Altadis U.S.A. Inc.v.Global Services 1939 LLC

Trademark Trial and Appeal Board

Nov 3, 2015

No. 91213902 (T.T.A.B. Nov. 3, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Altadis U.S.A. Inc.
v.
Global Services 1939 LLC
_____

Opposition No. 91213902
to Application Serial No. 85650486
_____

Charles W. Grimes and Russell D. Dize of Grimes LLC,
for Altadis U.S.A. Inc.
Leon F. Hirzel of Hirzel & Dreyfuss PA,
For Global Services 1939 LLC.
_____

Before Bucher, Ritchie and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Global Services 1939 LLC
(“Applicant”) seeks registration on the
Principal Register of the mark
displayed on the right for “cigar boxes; cigars” in International Class 34.1

1 Application Serial No. 85650486 was filed on June 13, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The application includes the following description of the mark: “The mark
Opposition No. 91213902
- 2 -
Altadis U.S.A. Inc. (“Opposer”) opposes registration pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
applied to Applicant’s goods, the mark so resembles Opposer’s previously used,
registered and famous marks which comprise or include the term MONTECRISTO,
and designs that comprise or include a fleur de lis for, inter alia, cigars, cigar boxes,
retail cigar stores and cigar smoking lounges, as to be likely to cause confusion.
Opposer pleaded ownership of twenty registrations, all on the Principal Register.
The most relevant registrations are set forth below:
Mark Reg. No. Goods/Services
MONTECRISTO 1173547
(registered
10/13/1981,
renewed)
Cigars
MONTECRISTO 2396980
(registered
10/24/2000,
renewed)
Hat ornaments not of precious metal;
ashtrays not of precious metal; and credit
card services
MONTECRISTO 3897792
(registered
12/28/2010)
Retail store services featuring cigars; cigar
smoking lounge services
MONTECRISTO 3947902
(registered
4/19/2011)
Desk sets; desk pads; pens; stands for
pens and pencils; golf balls; and cigar
cases not of precious metal

consists of fleur de lis designs surrounding an ‘M’ and the number ‘1939.’ The wording
‘MONTERO 1939 TOTALMENTE A MANO’ is on both sides of the center ‘M’ design.” The
colors black and silver are claimed as features of the mark. The wording “TOTALMENTE A
MANO” and “1939” have been disclaimed. In addition, the application includes the
following translation: “The English translation of ‘totalmente a mano’ in the mark is
‘entirely by hand.’”

Opposition No. 91213902
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Mark Reg. No. Goods/Services

3323242
(registered
2/11/1936,
renewed)
Cigars, cigarettes, and cut tobacco

1459466
(registered
9/29/1987,
renewed)3
Cigars

3805893
(registered
6/22/2010)4
Cigars, little cigars, roll-your-own tobacco,
pipe tobacco, smokeless tobacco, ashtrays,
cigar boxes, cigar cutters, cigar cases,
cigar holders, lighters for smokers, tobacco
pipes, tobacco pouches, tobacco tins, match
boxes and cigar tubes

Opposer also alleges that Applicant’s mark is likely to dilute Opposer’s famous
pleaded marks pursuant to Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c).
Applicant, in its answer, denied the salient allegations in the notice of
opposition. Applicant also asserted as “affirmative defenses” that “Opposer has no
rights in or to the ‘fleur de lis’ as it is an internationally-recognized symbol that is
in the public domain,” that Opposer’s “Fleur de lis” mark is weak and “afforded a
limited scope of protection,” and that, as used by Applicant, “the fleur de lis symbol

