Altadis U.S.A. Inc.v.Bacardi & Co. Ltd

Trademark Trial and Appeal Board

Nov 7, 2006

No. 91161729 (T.T.A.B. Nov. 7, 2006)

Oral Hearing Held: Decision mailed:
June 6, 2006 November 7, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Altadis U.S.A. Inc.
v.
Bacardi & Co. Ltd.
_____

Opposition No. 91161729 to application Serial No. 78180797
filed on November 1, 2002
_____

Charles W. Grimes and Susan M. Schlesinger of Grimes & Battersby,
LLP for Altadis U.S.A. Inc.

Janice W. Housey of Roberts, Mlotkowski & Hobbes, P.C. for
Bacardi & Co. Ltd.
______

Before Hohein, Drost and Zervas, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

Bacardi & Co. Ltd. has filed an application to register
the mark "CAZADORES" in standard character form for, inter alia,
"non-electric lighters not of precious metal, matches, [and] non-
precious metal ashtrays" in International Class 34.1
Altadis U.S.A. Inc. has opposed registration, alleging
in its notice of opposition that opposer "is a major U.S. cigar

1 Ser. No. 78180797, filed on November 1, 2002, which is based on an
allegation of a bona fide intention to use such mark in commerce.
Although the application also seeks registration of the mark for goods
in seven other classes, the opposition is directed only to the goods
in International Class 34 as set forth above. The application states
that "[t]he foreign wording in the mark translates into English as
light infantry."

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91161729
2
manufacturer that engages in the manufacture, distribution and
sale of cigars"; that "[o]pposer, as well as third parties, use
the term CAZADORES as a size designation in interstate commerce
in connection with the sale and distribution of cigars"; that
"[o]pposer's use of the CAZADORES term as well as the use by
third parties predates not only the filing of Applicant's
trademark application but also ... any use of the designation
that Applicant has made in connection with goods in International
Class 34"; that "[o]pposer's and third parties' use of the
CAZADORES term as a size designation for cigars is well known
and, as a result of Opposer's and third parties' use of the
CAZADORES term as a size designation in connection with cigars,
the term is recognized by consumers and the trade as identifying
a size of cigars"; that "[a]pplicant's products in International
Class 34 (i.e., 'lighters,' 'matches['] and 'ashtrays') are
closely related to Opposer's products and ... will travel and be
promoted through the same channels of trade for sale to, and use
by, the same class of purchasers"; that "[a]pplicant's proposed
use of the term CAZADORES in connection with goods in
International Class 34 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, sponsored by, licensed by,
affiliated with or in some other way legitimately connected to
Opposer and/or its products"; and that "[a]pplicant's proposed
registration of the term CAZADORES as a trademark for goods in
International Class 34 will interfere with Opposer's (and third
Opposition No. 91161729
3
parties') right to use the term CAZADORES as a size designation
for their cigars."
Applicant, in its answer, has denied the essential
allegations of the notice of opposition.
The record consists of the pleadings; the file of
applicant's involved application; a notice of reliance, filed by
opposer as its case-in-chief, on various printed and other
published articles and advertisements;2 and a notice of reliance,
filed by applicant as its case-in-chief, on certain third-party
registrations, published articles, advertisements and trademark
application file histories.3 Briefs have been filed and both

