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

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ESTTA Tracking number: ESTTA286822
Filing date: 05/29/2009
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 Patron Spirits International AG
Granted to Date 05/30/2009
of previous
extension
Address Spitalstrasse 5
Schaffhausen, 8200
SWITZERLAND
Party who filed
Extension of time Patrón Spirits International AG
to oppose
Relationship to Opposer's name does not differ from that which was used to previously filed the
party who filed request for extension of time to oppose. Opposer's name was, and is, Patrón
Extension of time Spirits International AG. However, upon entering its name into the appropriate
to oppose filed in the automated form, Opposer received the following error message:
"Inappropriate value in a field 'Name'. Only values with US-ASCII characters
may be accepted." It appears that the automated form rejected Opposer's name
because of the accent on the letter "o" in the word "Patrón." In order for the
form accept its submission, Opposer had to omit the accent from the "o" in the
term "Patrón", which omission accounts for the apparent difference in names.

Attorney Jessica C. Bromall

information Jeffer, Mangels, Butler & Marmaro LLP
1900 Avenue of the Stars, Seventh Floor
Los Angeles, CA 90067
UNITED STATES
trademarkdocket@jmbm.com

Applicant Information
Application No 77295772 Publication date 03/31/2009
Opposition Filing 05/29/2009 Opposition 05/30/2009
Date Period Ends
Applicant Piloto Cigars, Inc.
1575 Southwest 1st Street
Miami, FL 33135
UNITED STATES

Goods/Services Affected by Opposition

Class 030.
All goods and services in the class are opposed, namely: Coffee

Applicant Information
 Application No 77295773 Publication date 03/31/2009
Opposition Filing 05/29/2009 Opposition
Date Period Ends
Applicant Piloto Cigars, Inc.
1575 Southwest 1st Street
Miami, FL 33135
UNITED STATES

Goods/Services Affected by Opposition

Class 033.
All goods and services in the class are opposed, namely: Rum

Grounds for Opposition

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

Marks Cited by Opposer as Basis for Opposition

U.S. Registration 1809473 Application Date 07/28/1992
No.
Registration Date 12/07/1993 Foreign Priority NONE
Date
Word Mark PATRON
Design Mark
Description of NONE
Mark
Goods/Services Class 033. First use: First Use: 1990/08/00 First Use In Commerce: 1990/08/00
tequila

U.S. Registration 3469828 Application Date 05/09/2006

No.
Registration Date 07/15/2008 Foreign Priority NONE
Date
Word Mark PATRON
Design Mark

Description of NONE
Mark
Goods/Services Class 030. First use: First Use: 2007/09/28 First Use In Commerce: 2007/10/04
preparations made from flour, namely, cakes sold in retail channels of trade

U.S. Registration 1950491 Application Date 08/10/1994

No.
 Registration Date 01/23/1996 Foreign Priority NONE
Date
Word Mark PATRON XO CAFE
Design Mark

Description of NONE
Mark
Goods/Services Class 033. First use: First Use: 1994/05/01 First Use In Commerce: 1994/05/01
coffee liqueur with tequila

U.S. Application 78879559 Application Date 05/09/2006

No.
Registration Date NONE Foreign Priority NONE
Date
Word Mark PATRON
Design Mark

Description of NONE
Mark
Goods/Services Class 030. First use:
pastries; confectionery, namely candy, chocolate candies; sauces, namely
chocolate dessert sauces; coffee

Attachments 78980243#TMSN.jpeg ( 1 page )( bytes )

74559311#TMSN.gif ( 1 page )( bytes )
78879559#TMSN.jpeg ( 1 page )( bytes )
Notice of Opposition.pdf ( 5 pages )(12794 bytes )

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

Signature /jessica c. bromall/

Name Jessica C. Bromall
Date 05/29/2009
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

PATRÓN SPIRITS INTERNATIONAL AG, Opposition No.: ___________________

Opposer, Application Serial No.: 77/295,772
v. MARK: PADRÓN

PILOTO CIGARS, INC., Application Serial No.: 77/295,773

Mark: PADRÓN
Applicant.
Published for Opposition: March 31, 2009

Atty. Ref. No.: 57062-0130

Commissioner for Trademarks

P.O. Box 1451
Alexandria, Virginia 22313-1451

NOTICE OF OPPOSITION

Opposer Patrón Spirits International AG, a Swiss company ("Opposer"), having the

address of Spitalstrasse 5, 8200 Schaffhausen, Switzerland, believes that it will be damaged by

the registration on the Principal Register of PADRÓN in connection with coffee in Int. Cl. 30

and rum in Int. Cl. 33. The mark PADRÓN is the subject of federal trademark application Serial

Nos. 77/295,772 and 77/295,773, allegedly owned by Piloto Cigars, Inc. ("Applicant"), and

Opposer hereby opposes the registrations thereof.

