Wars

Big Tobacco, as soon as it gained possession of the Yesmoke.com Web domain, began a battle to take over, or to prevent the registration of the “Yesmoke” trademark around the world, starting from the USA.

Trademark Ownership

The Philip Morris opposition

The opposition of Philip Morris is not based, as is normal for this type of procedure, on prior rights of PM, but on an alleged illegitimate use that would be made of the “Yesmoke” trademark.

Specifically, Philip Morris lists the following points:

  1. The sale, with the Yesmoke trademark, also of PM cigarettes;
  2. The lack of suitable control over the age of the buyers of the cigarettes;
  3. The failure to apply the required taxes on these sales.

The USPTO (United States Patent and Trademarks Office) is not competent to judge disputes of a competitive nature, but only the registrability of a trademark.

Yesmoke responds to the opposition, presents a petition (c.d. “motion to dismiss”), in which it lodges an objection of inadmissibility against PM’s opposition. But in the end, the “Yesmoke” trademark in the USA went to Philip Morris, on August 30, 2006.

Philip Morris wants to prevent the registration of the “Yesmoke” name also in the Russian Federation. “Yesmoke” is purportedly too similar to Philip Morris’s proprietary trademark “E-smoke,” registered on 10 June 2004. By this way the registration of “Yesmoke” has been turned down in the Russian Federation. Yesmoke, of course, formally opposed the sentence also in this case, and on January 9, 2009, the registration of the “Yesmoke” trademark has been accepted in the Russian Federation.

Chronology

  • USA, April 21, 2005: Philip Morris presents the term of its opposition against Yesmoke’s application for a trademark in the USA;
  • USA, July 12, 2005: Philip Morris requests an extension to the term of its opposition against Yesmoke’s application for a trademark in the USA;
  • USA, November 10, 2005: The opposition is presented;
  • USA, December 20, 2005: Yesmoke presents its “motion to dismiss”;
  • USA, January 20, 2006: “Opposition of Philip Morris – USA Inc. to applicant’s motion to dismiss”;
  • USA, March 26, 2006: The “Amended notice of opposition” of Philip Morris is accepted by USPTO (United States Patent and Trademark Office);
  • RUSSIAN FEDERATION, June 26, 2006: The registration of “Yesmoke” has been turned down in the Russian Federation. The refusal is based on a preceding international trademark “e-smoke,” property of Philip Morris Products SA;
  • RUSSIAN FEDERATION, June 26, 2006: the registration of the “Born to Smoke” name has been turned down in the Russian Federation, because “it is composed of an expression that is contrary to morality”;
  • USA, August 30, 2006: The Yesmoke trademark in the USA goes to Philip Morris;
  • RUSSIAN FEDERATION, January 9, 2009: The registration of the “Yesmoke” trademark has been accepted in the Russian Federation.

Yesmoke’s comment

Why Big Tobacco wants this “Trophy?” What will it do if it gets it? Will it manufacture Yesmoke cigarettes? Or maybe it just wants to make sure that world smokers, in the future will never be able to find this brand on the shelves of the local stores.

The paradox is that Yesmoke is becoming more and more like Cuban cigars “100% banned in the USA.” The developments of this situation are going to be interesting.

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