2 Opposer states therein that the "evidence is being offered by Opposer
to show third[-]party use and use by Opposer of the word 'cazadores'
as a descriptive term to refer to the shape and size of a cigar."
Applicant, in its brief, "objects to Opposer's Notice of Reliance on
the basis that the types of internet print-outs proffered by Opposer
are not self-authenticating and[,] therefore, not admissible under a
notice of reliance," citing Raccioppi v. Apogee Inc., 47 USPQ2d 1368
(TTAB 1998). However, as opposer correctly points out in its reply
brief, "not all of Opposer's evidence is from the Internet" alone. In
particular, opposer accurately points out that its "Exhibit C ...
consists of copies of printed advertisements," while its "[E]xhibits A
and B ... consist of electronic equivalents of articles published in a
printed publication" and its "[E]xhibit D consists of a printout of a
case from LEXIS" which also is available in printed form. Likewise,
it is clear that the portions of opposer's Exhibit E which consist of
an article and an advertisement from the website for Cigar Aficionado
magazine are additionally available in printed form. Accordingly,
inasmuch as the published sources thereof were subject to verification
by applicant, such printouts are admissible and applicant's objection
thereto is overruled. TBMP §704.08 (2d ed. rev. 2004). However,
since the remaining evidence submitted as opposer's Exhibit E consists
solely of printouts from various websites, including that of opposer,
applicant is correct that such evidence is not proper subject matter
for a notice of reliance and its objection thereto is sustained. See,
e.g., Plyboo America Inc. v. Smith & Fong Co., 1633, 1634 n.3 (TTAB
1999) [printout of website page is not proper subject matter for a
notice of reliance under Trademark Rule 2.122(e)]; Raccioppi v. Apogee
Inc., supra at 1370; and TBMP §704.08 (2d ed. rev. 2004). We hasten
to add, nonetheless, that even if such evidence were to be considered,
it would make no difference in the result.

3 Applicant states in such notice that the "evidence is being offered
by Applicant to show that 1) many cigar size, shape and vitola
Opposition No. 91161729
4
opposer and applicant were represented by counsel at the oral
hearing held in this case.
The issues to be determined are, preliminarily, whether
the notice of opposition states any claim upon which relief can
be granted and, if such were to be so, whether the evidence of
record establishes opposer's entitlement to the requested relief
by a preponderance of the evidence.
Opposer, correctly noting in its initial brief that it
has "filed its Notice of Opposition only as against Applicant's
trademark application in International Class 34," further asserts
in such brief that it "has alleged as grounds for its opposition
that Applicant's mark is merely descriptive pursuant to Section
2(e)(1) of the Lanham Act." Opposer also asserts therein that,
"[a]lternatively, ... [it] has alleged as grounds for its
opposition a likelihood of confusion pursuant to Section 2(d) of
the Lanham Act." Applicant, however, contends in its brief that
"[t]he sole issue in this proceeding is whether," as alleged in

designations are also trademarks, including trademarks used on
smokers' articles; and 2) it is common for spirits and beer companies
to use their trademarks on smokers' articles." Although the evidence
relied upon by applicant includes certain website pages, including
printouts from opposer's website, which are not proper subject matter
for a notice of reliance since there is no indication that such
evidence is merely the electronic equivalent of printed publications,
opposer has not only raised no objection thereto but, in its initial
brief, has treated the evidence as forming part of the record herein.
Specifically, opposer states that the evidence submitted by applicant
with its notice of reliance consists of "pages from the Internet,
copies of third[-]party trademark registrations and two file
histories." In view thereof, the website pages included with
applicant's notice of reliance are deemed to have been stipulated into
the record pursuant to Trademark Rule 2.123(b) for what they show on
their face. See, e.g., Plyboo America Inc. v. Smith & Fong Co.,
supra; and TBMP §704.08 (2d ed. rev. 2004). We hasten to note,
however, that even if such evidence were not considered as part of the
record, it would make no difference in the result.