2 The registration does not contain a description of the mark. However, in the Notice of
Opposition, Opposer describes this mark as the “MONTE CRISTO Crossed Swords and
Fleur de Lis Design.” We refer to this registration and Reg. No. 1459466 collectively as the “crossed
swords” marks.
3 The registration does not contain a description of the mark. However, in the Notice of
Opposition, Opposer describes this mark as the “Crossed Swords and Fleur de Lis Design.”
We refer to this registration and Reg. No. 332324 collectively as the “crossed swords”
marks.
4 The registration includes the following description of the mark: “The mark consists of a
design of a fleur de lis.” We refer to this registration as the “fleur de lis” mark.
Opposition No. 91213902
- 4 -
… is only an insignificant portion of Applicant’s overall mark, which is dominated
by other features.”5
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), the file of application Serial No. 85650486. During its
assigned testimony, Opposer filed a Notice of Reliance upon Opposer’s Requests for
Admission and Interrogatories and Applicant’s responses thereto,6 publications,
advertisements, printed articles, and TSDR printouts of Opposer’s twenty pleaded
registrations.7 Opposer also submitted the testimony deposition, with accompanying
exhibits, of Janelle Rosenfeld, Opposer’s Vice President of Marketing and Trade
Advertising. Applicant submitted no testimony or other evidence. Both parties filed
briefs on the case.

5 Applicant’s “affirmative defense” of failure to state a claim was not pursued at trial, and
therefore is deemed waived. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba
Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013).
6 Opposer submitted Applicant’s response to Opposer’s Requests for Admission in its
entirety, even though the response included denials. Requests that have been denied have
no probative value and, in fact, the rules do not provide for submission of such denials by
Notice of Reliance. See Trademark Rule 2.120(j)(3)(i); Life Zone Inc. v. Middleman Group
Inc., 87 USPQ2d 1953, 1957 (TTAB 2008). Thus, we have only considered the admissions.
We also note that in its brief, Opposer only relies on the admissions.
7 Opposer also submitted a TSDR printout of Opposer’s unpleaded registration for the mark
MONTE. We need not and do not consider this registration in order to reach a decision on
the merits of Opposer’s claims, and therefore do not engage in an analysis of whether the
pleadings have been amended by the express or implied consent of the parties pursuant to
Fed. R. Civ. P. 15(b).
Opposition No. 91213902
- 5 -
II. Findings of Fact
Opposer manufactures and distributes premium cigars.8 Through its wholly
owned subsidiary Cuban Cigar Brands B.V., Opposer owns the twenty
MONTECRISTO, fleur de lis and crossed swords marks pleaded in the Notice of
Opposition and made of record under Opposer’s Notice of Reliance, including those
listed in the chart above.9
MONTECRISTO is Opposer’s best known brand of premium cigars.10 With
annual sales in the millions, and annual dollar volume of sales in the tens of
millions, MONTECRISTO is Opposer’s top selling cigar and among the best known
and top selling brands of cigars in the United States, similar in popularity to other
premium cigar brands such as Davidoff, Cohiba and Padron.11 Opposer sells
MONTECRISTO cigars to approximately 3000 brick and mortar stores via a 32
person premium cigar sales force, the largest such sales force in the United States,
and also markets the cigars through wholesale distributors, catalogs and the
Internet.12 In the past, Opposer has licensed the MONTECRISTO brand for use in
connection with a variety of ancillary goods and services, such as cigar lounges,
watches, credit cards, coffee and ashtrays.13

8 11 TTABVUE 13.
9 11 TTABVUE 13; 7 TTABVUE 14-87.
10 11 TTABVUE 25, 30.
11 11 TTABVUE 48-49, 58.
12 11 TTABVUE 19-20.
13 11 TTABVUE 55.
Opposition No. 91213902
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Opposer spends at least several hundred thousand dollars each year to advertise
the MONTECRISTO brand.14 Opposer advertises MONTECRISTO cigars in cigar-
oriented magazines such as Cigar Aficionado, Cigar Snob and Cigar & Sprits and
on the radio, and in the past, has advertised them in Gourmet and Travel & Leisure
magazines.15 Opposer promotes the MONTECRISTO brand on its website, through
the Montecristo Social Club, a consumer private membership website with
approximately 50,000 members, and through Cigar Life, a Facebook page with over
130,000 members.16 Opposer also promotes the MONTECRISTO brand through in-
store events that allow consumers to sample MONTECRISTO cigars and buy them
at a discount (such as buy three get one free promotions), and to receive
MONTECRISTO branded promotional items such as cutters, matches, lighters,
clothing and humidors.17 In addition, Opposer hosts direct-to-consumer promotional
events in various cities, often associated with the Montecristo Social Club, where
Opposer rents a smoking area in a bar or lounge and invites consumers to enjoy a
MONTECRISTO cigar.18 Articles in the cigar press often have referred to
MONTECRISTO to denote a high quality or prestigious product, similar to Rolex
watches and Pierre Cardin suits.19

