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

gov
ESTTA Tracking number: ESTTA350375
Filing date: 06/01/2010
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 New York Yankees Partnership
Granted to Date 05/30/2010
of previous
extension
Address Executive Offices, Yankee Stadium One East 161st Street
Bronx, NY 10451
UNITED STATES

Attorney Jill K. Tomlinson

information Cowan, Liebowitz & Latman, P.C.
1133 Avenue of the Americas
New York, NY 10036
UNITED STATES
[email protected], [email protected] Phone:212-790-9200

Applicant Information
Application No 77773133 Publication date 12/01/2009
Opposition Filing 06/01/2010 Opposition 05/30/2010
Date Period Ends
Applicant Choice Tobacco, Inc.
2425 Asban Road
Odanak, QC, JOG1H0
CANADA

Goods/Services Affected by Opposition

Class 034.
All goods and services in the class are opposed, namely: Pipe tobacco; Roll your own tobacco

Grounds for Opposition

Other Please see attached pleading.

Attachments YANKEE BLEND Final NOO.pdf ( 5 pages )(15277 bytes )

YANKEE BLEND NOO Cover Letter.pdf ( 1 page )(46556 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 /Jill K. Tomlinson/
Name Jill K. Tomlinson
Date 06/01/2010
Ref No. 21307.033

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Application Serial No. 77/773,133

Filed: July 2, 2009
For Mark: YANKEE BLEND
Published in the Official Gazette: December 1, 2009

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -X
NEW YORK YANKEES PARTNERSHIP, :
Opposer, : Opposition No.
:
v. :
:
: NOTICE OF OPPOSITION
CHOICE TOBACCO, INC., :
Applicant. :
:
- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- -- X

Commissioner for Trademarks

Attn: Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451

Opposer, New York Yankees Partnership (“Opposer”), an Ohio limited partnership, with

offices at Executive Offices, Yankee Stadium, One East 161st Street, Bronx, New York 10451,

believes that it will be damaged by registration of the standard character word mark YANKEE

BLEND in International Class 34 for “pipe tobacco; roll your own tobacco” as shown in

Application Serial No. 77/773,133 (the “Application”), and having been granted extensions of

time to oppose up to and including May 30, 2010, hereby opposes the same.

As grounds for opposition, it is alleged that:

1. Opposer is the owner of the renowned NEW YORK YANKEES Major League

Baseball club.

2. Since long prior to July 2, 2009, Applicant’s constructive first use date, Opposer,

its predecessors, and their affiliated and related entities, licensees and/or sponsors have used the

name or mark YANKEES or YANKEE, alone or with other word, letter and/or design elements

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(the “Opposer’s YANKEES Marks”), in connection with baseball games and exhibition services

and a wide variety of goods and services, including, but not limited to, cigarette lighters and

smokers’ articles, clothing, headgear, toys, novelty items and sporting goods, and the media,

press, and public have used YANKEE to refer to and identify players, managers and coaches of

Opposer’s baseball club.

3. Opposer owns U.S. federal registrations and an application for Opposer’s

YANKEES Marks in International Classes 6, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30, 34 and 41;

namely, Registration Nos. 1,032,767, 1,073,346, 1,161,865, 1,542,501, 1,550,798, 1,671,731,

2,368,952, 2,575,644, 2,843,353, 2,858,237, 2,866,959, 2,867,047, 2,867,048, 2,886,760,

2,889,384, 2,940,306, 2,970,918, 2,994,114, 3,022,847, 3,022,848, 3,191,653, 3,320,068,

3,320,069, 3,320,070, 3,326,223, 3,326,224, 3,326,225, 3,331,059, 3,345,306, and 3,718,515,

and Application Serial Nos. 77/009,819 and 78/843,342 for said trademarks and service marks.

Registration Nos. 1,032,767, 1,073,346, 1,161,865, 1,542,501, 1,550,798, 1,671,731, 2,368,952,

2,575,644 and 2,843,353 are incontestable.

