The opinion
THIS OPINION IS A
PRECEDENT OF THE TTAB
Mailed: September 26, 2008
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Corporacion Habanos, S.A.
v.
Anncas, Inc.
_____
Opposition No. 91165519
to application Serial No. 78363024
filed on February 5, 2004
_____
David B. Goldstein and Michael Krinsky of Rabinowitz,
Boudin, Standard, Krinksky & Lieberman, P.C. for Corporacion
Habanos, S.A.
Jesus Sanchelima, Esq. of Sanchelima & Associates, P.A. for
Anncas, Inc.
______
Before Hairston, Walsh and Bergsman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Anncas, Inc. (applicant) filed an application to
register the mark HAVANA CLUB (in standard character form
with a disclaimer of “HAVANA”) for goods ultimately
identified as “cigars made from Cuban seed tobacco” in
International Class 34.1
1
Serial No. 78363024, filed on February 5, 2004, based on an
allegation of a bona fide intention to use the mark in commerce.
Opposition No. 91165519
Registration has been opposed by Corporacion Habanos,
S.A. (opposer). Opposer alleges that it is in the cigar
business and, under Cuban law, is authorized to export Cuban
cigars from Cuba; that it exports, advertises and otherwise
deals in cigars that are of 100% Cuban origin, both in
tobacco and manufacture; that it is the owner of
Registration No. 2177837 for the mark HABANOS UNICOS DESDE
1492 and design for cigars and related products in
International Class 34; that this mark translates into
English as “Unique Havana Cigars Since 1492;” that
applicant’s mark HAVANA CLUB is primarily geographically
deceptively misdescriptive under Section 2(e)(3) of the
Trademark Act and deceptive under Section 2(a) of the Act;
and that applicant “made a false, material representation to
the USPTO when it authorized amendment of its identification
of goods from ‘cigars’ to ‘cigars made from Cuban seed
tobacco,’ in response to the USPTO’s September 1, 2004
Office action refusing registration of the mark as primarily
geographically deceptively misdescriptive.”
2
Opposition No. 91165519
Applicant, in its answer, denied the salient
allegations of the notice of opposition.2
Evidentiary Objections
We turn first to opposer’s objections to portions of
applicant’s evidence. Opposer has objected to the lists of
applications and registrations from the USPTO’s TESS
database, and records of applications and registrations from
the lists. This evidence was introduced as exhibits to the
testimony depositions of applicant’s witnesses and by way of
applicant’s notice of reliance. Opposer argues that the
lists and records of registrations and applications are
irrelevant. Trademark Rule 2.122(e) specifically provides
that USPTO official records, such as TESS lists of
registrations and applications, and the records thereof, may
be introduced by notice of reliance. Such evidence may also
be introduced during the testimony of a witness. Opposer’s
objection to this evidence on the ground of relevance goes
to the weight of the evidence rather than its admissibility,
and we will therefore consider the evidence for whatever
probative value it may have.
2
Applicant also asserted abandonment, lack of standing, and lack
of a “place/goods” association as affirmative defenses. However,
these are not true affirmative defenses. Moreover, applicant
subsequently withdrew its assertion of lack of a “place/goods”
association. In addition, applicant filed a counterclaim seeking
to cancel opposer’s pleaded Registration No. 2177837 on the
ground of abandonment. The Board, in a decision issued November
29, 2006, granted summary judgment in opposer’s favor on the
counterclaim.
3
Opposition No. 91165519
Opposer has objected to Bock Testimony Exhibit 28, a
copy of a third-party advertisement for “Havana Honeys”
cigars, introduced during the testimony of applicant’s
president, William Bock. Because Mr. Bock was unable to
identify the publication in which the advertisement appeared
or to state with certainty that he downloaded the
advertisement from a website, opposer’s objection to the
advertisement on the ground that the exhibit was not
properly authenticated is sustained. In view thereof, we
have not considered this exhibit in reaching our decision
herein.
Opposer has objected to Bock Testimony Exhibit 70, a
copy of an article which appeared in Smoke Magazine Online,
introduced during the testimony of Mr. Bock. Applicant
offered the article to show that another entity in the
United States distributes cigars made from Cuban seed
tobacco. Opposer objects to the article on the ground that
it is hearsay to the extent that applicant seeks to rely on
any statements made therein for the truth of the matters.
We sustain opposer’s objection to this exhibit because
it is hearsay. Statements made by others in a magazine
article are not admissible to prove the truth of the
matters. In view thereof, we have not considered this
exhibit in reaching our decision herein.