14 11 TTABVUE 50.
15 11 TTABVUE 22.
16 11 TTABVUE 25-27.
17 11 TTABVUE 24, 29.
18 11 TTABVUE 29.
19 11 TTABVUE 50-51.
Opposition No. 91213902
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Opposer’s predecessor sold MONTECRISTO cigars in the United States from
1935 until 1960, when the Cuban trade embargo was imposed.20 Opposer purchased
the MONTECRISTO brand in 1978, and continuously has sold MONTECRISTO
cigars in the United States since that time.21 From 1935 to 1960, and from 1978 to
the present, the fleur de lis continuously has appeared on Opposer’s
MONTECRISTO cigars.22 The fleur de lis is part of Opposer’s MONTECRISTO
logo.23 The fleur de lis virtually always is displayed prominently in the center of
MONTECRISTO cigar bands and on packaging for MONTECRISTO cigars.24 The
fleur de lis also appears in the center of Opposer’s crossed swords logo, which logo is
displayed on cigar boxes and in advertisements and promotional materials that
reference MONTECRISTO.25
Based on Applicant’s admissions and its answers to Opposer’s Interrogatories,
we find that Applicant selected its mark in 2012,26 and that Applicant was aware of
Opposer’s use of its MONTECRISTO and fleur de lis marks when it chose its
mark.27 We also note Applicant’s assertion that it chose its mark based on the

20 11 TTABVUE 16.
21 11 TTABVUE 16.
22 11 TTABVUE 31.
23 11 TTABVUE 30-31.
24 11 TTABVUE 33, 45.
25 11 TTABVUE 33, 45.
26 Applicant’s Responses to Requests for Admission Nos. 2 and 5, 7 TTABVUE 109-110.
27 Applicant’s Answers to Interrogatory Nos. 14 and 15, 7 TTABVUE 137-138.
Opposition No. 91213902
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surname of Applicant’s principal rather than any attempt to trade on Opposer’s
good will in its marks.28
III. Standing and Priority
Because Opposer has made the pleaded registrations properly of record, Opposer
has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc., v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Moreover, because the
registrations are properly of record, priority is not in issue as to the goods and
services identified therein. King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). In addition, Applicant does not dispute
Opposer’s priority.
IV. Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). Opposer must establish that there is a likelihood of confusion by a
preponderance of the evidence. In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper

28 Applicant’s Answers to Interrogatory Nos. 2 and 3. 7 TTABVUE 134.
Opposition No. 91213902
- 9 -
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other
relevant du Pont factors in the proceeding now before us, are discussed below.
A. Fame of the Marks
Opposer claims that its MONTECRISTO, fleur de lis, and crossed swords marks
are famous. Fame of the prior marks plays a dominant role in likelihood of
confusion cases featuring famous marks. Bose Corp. v. QSC Audio Products Inc.,
293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Because of the
extreme deference accorded to famous marks in terms of the wide latitude of legal
protection they receive, and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of the party asserting fame to clearly prove it.
Lacoste Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009); and
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB
2007). Accordingly, we consider the fame factor first.
In its brief, Applicant “acknowledges that MONTECRISTO is a famous mark
recognized in the tobacco/cigar industry,”29 and that “the MONTECRISTO mark is
famous and easily recognizable by the average cigar consumer.”30 However,
Applicant contends that the fleur de lis symbol in Opposer’s fleur de lis and crossed
swords marks is generic. As noted above, Applicant has presented no evidence or

