IN THE UNITED STATES
PATENT AND TRADEMARK OFFICE

Mark: CINTRON
Serial No: 77/807946
Office Action Date: 8/05/10
Applicant: Cintron Beverage Group, LLC
Response Date: 2/02/11

Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202—3513

Attention: Mark Mullen, Esquire
Trademark Attorney
Law Of?ce 11 1
Phone: (571) 272-9201

RESPONSE TO OFFICE ACTION

Dear Examiner Mullen:

Thank you for speaking with me on Friday, January 28, 2011 in an effort to forward
this mark to Registration and to preserve the client’s rights in and to the mark. In accordance
with your suggestion, we elect to change the ?ling status of the mark from 1A to §2(t) of the
Lanham Act, based upon the substantially 5 years of continuous and exclusive use of the word
mark CINTRON in connection with other combined-word trademarks held by the owner
Cintron Beverage Group, LLC, and the considerable marketing and investment into
CINTRON as a brand that is well recognized by the public in association with tea and juice
beverages, energy drinks and bottled water in International Classes 30 and 32.
Applicant hereby requests a change of ?ling status from 1A to §2m under the Lanham
Act based upon continuous and exclusive use for substantially 5 years to date.

if the Applicant is relying solely on its ownership of one or more prior registrations as
proof of acquired distinctiveness, as will be shown below regarding the CINTRON mark, the
§2(f) claim does not have to be veri?ed. Therefore, an Applicant or Applicant’s attorney may
authorize amendment of an application to add such a claim through an Examiner’s
amendment, if otherwise appropriate. 37 C.F.R. §2.41(b).

2674918vl
Applicant’s undersigned attorney so authorizes an Examiner’s amendment as

discussed with the Examiner by telephone.
Applicant timely responds within the 6—month permitted response time the key
rejections set forth in the Of?ce Action dated August 5, 2010 related to:
l. §2(f) Acquired Distinctiveness; and
2. Maintained Surname Refusal under 37 CPR. §2.64(a).
Applicant’s change of ?ling status to §2(l) will resolve the surname issue, which has
been maintained by the Examiner throughout the several previous Responses and in an
Appeal Brief in this matter. Applicant does not acquiesce to the assertion that the mark
ClN’l”RON is primarily a surname, and Applicant maintains all previous arguments for why
the mark is, in fact, not based upon a surname. Applicant has not based the mark on Cintron
as a surname. However, Applicant is at an impasse with the Trademark Of?ce regarding the
use of CINTRON as a surname; and instead the option is provided by the Trademark Of?ce to
change the ?ling status of this mark to §2(f), which Applicant accepts in an effort to move
this case forward to registration on the Primary Register, with all rights and privileges
attendant thereto.

Acguired Distinctiveness

The guidelines for establishing acquired distinctiveness are generally covered by the
TMEP in Section 1212. There, the TMEP lays out three types of acquired distinctiveness
evidence:
(1) ownership of one or more prior registrations on the Principal Register for the same
mark, for related goods, mark may be accepted as prima facie evidence of distinctiveness.
‘l‘MEP l2l2.03(b);
(2) ?ve years of continuous and exclusive use of the mark (Trademark Rule 2.41 (b));
and
(3) actual evidence of acquired distinctiveness.