Opposition No. 91161729
5
the notice of opposition, "there is a likelihood of confusion
between Opposer's use of 'cazadores' as a cigar [size]
designation and Applicant's use of CAZADORES as a trademark for
smokers' articles." Nonetheless, applicant has also briefed the
issue of whether such term is merely descriptive, although it
insists that it "does not believe that Opposer has properly pled
an opposition based upon 'mere descriptiveness' in that Opposer's
Notice of Opposition did not include any claim that Applicant's
CAZADORES [mark] was merely descriptive."
A careful reading of the notice of opposition reveals
that while opposer has sufficiently pleaded its standing, at
least with respect to a possible claim of mere descriptiveness,
it has not pleaded that the term "CAZADORES," which opposer
alleges that it and third parties have previously used as a size
designation for cigars, is merely descriptive of applicant's non-
electric lighters not of precious metal, matches and non-precious
metal ashtrays in International Class 34, nor has opposer
alternatively pleaded that applicant's use of the term
"CAZADORES" as a mark for such goods is likely to cause confusion
with any prior proprietary right by opposer in that term as a
mark for cigars.
In this regard, the predecessor to our primary
reviewing court, in vacating and remanding a decision of this
Board, stressed in Otto Roth & Co., Inc. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40, 43-44 (CCPA 1981), that
(footnotes omitted; italics in original):
One who opposes on the ground that
registration should be refused as proscribed
Opposition No. 91161729
6
by section 2(e)(1) alleges use of, or the
right to use, a descriptive term in his
business and is trying to prevent a claim of
exclusive ownership of that term, asserting a
privilege which he holds in common with all
others, including the applicant, to the free
use of the language. Any use by opposer,
whether begun prior or subsequent to
applicant's, and whether in a descriptive
context or in the manner of a mark, may be
sufficient to defeat the applicant's claim
that the term is distinctive of its goods or
has become distinctive thereof within the
meaning of section 2(f) of the Lanham Act.
.... Section 2(e)(1) is thus concerned with
the prevention of harassment, based on a
registration, under which an exclusive right
could be claimed in a term which does not
identify source. DeWalt, Inc. v. Magna Power
Tool Corp., 48 CCPA 909, 289 F.2d 656, 129
USPQ 275 (1961); Astra Pharmaceutical Inc. v.
Pharmation, S.A., 52 CCPA 1334, 345 F.2d 189,
145 USPQ 461 (1965) (Rich, J., concurring).

One who opposes registration to an
applicant under section 2(d) is attempting to
protect his individual rights, as the owner
of some means of identifying the source of
his goods, by preventing registration of a
mark so similar to that which he asserts
identifies source that concurrent use of the
two is likely to cause confusion and thus
foil the function of his means of
identification. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976); American Throwing Co. v.
Famous Bathrobe Co., 45 CCPA 737, 250 F.2d
377, 116 USPQ 156 (1957); Armour & Co. v.
Organon, ... [44 CCPA 1010, 1017, 245 F.2d
495, 500, 114 USPQ 334, 338 (1957) (Rich, J.,
concurring)]. In this situation, the opposer
must prove he has proprietary rights in the
term he relies upon to demonstrate likelihood
of confusion as to source, whether by
ownership of a registration, prior use of a
technical "trademark," prior use in
advertising, prior use as a trade name, or
whatever other type of use may have developed
a trade identity.

That the linked concepts of "damage" and
"grounds" vary with each asserted statutory
basis for unregistrability, and are wholly
different with respect to sections 2(d) and
Opposition No. 91161729
7
2(e)(1), is a point the board did not make
manifest by its opinion. The board stated
... that prior use of a term in a descriptive
sense is sufficient to successfully oppose
registration of an otherwise registrable mark
provided (1) there is a likelihood that
consumers will confuse the two and thus the
source of the goods to which they are
applied, or (2) that a registration would
frustrate the opposer's right to use the term
in a descriptive sense unhindered and free
from harassment.

Absent a requirement in the first part
of the board's test that the user of that
term demonstrate that it identifies source
and a requirement in the second part that
what applicant seeks to register is a
descriptive term (or its equivalent), the
statement is statutorily untenable. The
cases cited by the board in support of this
hybrid rule are inapposite. Parts (1) and
(2) of the above test are mutually exclusive
considerations and the misjudgment of the
board in formulating that statement was to
combine, respectively, sections 2(d) and
2(e)(1) into one measure of registrability.