As grounds for this Opposition, it is alleged that:

1. Opposer has obtained the necessary extension of time in which to file this Notice

of Opposition.
®
2. Opposer is the source of the well known PATRON brand of premium tequila.

Opposer has enjoyed tremendous success in selling, either directly or through its licensees,

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 ®
PATRON tequila and related products, including coffee flavored liqueur and cakes, throughout
®
the United States. Opposer has continuously sold its successful PATRON tequila and related

products in the United States since at least as early as August 1990. As a result, Opposer has

common law rights in the PATRON trademark.

3. In addition, Opposer owns several registrations for its PATRON mark. Opposer

is the owner of record of U.S. Reg. No. 1,809,473, issued on December 7, 1993 for the mark

PATRON, as well as the business and goodwill connected therewith. The mark PATRON has

been used in commerce in connection with “tequila” in Int. Cl. 33, as identified in

aforementioned registration. Opposer’s registration is unrevoked and uncancelled.

4. Opposer is also the owner of record of U.S. Reg. No. 3,469,828, issued on July

15, 2008, for the mark PATRON, as well as the business and goodwill connection therewith.

The mark PATRON has been used in commerce in connection with “preparations made from

flour, namely, cakes sold in retail channels of trade” in Int. Cl. 30, as identified in the

aforementioned registration.

5. Opposer is also the owner of record of U.S. Reg. No.1,950,491, issued on January

23, 1996, for the mark PATRON XO CAFÉ, as well as the business and goodwill connected

therewith. The mark PATRON XO CAFÉ has been used in commerce in connection with

“coffee liqueur with tequila” in Int. Cl., as identified in the aforementioned registration.

Opposer’s registration is unrevoked and uncancelled.

6. Opposer is the owner of record of U.S. Application Serial No. 78/879,559, filed

on May 9, 2006, for the mark PATRON for use in connection with “pastries; confectionery,

namely candy, chocolate candies; sauces, namely chocolate dessert sauces; coffee” in Int. Cl. 30.

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 7. On information and belief, Applicant is a Florida corporation having its principal

place of business at 1575 Southwest 1st Street, Miami, Florida 3313.

8. On information and belief, Applicant is the owner of record of the intent-to-use

trademark application Serial No. 77/295,772 for registration of the mark PADRÓN for use in

connection with “coffee” in Int. Cl. 30.

9. On information and belief, Applicant is the owner of record of the intent-to-use

trademark application Serial No. 77/295,773, for registration of the mark PADRÓN for use in

connection with “rum” in Int. Cl. 33.

10. Since long prior to October 4, 2007, the filing date of Applicant's applications,

Opposer has widely advertised and promoted each of its marks identified above (collectively

referred to herein, as the "PATRON Marks") in connection with its goods with the result that the

PATRON Marks have become well known and associated with Opposer in the United States.

11. The mark PADRÓN, the subject of Applicant’s foregoing applications

(“Applicant’s Mark”), so resembles PATRON as to be likely, when used in connection with the

goods identified in those applications (“Applicant’s Goods”), as to cause confusion, or mistake,

or deception.

12. If Applicant is granted the registrations herein opposed, such registrations would

cause damage to Opposer.

///

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///

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 WHEREFORE, in accordance with Section 13 of the Trademark Act (15 U.S.C. § 1063),

Opposer prays that this Opposition be sustained and that application Serial No. 77/391,984 be

refused.

Respectfully submitted,

Dated: May 29, 2009 /s/ Jessica C. Bromall

Bernard R. Gans
Jessica C. Bromall
JEFFER, MANGELS, BUTLER & MARMARO LLP
1900 Avenue of the Stars, Seventh Floor
Los Angeles, CA 90067
(310) 203-8080
E-mail: trademarkdocket@jmbm.com
Attorneys for Opposer Patrón Spirits International AG

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 CERTIFICATE OF SERVICE
I hereby certify that one (1) copy of this document has been deposited with the

United States Postal Service as First Class Mail, postage affixed, in an envelope addressed to the

correspondent address of record, as follows:

Mitchell H. Stabbe
Dow Lohnew Pllc.
1200 New Hampshire Ave. NW Suite 800
Washington, DC 20036-6805

Date: May 29, 2009 ______________________________________

Joel Drake

JEFFER, MANGELS, BUTLER & MARMARO LLP

1900 Avenue of the Stars, Seventh Floor
Los Angeles, CA 90067
Phone: (310) 203-8080
Fax: (310) 203-0567
www.jmbm.com

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