31) Ownership of One or More Prior Registrations on the Principal Register

The ?rst type of evidence turns on Applicant’s prior registration and continuous use of
CINTRON 21 (Reg. 3410949, Reg. Date April 8, 2008) as ?led on Aug. 21, 2006 and
claiming a First date of Use and First Commercial Date of at least August 1, 2006 for energy
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2674918v1
and sports drinks in International Class 32. The CINTRON brand name has not changed
since that ?rst date of use. The CINTRON 21 mark was granted without disclaimer and
without rejection. Applicant submitted one specimen for the class showing the mark as used
in commerce on or in connection with an item in the class, speci?cally images of the mark
CINTRON 21 as it appears on the aluminum can containing the sports drink and energy drink
as sold in interstate commerce. See attached Exhibit 1 showing all three specimen
photographs as ?led on January 18, 2008, showing continuous use of the mark at that time.
Applicant’s also own a prior registration and continuous use of CINTRON ENERGY
ENHANCER (Reg. 3600401, Reg. Date March 31, 2009) as ?led on Aug. 21, 2006 and
claiming a First date of Use and First Commercial Date of at least August 1, 2006 for energy
and sports drinks in International Class 32. The CINTRON brand name has not changed
since that ?rst date of use. The CINTRON ENERGY ENI—IANCER mark was granted with a
disclaimer of the words “ENERGY ENHANCER” except as used in Applicant’s mark — but
with no disclaimer required of the term “CINTRON” in the combined word mark. Applicant
submitted one specimen for the class showing the mark as used in commerce on or in
connection with an item in the class, speci?cally images of the mark CINTRON ENERGY
ENHANCER as it appears on the aluminum can containing the sports drink and energy drink
as sold in interstate commerce. See attached Exhibit 2 showing the specimen photograph as
?led on January 19, 2009, showing continuous use of the mark at that time.
The following are general guidelines regarding claiming ownership of prior
registrations as a method of establishing acquired distinctiveness.
1212.04(a) Sufficiency of Claim vis-a-vis Nature of the Mark: The Examining
attorney has the discretion to determine whether the nature of the mark sought to be registered
is such that a claim of ownership of a prior registration for the same or similar goods or
services is enough to establish acquired distinctiveness. For example, if the mark sought to be
registered is deemed to be highly descriptive or misdescriptive of the goods or services named
in the application, the examining attorney may require additional evidence of acquired
distinctiveness. See In re Loew ’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir.
1985) (claim of ownership of a prior registration held insuf?cient to establish acquired
distinctiveness where registration was refused as primarily geographically deceptively
misdescriptive); In re Kerr-McGee Corp., 190 USPQ 204 (TTAB 1976) (claim of ownership

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26749l8v|
of prior registrations held insuf?cient to establish acquired distinctiveness where registration
was refused on ground that the subject matter was merely an ornamental border or “carrier”
for words and symbols appearing within). These cases do not apply in this situation and
should not prevent a ?nding of acquired distinctiveness.
12120410) Relatedness of Goods or Services: The examining attorney should
determine whether the goods or services named in the application are suf?ciently similar to
the goods or services named in the prior registrati0n(s). If the relatedness is self-evident, the
examining attorney can generally accept the §2(f) claim without additional evidence. This is
most likely to occur with ordinary consumer goods or services where the nature of the goods
or services is commonly known and readily apparent (e. g., a prior registration for hair
shampoo and new application for hair conditioner). Applicant asserts that the relatedness is
evident of the above identi?ed marks containing exactly the recognized brand name that is
under application. Consequently Applicant is not reiterating the section of this code regarding
when the relatedness is not self-evident, requiring expert testimony.
1212.04th Registration Must Be in Full Force and Effect and on Principal Register:

Applicant’s prior registrations as identi?ed above are active and in full force and on the
primary register. Consequently Applicant is not reiterating the section of this code regarding
when these factors are absent.

1212.04te) Form of §2§ I) Claim Based on Ownership of Prior Registrations:

Applicant hereby adopts the following language used to claim distinctiveness under §2(f) on
the basis of ownership of one or more prior registrations:
The mark has become distinctive of the goods (or services) as evidenced by
ownership of US. Registration No(s). CINTRON ENERGY ENHANCER (Reg.
3600401, Reg. Date March 31, 2009) and CINTRON 21 (Reg. 3410949, Reg. Date April
8, 2008) on the Principal Register for the same mark for the same or related goods or
services. Accordingly, Applicant’s ownership is demonstrated in the US Trademark
Office record from a first date of at least August 1, 2006, substantially 5 years ago, and
the intervening registrations demonstrate both growth and expansion of the products
under the CINTRON brand, as well as continued use and exclusivity.