It is clear that use of a term in a
descriptive sense is sufficient to impart
standing to oppose federal registration of a
descriptive "word, name, symbol, or device"
as a trademark; yet it is equally clear that
if an opposer's alleged means of trade
designation is not distinctive--does not
identify source--then there is no basis upon
which to compare such a thing with the
applicant's mark to determine whether
confusion as to source is likely. ....

Here, in light of the above, the allegations in the
notice of opposition that, in particular, "[o]pposer, as well as
third parties, use the term CAZADORES as a size designation in
interstate commerce in connection with the sale and distribution
of cigars" and that "[o]pposer's and third parties' use of the
CAZADORES term as a size designation for cigars is well known
and, as a result of Opposer's and third parties' use of the
Opposition No. 91161729
8
CAZADORES term as a size designation in connection with cigars,
the term is recognized by consumers and the trade as identifying
a size of cigars," are sufficient to allege a real interest by
opposer in using the term "CAZADORES" descriptively and, if
proven, would establish that opposer has standing to bring this
proceeding on the ground that the term is merely descriptive of
applicant's goods. See, e.g., Consolidated Foods Corp. v. Big
Red, Inc., 226 USPQ 829, 831 (TTAB 1985). Opposer, however, has
not pleaded a claim that the term "CAZADORES" is merely
descriptive of applicant's goods but has instead alleged only the
non-actionable contention that "[a]pplicant's proposed
registration of the term CAZADORES as a trademark for goods in
International Class 34 will interfere with Opposer's (and third
parties') right to use the term CAZADORES as a size designation
for their cigars." While, in the alternative, opposer has also
pleaded that "[a]pplicant's products in International Class 34
(i.e., 'lighters,' 'matches['] and 'ashtrays') are closely
related to Opposer's products and ... will travel and be promoted
through the same channels of trade for sale to, and use by, the
same class of purchasers" and that "[a]pplicant's proposed use of
the term CAZADORES in connection with goods in International
Class 34 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, sponsored by, licensed by, affiliated
with or in some other way legitimately connected to Opposer
and/or its products," such allegations fail to state a claim of
Opposition No. 91161729
9
priority of use and likelihood of confusion inasmuch as opposer
has failed to include an alternative pleading that it has prior
(i.e., equal or superior) proprietary rights in the term
"CAZADORES." Rather, as noted previously, opposer has solely
pleaded that it has the right, which it shares with third
parties, to use such term descriptively as a size designation for
cigars. See, e.g., Antillian Cigar Corp. v. Benedit Cigar Corp.,
218 USPQ 187, 188-89 (TTAB 1983). The notice of opposition
accordingly fails to state any claim upon which relief can be
granted and therefore, on this basis alone, must be dismissed.
Nonetheless, even though it is clear that applicant has
neither expressly nor implicitly consented thereto, if the
pleadings herein were to be deemed to be amended, pursuant to
Fed. R. Civ. P. 15(b), as made applicable by Trademark Rule
2.116(a), so as to set forth proper claims of both mere
descriptiveness and, in the alternative, priority of use and
likelihood of confusion, the evidence of record fails to
establish opposer's entitlement to relief on either ground by a
preponderance of the evidence.4 Turning first to the issue of
mere descriptiveness, opposer in its initial brief recites the
following as a "STATEMENT OF FACTS":
[Opposer] Altadis manufactures,
distributes and sells a wide variety of

4 While both parties have endeavored to utilize the requirement of
Trademark Rule 2.122(e) that a notice of reliance must "indicate
generally the relevance of the material being offered" as a substitute
for testimony from a witness having first-hand knowledge of the
asserted relevance of the exhibits, it is pointed out that the
evidence is admissible only for what it shows on its face and not for
the truth of the matters set forth therein. TBMP §704.08 (2d ed. rev.
2004).

Opposition No. 91161729
10
cigars including PRIMO DEL REY, H. UPMANN,
MONTECRISTO and DUTCH MASTERS cigars.
(Altadis Not. Of Rel., Exh. E). In offering
its cigars, Altadis utilizes the term
"cazadores" as well as other terms such as
"lonsdale" and "robusto" as size descriptions
for its cigars. (Id.)

