Tampa Rico, Inc.v.Puros Indios Cigars, Inc.

Trademark Trial and Appeal Board

Jan 4, 2002

No. 91103752 (T.T.A.B. Jan. 4, 2002)

1/4/02
Hearing: Paper No. 43
October 24, 2001 BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Tampa Rico, Inc.
v.
Puros Indios Cigars, Inc.
_____

Opposition No. 103,752
to application Serial No. 75/056,004
filed on February 9, 1996
_____

David W. Pettis, Jr. of Pettis & Van Royen, P.A. for
Tampa Rico, Inc.

Robert M. Schwartz and Kevin O’Grady of Ruden McClosky
Smith Schuster & Russell, P.A. for Puros Indios Cigars,
Inc.
______

Before Quinn, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:

Puros Indios Cigars, Inc. (a New Jersey corporation)
filed on February 9, 1996, an application to register on
the Principal Register the mark ROLANDO for cigars. The
application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 103752
2
Tampa Rico, Inc. (a Florida corporation) has opposed
registration of applicant’s mark, alleging that it has been
continuously using the mark ROLANDO for cigars “for
approximately two (2) years” (the notice of opposition was
filed on October 15, 1996); that on April 2, 1996, opposer
filed application Serial No. 75/082,832 for the mark
ROLANDO HANDMADE IMPORTED and design for “cigars, cigar
boxes, cigar packaging”1; and that applicant’s mark, if used
in connection with cigars, would so resemble opposer’s
previously used mark as to be likely to cause confusion,
mistake, or deception.
Applicant denied the allegations of the notice of
opposition, and stated as an affirmative defense that
“applicant has priority of use of the mark ROLANDO, over
Opposer’s alleged use.”
The record consists of the pleadings; the file of the
opposed application; the testimony, with exhibits, of Don
Barco, opposer’s treasurer; opposer’s notice of reliance on
applicant’s responses and supplemental responses to

1 The Board notes that application Serial No. 75/082,832 was
filed by Tampa Rico Cigar Co., Inc. (a Florida corporation); and
that said application stands abandoned as of June 1997. In
addition, the records of this Office indicate that Tampa Rico
Cigar Company, Inc. owns application Serial No. 75/281,037 for
the mark ROLANDO (in stylized lettering) for cigars; and that
action on said application has been suspended in Law Office 115.
Thus, it appears that there is a mistake in opposer’s name as set
forth in this opposition. (See also, the testimony of Don Barco,
opposer’s treasurer, pp. 4-5.)
Opposition No. 103752
3
opposer’s first set of interrogatories; the testimony upon
written questions, with exhibits, of Rolando Reyes, a
third-party witness taken by applicant; and applicant’s
notice of reliance on (i) opposer’s responses to
applicant’s first set of interrogatories, and (ii) an
article from the Winter 1995/1996 Cigar Aficionado magazine
to show the “renown of Mr. Rolando Reyes, Sr. in the cigar
industry,” and that “applicant’s trademark rights in the
mark Rolando, for cigars, derives from the applicant’s
prior long-standing use of the trademark Rolando Reyes, Sr.
for cigars.”
Both parties filed briefs, and an oral hearing was
held before this Board on October 24, 2001.
With regard to the issue of priority, the record in
this case establishes that opposer has continuously used
the mark ROLANDO on cigars since April 28, 1995 (see, e.g.,
opposer’s answer to applicant’s interrogatory No. 4, and
Barco dep., pp. 9-10 and 72); and that applicant has not
used the mark ROLANDO on cigars (see applicant’s response
and supplemental response to opposer’s interrogatory No.
6), leaving applicant to the filing date of its intent-to-
use application (February 9, 1996). Applicant contends,
however, that it has used the term ROLANDO as part of its
composite mark ROLANDO REYES for cigars since approximately
Opposition No. 103752
4
1980. Thus, in order for applicant to prevail on priority,
it must be able to “tack on” its use of the mark ROLANDO
REYES.
A party seeking to “tack” its use of an earlier mark
onto its later mark for the same goods may do so only if
the earlier and later marks are legal equivalents, or are
indistinguishable from one another. To meet the legal
equivalents test, the marks must create the same commercial
impression, and cannot differ materially from one another.
(The fact that two marks may be confusingly similar does
not mean that they are legal equivalents for the purpose of
“tacking.”) See Lincoln Logs Ltd. V. Lincoln Pre-Cut Log
Homes Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992);
Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17
USPQ2d 1866 (Fed. Cir. 1991); and Ilco Corp. v. Ideal
Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA
1976).
It is clear that the marks ROLANDO and ROLANDO REYES
do not create the same commercial impression, and that they
differ materially from one another for purposes of
“tacking” on an earlier date of first use. Simply put,
these marks are not legal equivalents and applicant cannot
Opposition No. 103752
5
“tack” onto its filing date for the mark ROLANDO, its
earlier use date of the mark ROLANDO REYES.2
We find that opposer has priority in this opposition
proceeding.
As explained previously, applicant seeks to register
the mark ROLANDO for cigars, and opposer has established
prior use of the mark ROLANDO for cigars. We therefore
find that there is a likelihood of confusion in this case
involving the identical mark for the identical goods. See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Decision: The opposition is sustained, and
registration to applicant is refused.

2 Because applicant’s two involved marks are not legal
equivalents, we need not address the sufficiency of applicant’s
evidence of its use of the mark ROLANDO REYES for cigars in this
case.