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

gov
ESTTA Tracking number: ESTTA292890
Filing date: 07/01/2009
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 BBK Tobacco & Foods, Inc.
Granted to Date 07/11/2009
of previous
extension
Address 3315 W. Buckeye Rd., Ste. B
Phoenix, AZ 85009
UNITED STATES

Attorney Edward L. Earle

information HBI International Legal Department
3315 W. Buckeye Rd., Ste. B
Phoenix, AZ 85009
UNITED STATES
marks@hbiinternational.com Phone:602-955-6688

Applicant Information
Application No 77620013 Publication date 05/12/2009
Opposition Filing 07/01/2009 Opposition 07/11/2009
Date Period Ends
Applicant THE 101 CORPORATION
137 North Larchmont Boulevard, Suite 123
Los Angeles, CA 90004
UNITED STATES

Goods/Services Affected by Opposition

Class 034.
All goods and services in the class are opposed, namely: Cigars, cigarettes, humidors, lighters not of
precious metal, ashtrays not of precious metal; lighters and ashtrays of precious metal

Grounds for Opposition

Deceptiveness Trademark Act section 2(a)
False suggestion of a connection Trademark Act section 2(a)
Priority and likelihood of confusion Trademark Act section 2(d)

Mark Cited by Opposer as Basis for Opposition

U.S. Registration 2899588 Application Date 05/20/2003
No.
Registration Date 11/02/2004 Foreign Priority NONE
Date
Word Mark 101
 Design Mark
Description of NONE
Mark
Goods/Services Class 034. First use: First Use: 2001/01/10 First Use In Commerce: 2001/01/10
cigarette rolling papers, smoking tobacco

Attachments Notice of Opposition.pdf ( 8 pages )(54789 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 /Edward L. Earle/

Name Edward L. Earle
Date 07/01/2009
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

____________________________________

BBK Tobacco & Foods, Inc., Mark: ROOM101

Opposer,
Serial No. 77/620,013
v.
Filed: November 21, 2008
The 101 Corporation,
Applicant. Published: May 12, 2009

____________________________________ Opposition No. ______________

Commissioner for Trademarks

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

NOTICE OF OPPOSITION

BBK Tobacco & Foods, Inc., a corporation, located and doing business at 3315

W. Buckeye Rd., Ste. B, Phoenix, AZ 85009 (“Opposer”) believes that it will be

damaged by registration by The 101 Corporation, a corporation, located and doing

business at 137 North Larchmont Boulevard, Suite 123, Los Angeles, CA 90004

(“Applicant”) for the mark ROOM101 shown in Application Serial No. 77/620,013 and

hereby opposes same.

As grounds for opposition, Opposer alleges:

1. Applicant filed a trademark application assigned Application Serial No.

77/620,013 in the United States Patent and Trademark Office (“USPTO”) on November

21, 2008 (“Applicant’s Application”) to register the mark ROOM101 (“the Applicant’s

Mark”) for use in connection with “cigars, cigarettes, humidors, lighters not of precious
metal, ashtrays not of precious metal, lighters and ashtrays of precious metal”

(“Applicant’s Goods”).

2. The Application filed by Applicant on November 21, 2008 (“Applicant’s

Filing Date”) is based on Applicant’s bona fide intention to use Applicant’s Mark with

Applicant’s Goods at some point in the future.

3. The Application for the Applicant’s Mark was published for opposition in

the Official Gazette on May 12, 2009. On May 12, 2009 the Opposer timely filed a

request for a 30-day extension of time to oppose Applicant’s Application for Applicant’s

Mark, which was granted until July 11, 2009.

4. The Opposer is a well-known wholesaler/distributor of tobacco and other

tobacco products. The other tobacco products, include, but are not limited to, tobacco

and tobacco accessories, namely cigarette rolling papers and cigarette smoking tobacco

(“Opposer’s Goods”). Opposer’s Goods are offered for sale in a wide range of sizes,

flavors, color and designs

5. Opposer provides information about its tobacco products and other

tobacco related goods and services on the Internet on various websites. A sample of

websites that are sponsored by Opposer that provide the aforementioned information,

include but are not limited to, www.zensmoke.com, www.hbiinternational.com,

www.rollingsupreme.com, www.juicyjays.com and www.alliedtobacco.com. Websites

of third parties, including but not limited to, www.rollingpapers.net and

www.rollingpaperwarehouse.com, also include information about Opposer’s goods and

its other tobacco related goods (“Third Party Websites”).