12) Five Years of Continuous and Exclusive Use of the Mark tTMEP 1212.05)

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2674918vl
The following are general guidelines regarding the statutorily suggested proof of ?ve
years’ use as a method of establishing acquired distinctiveness.
1212.051a) Suf?ciency of Claim Vis—a-Vis Nature of the Mark: For most surnames,
the statement of ?ve years’ use will be suf?cient to establish acquired distinctiveness.
1212.051b) “Substantially Exclusive and Continuous:” The ?ve years of use do not
have to be exclusive, but may be “substantially” exclusive. This makes allowance for use by
others that may be inconsequential or infringing, which does not necessarily invalidate the
applicant’s claim. L.D. Kichler Co. v. Davoz’l, Inc, 192 F.3d 1349, 52 USPQ2d 1307 (Fed.
Cir. 1999). Applicant has conducted commercially provided searches in countries where they
believe other might be using the mark to assure exclusivity, not just in the US, where they
have maintained exclusivity, but around the world. In fact a search was conducted last week
in Trinidad by Thompson and Thompson for Applicant — and no use of CINTRON for any
beverage product was found. Applicant is also actively enforcing the exclusivity of its mark
in Nigeria, Zimbabwe and South Africa. In July 2010, a company in Panama approached
Applicant seeking permission distribute the CINTRON brand of beverages, but requested that
they be permitted to name their Panamanian company “Cintron Panama” or a similar blending
with Applicant’s brand name CINTRON. Applicant refused permission to dilute the
exclusivity of the mark, and ClNTRON PANAMA was denied. Documentation and sworn

statements are not currently provided, but will be provided upon request for these and other
instances in which exclusivity was maintained.
Applicant’s use of the mark during the ?ve years was continuous, with no period of
“nonuse” or suspension of trade in the goods or services in connection with which the mark is
used, and to the contrary use has been consistently expanded during this period.
1212.05ng Use “as a Mark:” The substantially exclusive and continuous use must be
“as a mark.” 15 U.S.C. §1052(i). See In re Craigmyle, 224 USPQ 791 (TTAB 1984)
(registrability under §2(f) not established by sales over a long period of time where there was
no evidence that the subject matter had been used as a mark); In re Kwik Lok Corp, 217
USPQ 1245, 1248 (TTAB 1983) (declarations as to sales volume and advertising expenditures
held insuf?cient to establish acquired distinctiveness. Indeed, Applicant’s CINTRON brand
was so maintained in the above identi?ed marks and in general use of the brand.