4
Opposition No. 91165519
Opposer has objected to the testimony of Mr. Bock
concerning what tobacco growers and others told him about
Cuban seed tobacco on hearsay grounds. Opposer’s objection
is sustained as the statements of what tobacco growers and
others told Mr. Bock are hearsay. In view thereof, we have
not considered this testimony in reaching our decision
herein.3
Finally, applicant has objected to portions of the
testimony of opposer’s witness Richard B. Perelman, on the
ground that Mr. Perelman is not qualified as an expert in
“either consumer perception or growing tobacco or
Applicant’s registration effect of [sic] his client’s
marketing plans.” (Applicant’s Statement Of Evidentiary
Objections, Page 5). Mr. Perelman has been the author since
1994 of Perelman’s Pocket Cyclopedia of Cigars, an annual
publication which catalogs more than 1200 brands of cigars
marketed in the United States. In addition, Mr. Perelman
has authored three editions of Perelman’s Pocket Cyclopedia
of Havana Cigars which covers Cuban cigar production and
Cuban cigar brands. Since 2004, he has been the editor of
the website CigarCyclopedia.com which offers, inter alia,
3
We should add that even if we had considered the exhibits and
testimony introduced by applicant to which we have sustained
opposer’s objections, our decision herein would be the same. This
is because the exhibits and testimony do not change our finding,
discussed below, regarding whether the consuming public is likely
to believe that Havana indicates the origin of the cigars
5
Opposition No. 91165519
information about cigars, accessories, cigar brand news and
issues. He has made two trips to Cuba under license from
the Treasury Department of the United States, including
visits to Cuban tobacco plantations and he has contributed
numerous articles concerning cigars to publications on
cigars.
In view of his background and experience, we find Mr.
Perelman to be qualified as an expert on cigars and Cuban
cigars and tobacco, in particular. In reading his
testimony, however, we have not considered him to be an
expert in trademark law, and any opinion relating to the
ultimate question of law in this case has been given no
weight.
The Record
The record consists of the pleadings and the file of
the involved application. Opposer submitted the trial
testimony on written questions (with exhibits) of Manuel
Garcia Morejon, opposer’s Commercial Vice-President, and
Eumelio Espino Marrero, Technical and Productive Under
Director of the Cuban Institute of Tobacco Research; and the
trial testimony (with exhibits) of Richard B. Perelman,
President of Perelman Pioneer & Company. In addition,
opposer submitted a notice of reliance on the following:
identified in the application, when in fact the cigars will not
come from Havana.
6
Opposition No. 91165519
(1) portions of the discovery deposition of William Bock,
applicant’s President, (2) entries from dictionaries, an
encyclopedia and gazetteer for “Havana” and “Cuba,” (3)
excerpts from books and magazines with references to
“Havana” and “Havana cigar(s),” (4) printouts of newspaper
articles from the Westlaw database with references to
“Havana” and “Havana cigar(s),” (5) USPTO Office actions in
third-party applications for marks that contain “HAVANA,”
(6) applicant’s responses to opposer’s first and second set
of interrogatories, (7) contents of the files of TTAB
proceedings in which opposer was plaintiff, (8) a status and
title copy of opposer’s pleaded Registration No. 2177837,
(9) a copy of a license from the Department of the Treasury
which authorizes opposer to prosecute this proceeding, and
(10) copies of magazine advertisements featuring opposer’s
products.
Applicant has submitted the trial testimony (with
exhibits) of William Bock, applicant’s President, and
Benjamin Gomez Jr., President of Inter America Cigars. In
addition, applicant submitted a notice of reliance on third-
party registrations for marks that contain “HAVANA,” or
“HABANA,” or variations of these terms.
The case has been fully briefed.
Preliminary Matter
7
Opposition No. 91165519
Applicant, for the first time in its brief, argues that
Section 211(b) of the Omnibus Consolidated and Emergency
Supplemental Appropriations Act of 1999 bars opposer from
bringing this opposition. Section 211(b) provides that:
No U.S. court shall recognize, enforce or otherwise
validate any assertion of treaty rights by a
designated national or its successor-in-interest
under sections 44(b) or (e) of the Trademark Act of
1946 (15 U.S.C. 1126(b) or (e)) for a mark, trade
name, or commercial name that is the same as or
substantially similar to a mark, trade name, or
commercial name that was used in connection with a
business or assets that were confiscated unless the
original owner of such mark, trade name, or
commercial name, or the bona fide successor-in-
interest has expressly consented.
Applicant states that:
Opposer is a Cuban entity and Applicant’s purported
trademark rights fall under the terms of Section 211
of the Omnibus Consolidated and Emergency
Supplemental Appropriations Act on [sic] 1999.