The use of terms to indicate the size of
a cigar is a common practice within the cigar
industry. (App. Not. Of Rel., Exh. E).
Moreover, the terms are used consistently
throughout the cigar industry to describe
size such that the term "cazadores" is
representative of cigars that are between 6
1/16 to 6 3/8 inches in length with a ring
gauge of 43 to 45. (Id. Exhs. C, E) ....
.... Further, consumers of cigars recognize
the significance of the name designations.
.... (Altadis Not. Of Rel., Exh. B).

The use of the term "cazadores" as a
size designation for cigars slightly over six
inches in length and with an average ring
gauge of 44 has been around for decades.
(Altadis Not. Of Rel., Exh. A). In the
United States, the term has been used since
at least as early as 1921. (Id., Exh. D).
Use of the term "cazadores" continued to gain
popularity in the 1960s when Cuban cigar
manufacturers started coming to the United
States to manufacture cigars. (Id., Exh. A).

However, as applicant essentially points out in its
brief, there is no evidence which is properly of record which
serves to substantiate opposer's factual assertions, as set forth
respectively in the notice of opposition and its initial brief,
that opposer "is a major U.S. cigar manufacturer that engages in
the manufacture, distribution and sale of cigars" and that it
"manufactures, distributes and sells a wide variety of cigars."
Specifically, as previously noted herein, and aside from their
hearsay nature, the Internet excerpts from opposer's website
which form part of Exhibit E to its notice of reliance are
inadmissible since they are not self-authenticating and thus are
Opposition No. 91161729
11
not proper subject matter for a notice of reliance.5 Moreover,
as stated in TBMP §704.06(b) (2d ed. rev. 2004):
Factual statements made in a party's
brief on the case can be given no
consideration unless they are supported by
evidence properly introduced at trial.
Statements in a brief have no evidentiary
value, except to the extent that they may
serve as admissions against interest.

Nonetheless, applicant in its brief has admitted that opposer has
standing to oppose on the ground of mere descriptiveness by
conceding that (italics in original): "Here, Opposer (and
others) have used "cazadores" descriptively, as a size
designation for cigars." In light of such admission, opposer
properly notes in its initial brief that it "has standing to
oppose Applicant's Trademark Application pursuant to Section
2(e)[(1)] because Altadis uses the word 'cazadores' in its
business as a descriptive term for its good in International
Class 34," citing Remington Products, Inc. v. North American
Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir.
1990); and McCarthy on Trademarks & Unfair Competition §20:11
(4th ed. 2006) ["one who makes and sells a product that could be
described by the term applicant seeks to register has standing to
oppose"].
The fact, however, that applicant has admitted
opposer's standing does not mean that applicant has also
conceded, or that opposer has otherwise proven, that the term
"CAZADORES" is merely descriptive of applicant's goods. Contrary
to the statement in opposer's initial brief, the issue is not

5 See footnote 2.
Opposition No. 91161729
12
"whether the term 'cazadores' is merely a descriptive term
pursuant to Section 2(e)[(1)] of the Lanham Act when used in
connection with goods in International Class 34," which could
include opposer's goods--cigars; rather, the relevant goods in
International Class 34, and which opposer must prove that the
term "CAZADORES" is merely descriptive thereof, are applicant's
goods--"non-electric lighters not of precious metal, matches,
[and] non-precious metal ashtrays." Applicant, in its brief,
contends, however, that as to opposer's case-in-chief, "the
documents in Opposer's Notice of Reliance tend to indicate the
use of 'cazadores' for a cigar size and for no other purpose."
We find that the evidence which is considered to be of
record herein at best demonstrates only that the term "CAZADORES"
is a descriptive term for a cigar of a certain length and ring
size. For example, as set forth in opposer's notice of reliance
(emphasis added):
"CA: So he came in '59 and he later opened
the cigar factory El Credito. What year was
that?
Carrillo: He created it in 1968.
CA: In '68 and he started making ...
Carrillo: .... He started making fumas and
cazadores, short filter cigars in the 44- to
46-ring gauge and different lengths. ....
And that's how he started making long, Cuban-
style cigars." -- Opposer's Exhibit A--
excerpt from "An Interview with Ernesto
Perez-Carrillo," Cigar Aficionado magazine
"[p]ublished May/June 1997";6

".... I regularly smoke the Jose L. Piedra
brand that you mentioned in the 'Cigar
Insider' portion of the February 2000 issue.