2674918vl
1212.05td) Form of the Proof of Five Years’ Use: If the applicant chooses to seek
registration under §2(t), 15 U.S.C. §1052(i), by using the statutory suggestion of ?ve years 01’
use as proof of distinctiveness, the applicant should submit a claim of distinctiveness that
reads as follows.
Accordingly, Applicant so states that:
The CINTRON mark (77/77807946) has become distinctive of the goods (or
services) through the applicant’s substantially exclusive and continuous use in
commerce for at least the five years immediately before the date of this statement.
The claim of?ve years of use is generally required to be supported by an af?davit or
declaration under 37 CPR. §2.20, signed by the applicant or representative. See 37 CPR.
§2.41(b). Accordingly attached is new sworn Declaration under 37 CPR. § 2.20 by Richard
Wyatt, CEO of Cintron Beverage Group, LLC, (attached as Exhibit 3), which reiterates the
sworn Declaration of record by Richard Wyatt, signed 6/26/ 10, as ?led with the Request for
Reconsideration after Final in this case on 7/2/10. The present Declaration further adds that
the mark has become distinctive or that the Applicant believes that the mark has become
distinctive, it speci?cally contain a refers to distinctiveness as applied to Applicant’s goods or
services, or to use in association with the Applicant’s goods or services, to relate the
distinctiveness created by the ?ve years’ of continuous and substantially exclusive use to the
goods or services speci?ed in the application. While a clarifying response does not have to be
veri?ed, a substitute statement as in the present situation must be veri?ed, i.e., supported by a
declaration under 37 C.F.R. §2.20, signed by Applicant.
Thus, the Declaration shows that the application has been in continuous and exclusive
use in commerce for at least since the origin of the company in 2006, which is now
substantially 5 years ago.
Adding “fruit-?avored beverages” to Applicant’s sports and energy drinks the
previous registrations in Class 32 is certainly a natural area of expansion, wherein the
consumers would believe that such products emanate from a single source, Cintron Beverage
Group, LLC, especially given Applicant’s heavy advertising campaign regarding the new
product. Similarly, the expansion into what has proven to be an ever expanding selection of
tea-based beverages, as registered with a ?rst date of use in May 2007 in Class 30 is also a
natural area of expansion, wherein the consumers would certainly believe that such products
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2674918v l
emanate from a single source, Cintron Beverage Group, LLC, again especially given
Applicant’s heavy advertising campaign regarding the new product. These facts further
demonstrate both growth and expansion of the products under the CINTRON brand, as well
as continued use and exclusivity over a period of substantially 5 years.
The term CINTRON is a term coined by Applicant and a source identifier of their
brand, which is recognized world wide as a source of beverages, such as energy and sports
drinks, and more recently with fruit based and tea-based beverages. As indicated in the sworn
Declaration of Richard Wyatt attached hereto Applicant has had annual sales of beverages
with the CINTRON mark totaling over $3 million dollars since 2007 alone. Moreover,
Applicant promoted its CINTRON brand, shown as the present trademark, by engaging in
sponsorships at high-profile events such as:
Power-Boating World Championships;
the X-Games;
sponsorship of a Cintron Race Boat; and
promotion over the Internet and by social networking sites, such as Facebook.*
The expenditures for these marketing channels, together with advertising and
promotion are in excess of $1 million dollars in expenditures by Applicant.* Furthermore,
consumers recognize CINTRON beverages across the United States, Australia, Central
America and Africa. Thus, it is respectfully asserted that CINTRON is well recognized in
light of continuous and exclusive use, and has acquired distinctiveness as required under §2(f)
over use for substantially 5 years.

3 1212.06 Establishin Distinctivenessb Actual Evidence

Different types of evidence have been used, alone or in combination, to establish
acquired distinctiveness. No single evidentiary factor is determinative. The value of a
speci?c type ol’evidence and the amount necessary to establish acquired distinctiveness will
vary according to the facts of the speci?c case, but the following headings are useful.
1212.06ta) Long Use of the Mark in Commerce: See foregoing discussion of 5 years
of continuous and exclusive use.

1212.06gb) Advertising Expenditures: See Declaration of Richard Wyatt. Applicant
asserts that it has been successful in educating the public to associate the proposed mark with
a single source, as shown in the material attached to the Declaration. Applicant further
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2674918v1
indicates in the Declaration the types of media through which the goods and services have
been advertised (e.g., the Internet).
1212.061c) Af?davits or Declarations Asserting Recognition of Mark as Source
Indicator: Such material is not applied at this time, but could be acquired.
1212.06gd) Survey Evidence, Market Research and Consumer Reaction Studies: Such

material is not applied at this time, but could be acquired.
1212.061e) Miscellaneous Considerations Regarding Evidence Submitted to Establish
Distinctiveness: Cintron Beverages Group is the first and only user of CINTRON in classes
30 and 32 for the identi?ed beverages, but certainly not the sole producer of such goods, since
others produce under other brand names.
1212.07 Form of Application Asserting Distinctiveness: To base a registration on
acquired distinctiveness under §2(t), 15 U.S.C. §1052(f), an applicant must indicate its intent
to do so. See foregoing underlined statements in opening section and bold statements above,
that registration is requested under §2(i); a statement that the mark has become distinctive, or
that the applicant believes the mark has become distinctive of the goods or services in
commerce; the statement relating to ?ve years’ use in commerce as suggested in §2(f); and
further in light of the evidence submitted in support of acquired distinctiveness.