29 15 TTABVUE 11.
30 15 TTABVUE 13.
Opposition No. 91213902
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testimony in this proceeding. Accordingly, Applicant’s argument that the fleur de lis
is generic is unsubstantiated. Moreover, the argument is an impermissible
collateral attack against Opposer’s registrations, as Applicant has not filed a
counterclaim or a separate petition seeking the cancellation of such registrations.
Trademark Rule 2.106(b)(2), 37 CFR § 2.106(b)(2). We therefore focus solely on
whether Opposer has established that its fleur de lis and crossed swords marks are
famous.
Fame may be measured indirectly by the volume of sales and advertising
expenditures of the goods identified by the marks at issue, “the length of time those
indicia of commercial awareness have been evident,” widespread critical
assessments, and through notice by independent sources of the products identified
by the marks, as well as by the general reputation of the products. Bose, 63
USPQ2d at 1305-06.
The gist of Opposer’s argument is that the fleur de lis and crossed swords marks
are famous because they have been displayed and promoted with Opposer’s famous
MONTECRISTO mark for cigars since 1935.31 We accept for purposes of this
decision Applicant’s concession that Opposer’s MONTECRISTO mark is famous for
cigars, and therefore need not decide whether the record supports such a finding.
However, Opposer’s evidence that the fleur de lis and crossed swords marks are
famous is minimal, consisting of the aforementioned general sales and advertising
figures, promotional materials and advertising in several publications, a side-bar

31 11 TTABVUE 59. This excludes the period after the imposition of the Cuban trade
embargo mentioned above.
Opposition No. 91213902
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description of the crossed swords mark in The Ultimate Cigar Encyclopedia (1998)
(“[t]he Montecristo logo is one of the best known of the Cuban cigars”),32 and Ms.
Rosenfeld’s testimony that consumers think of Opposer when they see a fleur de lis
on a cigar (e.g., “If consumers see a fleur-de-lis, I believe they associate it with
Montecristo, and they therefore associate that product with quality and luxury”)33
because of Opposer’s consistent use of the fleur de lis in connection with
MONTECRISTO cigars since 1935.34
While Opposer’s sales and advertising figures are appreciable, raw numbers
alone are not necessarily sufficient to prove fame, since such figures may be
misleading. See Bose, 63 USPQ2d at 1309. For example, without context, Opposer’s
sales figures, and Ms. Rosenfeld’s testimony that “Montecristo is a top selling cigar
for our company and a top selling cigar in the U.S. market,”35 could represent a
somewhat limited market share. Similarly, the evidence shows that Opposer has
engaged in print advertisement of its MONTECRISTO cigars since at least the mid-
1990s, and that the crossed swords design (with a fleur de lis in the middle) appears
in virtually all such advertisements. However, such evidence falls short of
demonstrating the extent to which such marketing efforts translate into widespread
recognition of Opposer’s fleur de lis and crossed swords marks among purchasers
and smokers of cigars. Notably, other than the description of Opposer’s crossed

32 7 TTABVUE 256.
33 11 TTABVUE 61.
34 11 TTABVUE 59. Again, this excludes the period of the Cuban trade embargo.
35 11 TTABVUE 48.
Opposition No. 91213902
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swords mark in The Ultimate Cigar Encyclopedia, which is nearly two decades old,
there is no evidence of consumer recognition of Opposer’s fleur de lis or crossed
swords marks in connection with cigars. Moreover, there is no evidence that The
Ultimate Cigar Encyclopedia was ever sold or read (except, perhaps, to and by
Opposer), let alone the number of copies that have been sold, and no indication that
this book continues to be in circulation.
Because of the extreme deference that we accord a famous mark in terms of the
wide latitude of legal protection it receives, and the dominant role fame plays in the
likelihood of confusion analysis, we reiterate, it is the duty of the party asserting
that its mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012); Edward Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010). On this record, we
find that Opposer has not met its burden of establishing that Opposer’s pleaded
fleur de lis and crossed swords marks are famous for purposes of our likelihood of
confusion determination.
The du Pont factor of fame favors Opposer as to the MONTECRISTO mark, and
is neutral as to the fleur de lis and crossed swords marks.
B. Strength of the Fleur De Lis and Crossed Swords Marks/Third Party
Uses
Although the record does not support a finding that Opposer’s pleaded fleur de
lis and crossed swords marks are famous, the record reflects that the marks are
arbitrary with respect to the goods, as well as longevity of use of the marks,
appreciable sales and advertising figures, and the absence of third-party use of
Opposition No. 91213902
- 13 -
similar marks for similar goods.36 The record also reflects Opposer’s efforts to stop
others from using the fleur de lis on cigars without Opposer’s consent.37 We
therefore find the marks to be strong, and entitled to a broad scope of protection.
C. Relatedness of the Goods, Channels of Trade and Conditions of
Purchase
We turn next to the du Pont factors of the relatedness of the goods, channels of
trade and conditions of purchase. We base our evaluation on the goods as they are
identified in the application and registration. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
In this case, the “cigars” identified in Reg. No. 1173547 for MONTECRISTO and
in the three registrations for the fleur de lis and the crossed swords marks are
identical to the “cigars” identified in the application, the “cigar boxes” identified in
Reg. No. 3805893 for the fleur de lis mark are identical to the “cigar boxes”
identified in the application, and the “ashtrays” listed in Reg. No. 2396980, the
“retail store services featuring cigars; smoking lounge services” listed in Reg. No.
3897792, the “cigar cases not of precious metal” listed in Reg. No. 3947902, the