6 Retrieved from http://www.cigaraficionado.com/Cigar/CA_Archives/CA_-
Show_Article/0,2322,547,00.html.

Opposition No. 91161729
13
.... I generally smoke the Cazadores size.
It's about 6 inches long with a ring gauge of
about 40." -- Opposer's Exhibit B--excerpt
from "Out of the Humidor," Cigar Aficionado
magazine "[p]ublished August/September
2000";7

"Pete Johnson, the cigar buyer for Grand
Havana Room in Beverly Hills, California, has
created his own line of cigars called
Tatuaje.
....
Tatuaje comes in six sizes: Havana
Cazadores, which measures 6 3/8 inches long
by 43 ring, Unicos (6 1/8 by 52), Especiales
(7 1/2 by 38), Noellas (5 1/8 by 42), Regios
(5 1/2 by 50) and Tainos (& 5/8 by 49).
...." -- Opposer's Exhibit E--excerpt from
"Tattooed Cigars," Cigar Aficionado magazine
website "[p]osted August 11, 2003;"8 and

"PADRÓN CIGARS INC.
Cigar: Jose L. Piedra
Made: Honduras and Nicaragua
....
Details: Three sizes: Fumas (which have a
pigtail) and Cazadores, 6 1/2 by 44; and
Expeciale, 7 1/2 by 46" -- Opposer's Exhibit
E--excerpt from "R.T.D.A. Roundup: Part
III," Cigar Aficionado magazine website
"[p]osted August 20, 2003."9

Likewise, as shown by the example below from applicant's notice
of reliance, the designation "CAZADORES" is a descriptive term
for a cigar of a certain length and ring size (emphasis added):
"Cigar Styles and Sizes
....
HAVANA SHAPES IN ALPHABETICAL ORDER
....
● Cazadores (6 3/8 x 44)
....

7 Retrieved from http://www.cigaraficionado.com/Cigar/CA_Archives/CA_-
Show_Article/0,2322,1129,00.html.

8 Printed from http://www.cigaraficionado.com/Cigar/CA_Daily_News/-
0,2342,843,00.html.

9 Printed from http://www.cigaraficionado.com/Cigar/CA_Daily_News/-
0,2342,850,00.html.

Opposition No. 91161729
14
The first dimension is the length of the
cigar in inches. The second is the ring
gauge or the cigar or the diameter of the
cigar measured in 64ths of an inch. ...." --
Applicant's Exhibit E--excerpt from "Cigar
Education" article, "[c]opyright ©1999
Orinoco Cigars International, LLC."10

Significantly, however there is no evidence of record as to
whether the term "CAZADORES" has any descriptive significance
with respect to smokers' articles such as lighters, matches and
ashtrays.
Opposer, nonetheless, asserts in its initial brief that
applicant is not entitled to registration of the term "CAZADORES"
as a mark for lighters, matches and ashtrays simply because, as a
descriptive term for cigars, "[t]he registration of the
descriptive term will interfere with Altadis' prior rights to use
the term without fear of harassment." Specifically, according to
opposer (italics in original):
If Applicant is allowed to register
CAZADORES as a mark, Applicant will be able
to interfere with the rights of Altadis and
other third party cigar manufacturers to use
the "cazadores" size designation in
connection with their cigars. Where
registration of a mark would threaten or
cause damage to the prior user of a
descriptive word, such word should not be
registered as a mark. See DeWalt, Inc. v.
Magna Power Tool Corp., 129 U.S.P.Q. 275, 281
(C.C.P.A. 1961) (sustaining opposition and
barring registration of descriptive phrase
"power shop" because the Court "agree[d] with
opposer that registration would be a threat
to it and its customers, would make
harassment possible, and would be in
derogation of opposer's established rights").