In conclusion, Applicant submits that for all of the reasons articulated above, its
application for changing status to §2(f) as stated, and the supporting evidence of substantially
5 years of continuous and exclusive use as a trademark should be accepted as proving that on
a basis of acquire distinctiveness — the mark CINTRON should be published, and if not
opposed, registered on the Primary Register. Applicant requests that the refusal of
registration based on an assertion of surname is now moot in light of the acquired
distinctiveness, and it is requested that the change be made by Examiner’s Amendment and
the mark moved to registration.
If, however, the Examining Attorney disagrees with Applicant’s position or ?nds that
additional evidence is needed, Applicant asks the Examining Attorney to contact the

26749| 8vl
undersigned to permit submission of further evidence of acquired distinction under §2(f) for
this mark.

Respectfully submitted,

1

Date: February 2, 201 1 Evelyn . McConathy
Attorney for Applicant
MONTGOMERY, McCRACKEN,
WALKER & RHOADS, LLP
123 South Broad Street
Philadelphia, PA 19109-1099
Tel: (215) 772.7550
Fax: (215) 772.7620

2674918v1
EXHIBIT 1
LITHO LIMIT (8.29 )
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tions and color pleads with a Customer signature. ior any errors.
The patty signing above (Customer) agrees thal Ream Bevemga Can Gamay (‘FIBCC’) win not he rasponsble. a?enha return of black and white proofs. solar separa
ing noncompliance with Iocai. state or Fedare! laws and
omi?ons, and ate. overlooked by the Customer. R806 was no respm’b?ily for such approvad proofs and sapaxa?ons, or for sawices I products made using them. regard
of third parties in connec?on with trademarks. designs. labels.
reguia?ons Including. but not limited to, the Federal Food. Drug and Cosmetic Ad, the Federal Fair Packaging and Labeling Act, m daims or for con?ict with the rights
by Race as a rasui‘l of any adians, Mending by a third party, based on such grounds.
copyrights or unéair competition, and by signing above the Customer agrees to indemnily and hold RBCC harmlassfor any and all damages sustained
EXHIBIT 2
EXHIBIT 3
IN TIIE UNITED STATES
PATENT AND TRADEMARK OFFICE

Mark: CINTRON
Serial No: 77177807941 and 77/807,946
Of?ce Action Date: 8/05/10
Applicant: Cintron Beverage Group, LLC
Response Date: 2/01/1 1

Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3513

Attention: Mark Mullen, Esquire
Trademark Attorney
Law Of?ce ll 1
Phone: (57]) 272—9201

DECLARATION OF RICHARD WYATT
In support of US Application Serial Nos. 77/807,941 and 77/807,946

Applicant hereby respectfully submits the following Declaration in support of the request
for the change in status to §2(l), based upon acquired distinctiveness of the marks associated
with the above—identi?ed trademark Applications for a continuous and substantially exclusive
period of substantially 5 years.

The undersigned declares and states:
1. I am the ChiefExccutive Of?cer of Cintron Beverage Group, LLC (Applicant).
2. l have personal knowledge of the facts as stated herein and am quali?ed to make such
statements.

3. Applicant, Cintron Beverage Group, LLC, was founded in 2006, and it produces and
distributes beverages, including a line of energy drinks and teas, under the brand name
ClNTRON.
4. Applicant is also the owner of US Registrations Nos. 3,410,949 for CINTRON 21 and

3,600,401 for CINTRON ENERGY EN] IANCER, which are used in association with
Applicant’s sports and energy drinks, although the product lines under the CINTRON brand have
expanded into tea—based and fruitvbased beverages.