Havana Club Holdings, S.A. v. Galleon, S.A., 203
F.3d 116, 53 USPQ2d 1609, 1618 (2d Cir. 2000)
(italics in original) The designation HAVANA CLUB
was hotly litigated by the Republic of Cuba, through
another state instrumentality. Id. The common
owner of the mark is the Republic of Cuba. The real
motivation in opposing Applicant’s mark registration
[sic], among dozens of other marks registered and/or
pending is the ulterior motivation to protect a
confiscated mark.
(Brief at 21)
Applicant’s argument is meritless because applicant has
failed to point to any part of Section 211(b) that bars this
proceeding, and we find none. Also, although applicant
cites to Havana Club Holding, S.A. v. Galleon, S.A., supra,
as support for its position that Section 211(b) bars opposer
8
Opposition No. 91165519
from bringing this opposition, that case does not support
applicant’s position. Indeed, in that case, which involved
a false designation of geographic origin claim, the Court
explicitly held that Section 211(b) does not apply to such a
claim, because it is not based on any ownership claim to a
confiscated mark. Here, opposer’s Sections 2(e)(3) and 2(a)
claims are not based on any ownership claim to a confiscated
mark, and Section 211(b) has no applicability.
Standing
We turn then to the issue of standing. Applicant
maintains that opposer lacks standing to bring this
proceeding and points to opposer’s failure to satisfy the
standing requirements set forth in Lujan v. Defenders of
Wildlife, 504 U.S. 555, 560, 119 L.Ed.2d 351, 112 S. Ct.
2130 (1992). However, applicant’s reliance on Lujan is
misplaced inasmuch as the standing test set forth therein is
for federal court Article III standing, not standing for an
opposition proceeding.
To establish standing in an opposition, an opposer must
show that it has a “real interest” in the outcome of the
proceeding; that is, that it has a direct and personal stake
in the outcome of the opposition. See Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers
Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490,
2 USPQ2d 2021 (Fed. Cir. 1987).
9
Opposition No. 91165519
Opposer has submitted a status and title copy of its
pleaded Registration No. 2177837 issued August 4, 1998
(Renewed) for the mark HABANOS UNICOS DESDE 1492 and design
(with all the literal elements disclaimed), shown below, for
cigars and related products. Opposer’s notice of reliance,
ex. 17.
In addition, opposer’s Commercial Vice-President, Mr.
Morejon testified that opposer currently uses its registered
mark in advertising in United States publications and
intends to sell 100% Cuban-origin cigars in the United
States as soon as United States laws allow. Morejon dep. at
41-52.
Further, opposer, a Cuban entity subject to the United
States embargo on Cuban goods, has also submitted a letter
from the Department of Treasury confirming that Cuban
entities are permitted under Section 515.527 of the Cuban
Assets Control Regulations, 31 C.F.R. Part 515, to “file an
opposition to the registration of a new trademark … where
10
Opposition No. 91165519
these actions relate to protection of a trademark in which
Cuba … has an interest.” Opposer’s notice of reliance ex.
18.
In view of the foregoing, we find that opposer has a
“real interest” in the outcome of this proceeding; that
opposer, as a Cuban entity, is not restricted from pursuing
this opposition; and that opposer has established its
standing.4 So as to be perfectly clear, opposer has
standing, although it does not and cannot engage in any
business in the United States due to the embargo on Cuban
goods.
The Section 2(a) Claim
We need not consider opposer’s Section 2(a) claim in
view of the Federal Circuit’s pronouncement that it
“anticipates that the PTO will usually address
geographically deceptive marks under subsection 2(e)(3) of
the amended Lanham Act rather than subsection 2(a).” In re
California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853,
1856-57 (Fed. Cir. 2003). See also Corporacion Habanos S.A.
v. Guantanamera Cigars Co., 86 USPQ2d 1473, 1475 (TTAB 2008)
[“… we will give no further consideration to [opposer’s]
4
We note that applicant also argues, for the first time in its
brief, that opposer is not the real party in interest to bring
this opposition because another entity has superior rights in the
term HABANA. Apart from the fact that it is clearly untimely for
applicant to raise this issue for the first time in its brief,
opposer has not claimed rights in the term HABANA per se, and has
11
Opposition No. 91165519
Section 2(a) claim, but consider the Section 2(e)(3)
ground”].
The Section 2(e)(3) Claim
The elements of a Section 2(e)(3) claim are as follows:
(1) the primary significance of the mark is a generally
known geographic location; (2) the consuming public is
likely to believe the place identified by the mark indicates
the origin of the goods bearing the mark (i.e., that a
goods/place association exists), when in fact the goods do
not come from that place; and (3) the misrepresentation
would be a material factor in the consumer’s decision to
purchase the goods. California Innovations, supra, 329 F.3d
at 1341, 66 USPQ2d at 1858.
(1) The primary significance of the mark is a
generally known location.