10 Printed from http://www.orinococigars.com/education/.

Opposition No. 91161729
15
Applicant, in its brief in response, properly "notes
that even if CAZADORES is descriptive for a cigar size, it is a
preposterous leap that the term should be deemed to be
descriptive for Applicant's lighters, matches and ashtrays" and
that opposer "has neither alleged nor proven that 'cazadores' is
descriptive of smokers' articles." With respect to what we view
as perhaps opposer's somewhat exaggerated fear of harassment by
applicant,11 including a loss of the right to use the term
"CAZADORES" descriptively as a cigar size indicator, if applicant
obtains the registration which it seeks, we further observe that
opposer's reliance on DeWalt, supra, is misplaced inasmuch as
such case involved a term ("POWER SHOP") which was descriptive of
each of the parties' goods (woodworking saws and multiple-purpose
power tools), which in essence functioned as the same basic
product (power woodworking saws).12 Opposer's fear of harassment,

11 Specifically, opposer further contends in its initial brief that:

Inasmuch as "cazadores" is a descriptive term for a
cigar size or type, such term should not be allowed to be
registered as a mark in International Class 34.
Registration of this mark in such fashion will harm Altadis
as well as other third parties who have a legitimate and
necessary reason for the use of such term in connection with
their respective cigar products. Altadis and others in the
cigar industry will be foreclosed from using the "cazadores"
descriptive term. They will be exposed to the possibility
that Applicant could assert its registered trademark rights
against those in the cigar industry that make descriptive
use of the "cazadores" term. Moreover, where "cazadores"
has been a descriptive term in the cigar industry in the
United States for almost one hundred years, Altadis and
other third party cigar manufacturers should not now be
precluded from use of this cigar size indicator.

12 DeWalt, Inc. v. Magna Power Tool Corp., supra at 129 USPQ 279 ("[w]e
deem the goods of the parties before us to be identical so far as
trademark law is concerned. If 'power shop' is an apt term to
describe opposer's goods, then it is just as descriptive of
applicant's goods"].

Opposition No. 91161729
16
in this instance, is misplaced since the respective goods of the
parties, namely, opposer's cigars and applicant's lighters,
matches and ashtrays, are plainly not the same products,
notwithstanding that they are obviously complementary goods in
that smoking materials and smokers' articles are typically used
together, and there is no proof whatsoever that the term
"CAZADORES," while descriptive of a size designation for cigars,
is descriptive in any manner of lighters, matches and ashtrays
for cigars or other smoking materials. Allowance of the
registration which applicant seeks thus would not empower
applicant to harass opposer and others who utilize the term
"CAZADORES" descriptively as a size designation for cigars.
Accordingly, in view of the lack of any evidence with respect to
whether the term "CAZADORES" is descriptive of smokers' articles
such as lighters, matches and ashtrays, opposer's claim of mere
descriptiveness with respect thereto fails.
Turning next to opposer's alternative claim of priority
of use and likelihood of confusion, opposer asserts in its
initial brief that:
Applicant's use of CAZADORES as a mark
in International Class 34 is likely to cause
confusion with Altadis' CAZADORES mark.
Assuming arguendo that CAZADORES qualifies as
a trademark, Altadis has prior rights in the
use of CAZADORES as a trademark in connection
with its products in International Class 34.
Inasmuch as Altadis has prior rights in
CAZADORES as a mark, Applicant should not be
allowed to register CAZADORES as a mark in
International Class 34 pursuant to Section
2(d) of the Lanham Act. ....

