________________________________)

PETITION FOR CANCELLATION

Santa Cruz Tobacco Co., Inc. (Petitioner) a corporation of Florida, having its principal place of

business at 3261 N.W. 82 Avenue, Miami, Florida 33122, believes that it is, and will be, damaged by

the above- identified registration of the mark and hereby petitions to cancel the same.

As grounds for cancellation, it alleges that:

1. Registrant filed its application for the mark GRAN PURO on May 9, 2003.Registrant alleged first use in commerce as early asJuly 6, 2003.

2. Registrants mark was registered on March 7, 2006.

3. Petitioner has superior rights to the mark based on its prior continuous use incommerce of the mark GRAN HABANO for cigars.

4. Petitioner, has been using the mark GRAN HABANO since, at least as early as July28, 1997, and in commerce since at least as early as July 28, 1997 to this date.


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5. Registrant's above-identified mark so resembles Petitioner's mark as to be likely,when used in connection with Registrant's goods cited in its registration, to cause

confusion, or to cause mistake, or to deceive, as to the source or sponsorship of the

goods in question.

7. Petitioner has superior rights to the markGRAN HABANO as Respondentsdate of first use is subsequent to Petitioners date of first use of the mark in

commerce.

8. Registrant has not used the mark GRAN PURO or GRAN HABANO inFlorida.

9.

Upon and information and belief, Registrant has abandoned the mark setforth in Reg. No. 3,066,902.

10.For the aforesaid reasons, Petitioner is being damaged by the registration ofthe mark identified above.

11.Upon information and belief on or about May 9, 2003, Registrant filed adeclaration under 37 C.F.R. 2.76, and 15 U.S.C., Section 1051 stating that

he/she believes applicant to be entitled to such mark in commerce; to the

best of his/her knowledge and belief no other person, firm, corporation, or

association has the right to use the mark in commerce, either in the identical

form thereof or in such near resemblance thereto as to be likely, when used

on or in connection with the goods/services of such other person, to cause

confusion, or to cause mistake, or to deceive; and that all statements made of

his/her own knowledge are true; and that all statements made on

information and belief are believed to be true.

12.Registrant had prior knowledge that another corporation to wit, Santa Cruz TobaccoCo., Inc.., had the right to use the mark in commerce with the identical

goods/services.

13.Upon information and belief, Registrants sworn statements referenced inRegistrants filed declaration under 37 C.F.R. 2.76, and 15 U.S.C., Section 1051


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are intentional, willful, and additionally, Registrants registration was fraudulently

procured.

14.For the aforesaid reasons, Petitioner is being damaged by the registration of the markidentified above.

WHEREFORE, Petitioner prays that said Registration No. 3,066,902 be cancelled.

Attorneys for Petitioner:

_________________________

Jesus Sanchelima, Esq.

Sanchelima & Associates, P.A.235 S.W. Le Jeune Rd.,

Miami, FL 33134-1762

Telephone: (305) 447-1617

Facsimile: (305) 445-8484

Gran Habano v Gran Puro PC

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