36 In its brief, Applicant points to evidence not in the record of third party uses of fleur de
lis designs on “countless cigar products” and other goods in Class 34. 15 TTABVUE 11. As
with Applicant’s argument that Opposer’s fleur de lis mark is generic, this claim is
unsubstantiated and will be given no further consideration.
37 11 TTABVUE 60-61.
Opposition No. 91213902
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“cigarettes and cut tobacco” listed in Reg. No. 332324, and the other goods listed in
Reg. No. 3805893 are closely related to the “cigars” and “cigar cases” identified in
the present application. Applicant does not dispute this.
In addition, because the goods identified in the application and registrations are
identical in part, and otherwise closely related, we must presume that the channels
of trade and classes of purchasers also overlap. See In re Viterra, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (absent restrictions in an application or registration, the
identified goods are “presumed to travel in the same channels of trade to the same
class of purchasers.”) (quoting Hewlett-Packard, 62 USPQ2d at 1001). See also
Stone Lion, 110 USPQ2d at 1161; In re Linkvest, 24 USPQ2d 1716, 1716 (TTAB
1992). Moreover, in its responses to Opposer’s Requests for Admission, Applicant
has admitted that the channels of trade for Applicant’s and Opposer’s cigars are the
same,38 and that they will be sold to the same types of customers.39
Notwithstanding the well-established legal presumptions and Applicant’s
admissions, Applicant argues in its brief that the channels of trade are different
because “Applicant sells directly to consumer[s] via its website and Opposer does
not sell directly to consumer[s].”40 However, as we have noted, Applicant submitted
no evidence or testimony in this proceeding. Applicant’s argument, therefore, is
without support, and in light of the legal presumptions and Applicant’s admissions,
unconvincing.

38 Applicant’s Response to Request for Admission No. 30, 7 TTABVUE 113.
39 Applicant’s Response to Request for Admission No. 31, 7 TTABVUE 113.
40 15 TTABVUE 11.
Opposition No. 91213902
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The du Pont factors of the similarity of the goods, channels of trade and the
conditions of purchase strongly favor a finding of likelihood of confusion.
D. The Variety of Opposer’s Goods on Which the Marks are Used
Under the ninth du Pont factor, Opposer argues that the MONTECRISTO, fleur
de lis and crossed swords marks are used with a large variety of goods and services.
The registrations Opposer asserts, including ones not specifically mentioned in this
decision, are sufficient to establish that Opposer has used the MONTECRISTO
mark on a wide variety of goods and services. Chicago Bears Football Club Inc. v.
12th Man/Tennessee LLC, 83 USPQ2d 1073, 1075 (TTAB 2007). However, nothing
in the record supports a similar finding for Opposer’s design marks. This factor
favors Opposer as to the MONTECRISTO mark, and is neutral as to the fleur de lis
and crossed swords marks.
E. Comparison of the Marks
We next consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., 101
USPQ2d at 1721 (quoting Leading Jewelers Guild, 82 at 1905). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
Opposition No. 91213902
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specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Our analysis cannot be predicated on dissection of the involved marks. Stone
Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their
entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Nonetheless, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Stone Lion, 110 USPQ2d at 1161. For instance, as our principle
reviewing court has observed, “[t]hat a particular feature is descriptive or generic
with respect to the involved goods or services is one commonly accepted rationale for
giving less weight to a portion of the mark.” See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Moreover, in comparing the marks, we are mindful that where, as here,
Applicant’s goods are identical to Opposer’s goods in part, the degree of similarity
necessary to find likelihood of confusion need not be as great as where there is a
recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Opposition No. 91213902
- 17 -
In this case, the central and most visually prominent portion of Applicant’s mark