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OPPOSER’S 101 REGISTERED TRADEMARK

6. Opposer is the owner of U.S. Registration Number 2,899,588 for the mark

“101” (“Opposer’s Mark”) filed with the USPTO on May 20, 2003 (“Opposer’s Filing

Date”) based on its current use of Opposer’s Mark in commerce. The first use date is

listed as January 10, 2001 (“Opposer’s First Use Date”) and the first used in commerce

date is listed as January 10, 2001 (“Opposer’s First Use in Commerce Date”). This

registration is valid and subsisting and in full force and effect. A copy of Reg. No.

2,899,588 is enclosed herewith.

7. Opposer has used Opposer’s Mark in association with Opposer’s Goods

in interstate commerce throughout the United States since at least as early as January 10,

2001 and the Opposer’s Mark is currently in use in interstate commerce with Opposer’s

Goods.

8. Opposer’s Filing Date, Opposer’s First Use Date and Opposer’s First Use

in Commerce Date for Opposer’s Mark are all earlier than Applicant’s Application Date.

9. Priority is not an issue in this case because both the Opposer’s Filing Date

and the Opposer’s First Use Date for Opposer’s Mark precede Applicant’s Filing Date.

10. Opposer has, at great expense, continuously engaged in the sale and

promotion of Opposer’s Goods under and in connection with Opposer’s Mark.

11. Opposer, at great expense, extensively and continuously offered to the

public high quality goods and services under Opposer’s Mark. On account of such

efforts and by virtue of the superiority of the goods and services under Opposer’s Mark,

the public and trade have come to recognize Opposer’s Mark as suggestive of Opposer

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and the goods and services offered under Opposer’s Mark. Opposer’s Mark has earned a

positive reputation for quality and reliability that has resulted in significant amounts of

good will.

12. The goods and services listed on Applicant’s Application are the same

and/or closely related to Opposer’s Goods. Clearly, where both marks are used in

conjunction with similar and/or identical and complimentary goods, a substantial

likelihood of confusion must therefore exist.

13. The mark proposed for registration by Applicant, is confusingly similar in

sight, sound and commercial impression to Opposer’s Mark which has been used in

interstate commerce prior to any use or application for trademark registration by

Applicant. Furthermore, the goods and services listed under Applicant’s Application and

the goods opposed herein are related, and would be promoted through the same channels

of trade for sale to, and use by, the same category of purchasers. This would result in

further confusion among the public and trade as to the origin of Applicant’s Goods.

14. Opposer believes it will be damaged by the registration of Applicant’s

Mark in that a significant portion of the purchasing public and/or trade is likely to be

confused, or mistakenly believe, that Applicant’s Goods offered under Applicant’s Mark

originate from Opposer, or from the same source as the goods and services sold under

Opposer’s Mark, or that such goods are sponsored by, endorsed by or affiliated with the

source of the goods and services sold under Opposer’s Mark. Such likelihood of

confusion would result both in lost sales to Opposer and in damage to the good will

among the purchasing public and/or the trade that Opposer’s Mark is symbolic of.

Persons familiar with Opposer’s Mark would be likely to buy Applicant’s Goods

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mistakenly thinking that they were goods produced or distributed by Opposer. Moreover,

any defect, objection or fault found with Applicant’s Goods marketed under Applicant’s

Mark would reflect upon and seriously injure the reputation which has been established

for the goods and services sold under Opposer’s Mark.

15. Allowing registration of Applicant’s Mark would result in damages to

Opposer. Registration would allow Applicant to profit from the efforts put forth solely

by Opposer.

16. Based upon the foregoing, the registration of the mark depicted in

Application Serial No. 77/620,013 on the Principal Register of the United States Patent

and Trademark Office will cause injury and damage to Opposer.

WHEREFORE, Opposer respectfully requests that registration of Applicant’s

Mark, Application Serial No. 77/620,013, be denied and that this Opposition be sustained

in favor of Opposer.

Dated: July 1, 2009 Respectfully Submitted,

Edward L. Earle

By: s/Edward L. Earle/_________________

Attorney for Opposer
HBI International Legal Department
3315 W. Buckeye Rd., Ste. B
Phoenix, Arizona 85009
Telephone: (602) 955-6688
Facsimile: (602) 955-3330
Email: edward.earle@hbiinternational.com

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 Certificate of Service

The undersigned hereby certifies that a copy of the foregoing Notice of Opposition has
been served upon the Applicant’s Attorney / Correspondent on July 1, 2009 by depositing
same in the United States Mail, US Mail postage prepaid, in an envelope addressed as
follows:

Lucy B. Arant, Esq.

MITCHELL SILBERBERG & KNUPP LLP
11377 West Olympic Boulevard
Los Angeles, CA 90064-1683

s/Edward L. Earle/
____________________________________
Edward L. Earle
Attorney for Opposer

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