In particular, as to its assertion of "prior rights" in the use
of the term "CAZADORES" if such use "qualifies as a trademark,"
Opposition No. 91161729
17
opposer merely refers in its initial brief to Exhibit E of its
notice of reliance, stating simply that:
Altadis uses CAZADORES in connection with its
goods. (Altadis Not. of Rel., Exh. E).
Accordingly, Altadis has proprietary rights
in CAZADORES and a likelihood of confusion
analysis is justified.

The sole portion of such exhibit which, however, even
arguably shows use of the term "CAZADORES" by opposer consists of
Internet excerpts from opposer's website and which, aside from
their hearsay nature, are in any event not considered part of the
record herein in light of applicant's well taken objection
thereto.13 Furthermore, even if such excerpts were to be
considered, on their face they demonstrate only that, as of the
"5/25/2005" date on the printed copies thereof, opposer, "Altadis
U.S.A., Inc.," was advertising on its website "Primo del Rey
Maduro Cigars" under three different "Frontmark[s]," including
"Cazadores Maduro," the "Size" of which is listed as "44 x 6
1/16"." Therefore, even if the "Frontmark" use shown therein
were to be considered trademark use (or use analogous thereto) of
the term "CAZADORES" rather than merely as a descriptive size
designation for opposer's "Primo del Rey Maduro Cigars," the May
25, 2005 date indicated thereon is plainly subsequent to the
earliest date upon which applicant, in the absence of any
testimony or other proof that it has commenced used of its mark,
is entitled to rely in this proceeding, namely, the November 1,
2002 filing date of its involved intent-to-use application. See,
e.g., Lone Star Mfg. Co., Inc. v. Bill Beasley, Inc., 498 F.2d

13 See footnote 2.
Opposition No. 91161729
18
906, 182 USPQ 368, 369 (CCPA 1974); Columbia Steel Tank Co. v.
Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA
1960); Zirco Corp. v. American Tel. & Tel. Co., 21 USPQ2d 1542,
1544 (TTAB 1991); and Miss Universe, Inc. v. Drost, 189 USPQ 212,
213 (TTAB 1975).
In the absence, therefore, of proof that opposer has
priority of use, it cannot prevail in this proceeding
irrespective of whether contemporaneous use of the designation
"CAZADORES" as a trademark by opposer for cigars and by applicant
with respect to non-electric lighters not of precious metal,
matches, and non-precious metal ashtrays would be likely to cause
confusion as to the source or sponsorship thereof. In fact, as
applicant accurately points out in its brief, "[o]pposer has
failed to prove any proprietary rights in 'cazadores'" and,
instead, as applicant concedes, the record establishes at best
only that "[o]pposer (and others have used 'cazadores'
descriptively, as a size designation for cigars" (italics in
original). Such use, as shown by the record, is the antithesis
of use as a prior, proprietary mark by opposer. Applicant, in
view thereof, correctly concludes that absent proof of prior
proprietary rights by opposer in the term "CAZADORES":
There is no "origin-indicating" quality.
Thus, there can be no confusion since
consumers do not see any use by Opposer as
being indicative of origin. Opposer has no
valid mark and there is no likelihood of
confusion.

Accordingly, given the lack of proof of priority of use by
opposer as the party bearing the burden of proof in this
Opposition No. 91161729
19
proceeding,14 a claim of priority of use and likelihood of
confusion must fail.
Decision: The opposition is dismissed.

14 See, e.g., Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002); Champagne Louis Roederer S.A. v.
Delicato Vineyards, 143 F.3d 1373, 47 USPQ2d 1459, 1464 (Fed. Cir.
1998) (Michel, J. concurring); Yamaha Int'l Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988); Sanyo Watch
Co., Inc. v. Sanyo Elec. Co., Ltd., 691 F.2d 1019, 215 USPQ 833, 834
(Fed. Cir. 1982); and Clinton Detergent Co. v. Proctor & Gamble Co.,
302 F.2d 745, 133 USPQ 520, 522 (CCPA 1962).