comprises six fleur de lis surrounding a large letter “M,” which also resembles two
mountains, and the year 1939.41 Applicant points to minor differences in the leaves
and tips of Applicant’s six fleur de lis compared to Opposer’s mark in an
attempt to distinguish the marks. However, we find that the six fleur de lis in
Applicant’s mark are virtually identical in appearance to Opposer’s fleur de lis
mark. Applicant’s mark essentially incorporates the entirety of one of Opposer’s
marks. In similar cases, a likelihood of confusion frequently has been found. See,
e.g., Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and
Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL
LANCER for club soda, quinine water and ginger ale is likely to cause confusion
with BENGAL for gin); Johnson Publishing Co. v. International Development Ltd.,
221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing
and conditioner is likely to cause confusion with EBONY for cosmetics); In re
Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD
START COSVETIC for vitamins for hair conditioners and shampoo is likely to cause
confusion with HEAD START for men’s hair lotion and after-shaving lotion).

41 As noted above, the year 1939 has been disclaimed.
Opposition No. 91213902
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The central portion of Applicant’s mark also evokes a triangle, and therefore is
very similar in appearance to Opposer’s triangular shaped crossed swords marks
.and .
In addition, although the literal portions of the marks are not identical, the word
MONTERO, which appears twice in Applicant’s mark, is similar to Opposer’s
famous mark MONTECRISTO in that they share the first five letters (MONTE),
they include the letter “R,” and they end with the letter “O.”
To the extent the letter “M” in the central portion of Applicant’s mark resembles
two mountains, it reinforces the MONTE portion of Applicant’s mark, which
Opposer’s mark also shares. In this regard, we note that MONTERO is a word of
Spanish origin meaning “mountaineer.”42 Similarly, Opposer’s mark
MONTECRISTO is registered with the translation “Mountain of Christ.”43
Applicant’s mark and Opposer’s mark MONTECRISTO therefore have very similar
meanings.
Even if consumers view the central portion of Applicant’s mark as containing a
capital letter “M” as Applicant intends, the fact remains that the letter is

42 We take judicial notice of the following entry for “montero” from Dictionary.com
Unabridged, based on the RANDOM HOUSE DICTIONARY (2015): “a Spanish hunter’s cap,
round in shape and having an earflap.” Under the title “Origin of Montero,” the entry reads
as follows: “1615-1625; < Spanish, special use of montero huntsman, literally, mountaineer,
equivalent to monte mount+ -ero < Latin – arius – ary” (italics in original). The Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
43 See, for example, Reg. Nos. 2236889 (7 TTABVUE 36) and 2855557(7 TTABVUE 44).
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surrounded by six fleur de lis that are nearly identical to Opposer’s fleur de lis
mark. Given the strength of Opposer’s fleur de lis mark, and the fame of the
MONTECRISTO mark for cigars, we find that it is more likely than not that
purchasers of cigars will view Opposer as the source of a mark that contains six
fleur de lis in the center of the cigar band, and that the letter “M” identifies
Opposer, whose name begins with that letter.
The other elements of Applicant’s mark do little to distinguish it from Opposer’s
marks. More specifically, the year “1939” is informational, and the additional
wording “TOTALMENTE A MANO” (which, as noted above, means “entirely by
hand”), is merely descriptive of Applicant’s handmade cigars. Both elements
appropriately have been disclaimed, and therefore are entitled to less weight in our
analysis. See National Data Corp., 224 USPQ at 751. Further, although Applicant
has claimed the colors silver and black as a feature of its mark, none of Opposer’s
marks include a color claim. Opposer therefore may use all of its pleaded marks in
any colors it wishes, including the colors that Applicant has claimed. In re Data
Packaging Corp., 453 F.2d 1300, 1302, 172 USPQ 396, 397 (CCPA 1972). Rather
than favoring Applicant as Applicant contends, Opposer’s lack of color claim
supports a finding that the marks are confusingly similar.
When we compare the marks in their entireties, we find that the similarities in
sound, appearance, meaning and overall commercial impression outweigh the
differences. We further find that the differences in Applicant’s mark are more likely
to be viewed as identifying a variation or line extension of cigars offered by the
Opposition No. 91213902
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source identified as MONTECRISTO. In making this finding, we have taken into
account Applicant’s concessions that MONTECRISTO is a famous mark and the
parties’ goods are, at least in part, identical. Thus, consumers are likely to be
mistaken that Applicant’s goods are licensed or sponsored by, or are in some way
connected, related or associated with Opposer.
The similarity between Applicant’s mark and Opposer’s marks is a factor that
weighs in Opposer’s favor.
F. Extent of Concurrent Use and Actual Confusion
Applicant contends that there is no evidence of actual confusion, and that this
favors Applicant. However, proof of actual confusion is not necessary to show a
likelihood of confusion, and its absence is not dispositive. See Herbko Int’l Inc. v.
Kappa Books Inc., 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). A
showing of actual confusion would of course be highly probative, if not conclusive, of
a likelihood of confusion. Yet the opposite is not true; the lack of evidence of actual
confusion generally carries little weight. See J. C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
Moreover, it is unclear whether Applicant has sold any cigars under its applied-
for mark. In response to Interrogatory No. 4, Applicant states that “its first use of
the Mark was approximately February 2012.”44 However, because Applicant
submitted no evidence or testimony, this statement is unsubstantiated. In addition,