Clean Copy Declaration of Richard Wyatt for 2(f) amendment for Cintron Beverage Group
5. The mark CINTRON was ?rst used in commerce in association with beverages,
speci?cally energy drinks and sports drinks, as early as August 2006.
6. Accordingly, the mark CINTRON has been in continuous and substantially exclusive use
in commerce to describe Applicant’s beverages for substantially 5 years, over which time, the
mark has become distinctive, or at least Applicant believes that the mark has become distinctive.
7. US Application Serial Nos. 77/807,941 (word mark) and 77/807,946 (stylized word
mark) have over the past at least 5 years acquired speci?c distinctiveness as applied to
Applicant’s goods, or as used in association with the Applicant’s goods or services, as speci?ed
in the application in Class 30 in association with “tea-based beverages,” and in Class 32 in
association with “energy drinks, sports drinks, fruit ?avored beverages” as show by the specimen
photographs provided with the ?ling of the application.
8. Since 2006, Applicant has had annual sales of beverages bearing the CINTRON mark
totaling over three-million dollars.
9. Applicant spends approximately one-million dollars each year on marketing in
connection with CINTRON-beverage-related advertising.
10. Applicant also promotes its CINTRON mark by promotional venues including
sponsorships, such as the following:

0 Applicant was a key sponsor at the Power Boating World Championship in Key West,
Florida in February 2010, featuring a “CINTRON-sponsored boat.” See attached
photograph at Exhibit 4.
0 Applicant was a host at the X-games in Aspen, Colorado in January 2010, hosting a party
featuring CINTRON energy drinks. See attached photograph at Exhibit 5.
0 Applicant sponsors a race boat with the CINTRON mark thereon. The race boat has been
in approximately twenty (20) separate-race venues in the United States since 2007. See
attached photograph at Exhibit 6.
0 Applicant has internct-commercial videos, such as Facebook, featuring CINTRON
beverages therein.
11. Applicant is widely known by consumers as a source of innovative-energy drinks in the
United States.
12. Applicant has sold CINTRON beverages across the continental United States and
Hawaii; as well as in Australia, and countries in Central America and Africa.

2674535_l .DOC -2-
13. The und ers ign ed is una war e of any con sum ers that hav e ass oci ate d the CI NT RO N mar k

with a person or surname.
14. I dec lar e furt her that all sta tem ent s mad e her ein are of my own kno wle dge are true and

that all statements made on inf orm ati on and bel ief are bel iev ed to be true ; and fur the r tha t the se

statements wer e mad e wit h the kno wle dge that will ful fals e sta tem ent s and the like so mad e are

punishable by ?ne or imprisonm ent , or bot h, und er Sec tio n 100 1 of Tit le 13 of the Uni ted Sta tes

Code and that suc h will ful fals e sta tem ent s may jee par diz e the vali dity of the appl icat ion or any

regisrrations issuing thereon.

Dated: February 1, 2011
I iehard Wyatt, CEO
Cintron Beverage Group, LLC

Clean Copy Declaration of Richard Wyatt for 2(0 amendment for Cintron Beverage Group
-3-
EXHIBIT 4
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Liquid Energy

Tees and Frurt Drinks r

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KEY WEST, Fla. – Offshore Powerboat Race winner of the World Championship 2010

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overlhe smooth. 42.47miie course that began and ended In Ke,‘ West
Harbor. For the lust tour laps. Cintron — competing In the tour-host
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Scier and lhrotiled in owner Bot) Bull both oti.llssouil But atTurn 24
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mm n {mt—0n 1 ‘ Friday The linal event to determine world champions in 13 classes is Sunday.

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EXHIBIT 5
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EXHIBIT 6
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u-u-lllli’C “I‘lrll .?lE-iiiii?syk Saki}- l‘lIAIII’ H” I“?! ‘9’“ y snemap liiwiqiilw iu kl?l‘il‘i In:
Sloller 1.060 HP x 2
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