4. Since long prior to July 2, 2009, Applicant’s constructive first use date, Opposer,

its predecessors, and their affiliated and related entities, licensees and/or sponsors have promoted

and advertised the sale and distribution of goods and services bearing or offered in connection

with Opposer’s YANKEES Marks, including, but not limited to, baseball games and exhibition

services and a wide variety of goods and services, including, but not limited to, cigarette lighters

and smokers’ articles, clothing, headgear, toys, novelty items and sporting goods and have sold

or distributed such goods and rendered such services in commerce.

5. As a result of the sales and promotion of its goods and services bearing or offered

in connection with Opposer’s YANKEES Marks, Opposer has built up highly valuable goodwill

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in Opposer’s YANKEES Marks, and said goodwill has become closely and uniquely identified

and associated with Opposer.

6. On July 2, 2009, Applicant filed the Application for the standard character word

mark YANKEE BLEND for “pipe tobacco; roll your own tobacco” in International Class 34,

based on an intent to use.

7. Upon information and belief, Applicant did not use the mark YANKEE BLEND

for the goods covered in the Application in United States commerce prior to its constructive first

use date of July 2, 2009.

8. The goods covered by the Application are closely related to the goods offered and

services rendered in connection with Opposer’s YANKEES Marks.

9. Applicant’s YANKEE BLEND mark so resembles Opposer’s YANKEES Marks

as to be likely, when used in connection with Applicant’s goods, to cause confusion, to cause

mistake, and to deceive the trade and public, who are likely to believe that Applicant’s goods

have their origin with Opposer and/or that such goods are approved, endorsed or sponsored by

Opposer or associated in some way with Opposer. Opposer would thereby be injured by the

granting to Applicant of a certificate of registration for Applicant’s YANKEE BLEND mark.

10. Opposer would be further injured by the granting of a certificate of registration to

Applicant because Applicant’s YANKEE BLEND mark would falsely suggest a connection

between Applicant and Opposer.

WHEREFORE, Opposer believes that it will be damaged by registration of Applicant’s

YANKEE BLEND mark and requests that the opposition be sustained and said registration be

denied.

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 Please recognize as attorneys for Opposer in this proceeding Mary L. Kevlin, Richard S.

Mandel and Jill K. Tomlinson (members of the bar of the State of New York) and the firm

Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, New York 10036.

Please address all communications to Mary L. Kevlin, Esq. at the address listed below.

Dated: New York, New York Respectfully submitted,

June 1, 2010

COWAN LIEBOWITZ & LATMAN, P.C.

Attorneys for Opposer

By: /Jill K. Tomlinson/

Mary L. Kevlin
Richard S. Mandel
Jill K. Tomlinson
1133 Avenue of the Americas
New York, New York 10036
(212)790-9200

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 CERTIFICATE OF SERVICE

I HEREBY CERTIFY that, on June 1, 2010, I caused a true and correct copy of the

foregoing Notice of Opposition to be sent via First Class Mail, postage prepaid, to Eugene

Berman, Esq., Law Offices of Eugene Berman, 26 Cedarwood Court, Rockville, MD 20852-

3406.

/Jill K. Tomlinson/
Jill K. Tomlinson

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June 1, 2010

By Electronic Filing

Commissioner for Trademarks

Attn: TTAB
P.O. Box 1451
Alexandria, VA 22313-1451

Re: New York Yankees Partnership

Notice of Opposition Against
Choice Tobacco, Inc.
Application to register YANKEE BLEND
Ref. No. 21307.033

Dear Commissioner:

We enclose a Notice of Opposition against Application Serial Number 77/773,133

published in the Official Gazette on December 1, 2009. Contemporaneously with the electronic
filing of this Notice of Opposition, we are arranging for an electronic payment in the amount of
$300 to cover the filing fee.

If the amount received is insufficient and additional fees are required, please charge our
Deposit Account No. 03-3415.

Please address all future correspondence to the attention of Mary L. Kevlin of Cowan,
Liebowitz & Latman, P.C.

Respectfully submitted,

/Jill K. Tomlinson/
Jill K. Tomlinson

Enclosures

cc: Ms. Diane Kovach (w/encs. – by fax)

Mary L Kevlin, Esq. (w/encs.)
Richard S. Mandel, Esq. (w/encs.)

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