44 7 TTABVUE 134.
Opposition No. 91213902
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the statement does not specifically indicate that the claimed use was “in commerce.”
Moreover, Ms. Rosenfeld testified that she has never seen Applicant’s cigar for sale
in retail stores, although it appears that Applicant is selling cigars directly to
consumers through Applicant’s website.45 She also testified that she is “not aware of
any consumer that’s ever seen the Montero brand.”46
The du Pont factor of the length of time during and conditions under which there
has been concurrent use without evidence of actual confusion also is neutral.
G. Applicant’s Intent
Finally, Opposer argues that the element of “bad faith” weighs in its favor
because Applicant knew of Opposer's MONTECRISTO mark and Opposer’s use of a
fleur de lis on MONTECRISTO cigars before Applicant “deliberately and willfully
adopted a mark for cigars that includes six fleur de lis designs in the center of a
cigar band and the confusingly similar term ‘MONTERO.’”47 Under the thirteenth
du Pont factor, the Board may consider evidence of Applicant’s bad faith adoption of
its mark. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1441 (TTAB 2012). To put it
simply, however, without more, we cannot make such a finding as to Applicant's
intent, good or bad. This is not a record where an inference of bad faith may be
made. Accordingly, we see no bad faith in Applicant's adoption of its mark, and find
this factor to be neutral.

45 11 TTABVUE 58.
46 11 TTABVUE 105.
47 13 TTABVUE 45.
Opposition No. 91213902
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H. Conclusion
We conclude, after considering all evidence and arguments bearing on the
du Pont factors, including the evidence and arguments that we have not specifically
discussed herein, that there is a likelihood of confusion between Opposer’s
MONTECRISTO, fleur de lis and crossed swords marks and Applicant’s mark
for identical cigars, cigar boxes and
otherwise closely related goods.
As a final note, with regard to Opposer’s MONTECRISTO mark, the case law is
clear that famous marks enjoy a wide latitude of protection. “Famous marks are
accorded more protection precisely because they are more likely to be remembered
and associated in the public mind than a weaker mark .... When an opposer’s
trademark is a strong, famous mark, it can never be of little consequence.” Recot, 54
USPQ2d at 1897 (quoting Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984)). The Federal Circuit has
stated repeatedly that there is no excuse for even approaching the well-known
trademark of a competitor inasmuch as “[a] strong mark ... casts a long shadow
which competitors must avoid.” Kenner Parker Toys, 22 USPQ2d at 1456.
V. Dilution
Having determined that Opposer is entitled to prevail in this opposition
proceeding based upon its Section 2(d) claim of likelihood of confusion, we need not
Opposition No. 91213902
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reach the merits of Opposer’s dilution claim. See American Paging Inc. v. American
Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989), aff’d without opinion, 17
USPQ2d 1726 (Fed. Cir. 1990).
Decision: The opposition is sustained, and registration to Applicant is refused.