Applicant does not dispute that the primary
significance of the mark HAVANA CLUB is a generally known
location. Moreover, we note that opposer has shown from
entries in The Columbia Gazetteer of North America (2000),
The Britannica Encyclopedia Online, and ten English language
dictionaries that “Havana” is the name of the largest city
and chief port in the West Indies, and the political,
economic, and cultural center of Cuba. We find therefore
that opposer has established that Havana is a geographic
disclaimed any rights to the wording in its mark which includes
12
Opposition No. 91165519
location in Cuba and that Havana, Cuba is known to the
relevant public. In addition, we find that the primary
significance of the mark HAVANA CLUB is geographic. The
word CLUB does not detract from the primary geographic
significance of the mark. See, e.g., In re Wada, 194 F.3d
1297, 52 USPQ2d 1539 (Fed. Cir. 1999) [The mark NEW YORK
WAYS GALLERY projects a primarily geographic significance
and the addition of WAYS GALLERY to NEW YORK does not
detract from the primary significance of the mark]; In re
Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000) [The primary
significance of the marks ROYAL HAVANA RESORT & CASINO and
HAVANA RESORT AND CASINO is geographic, and the additional
wording in the marks does not detract from the geographic
meaning].
(2) The consuming public is likely to believe the
place identified by the mark indicates the origin of the
goods bearing the mark when in fact the goods do not come
from that place.
This element involves two issues. The first issue is
whether there is a goods/place association; the second issue
is whether or not applicant’s goods in fact come from the
place named. With respect to the first issue, applicant
does not dispute a goods/place association. As previously
noted, applicant initially asserted in an affirmative
the plural term, i.e., HABANOS.
13
Opposition No. 91165519
defense that there is no “place/goods” association.
However, applicant subsequently withdrew this affirmative
defense and does not now argue in its brief that there is no
goods/place association. In any event, opposer’s evidence
establishes a goods/place association. Opposer submitted,
inter alia, an entry for the word “Havana” taken from the
Columbia Gazetteer (2000) which states that “local
industries include … factories making the famous Havana
cigars.” Opposer’s notice of reliance no. 2. In addition,
the Encyclopedia Britannica Online entry on “Havana”
identifies “tobacco production, particularly the world-
famous Havana cigars” as one of Havana’s important
industries. Opposer’s notice of reliance no. 3. Further,
several English language dictionary entries define “Havana”
as both the capital of Cuba and as a cigar made in Cuba or
made from Cuban tobacco. Opposer’s notice of reliance no.
4. Also, in several news and feature stories and excerpts
from cigar publications, “Havana” is used to denote a cigar
made in Cuba. Opposer’s notices of reliance nos. 5-10.
We turn then to the second issue in this element, that
is, whether or not applicant’s goods will originate or come
from the place named in the mark. Of course, in view of the
United States embargo on Cuban goods, applicant is barred
from selling cigars made or manufactured in Cuba. See 31
C.F.R § 515.204. However, a product may be found to
14
Opposition No. 91165519
originate from a place, even though the product is
manufactured elsewhere. See In re Nantucket Allserve Inc.,
28 USPQ2d 1144 (TTAB 1993) [NANTUCKET NECTARS held primarily
geographically descriptive of soft drinks, even though the
goods were manufactured elsewhere, where the record showed
that applicant’s headquarters and research and development
division were on Nantucket; the distributor of the goods was
located on Nantucket; the goods were sold in the applicant’s
store on Nantucket; and the specimens were labels that bore
a picture of Nantucket, stated that the goods were “born” or
“created” on Nantucket, and mentioned no other geographic
location].
In addition, a product might be found to originate from
a place where the main component or ingredient was made in
that place. See In re Joint-Stock Company “Baik,” 80 USPQ2d
1305 (TTAB 2006) [BAIKALSKAYA – the Russian equivalent of
“from Baikal” or “Baikal’s” – held primarily geographically
descriptive of vodka, where the record showed that applicant
was located in Irkutsk, Russia, a city near Lake Baikal, and
that applicant’s vodka is made from the water of Lake
Baikal].
On the other hand, a product may be found not to
originate from a section or area of a metropolitan area if
the record shows only that the applicant is located
somewhere in the metropolitan area. In re South Park Cigar
15
Opposition No. 91165519
Inc., 82 USPQ2d 1507 (TTAB 2007) [YBOR GOLD held primarily
merely geographically misdescriptive of cigars and tobacco
where the record showed that applicant was located somewhere
in Tampa, Florida but not the Ybor City section of Tampa].
Thus, the central issue in this case is whether
applicant’s “cigars made from Cuban seed tobacco” should be
deemed to originate from Havana, Cuba, although they will be
made elsewhere. Opposer maintains that such goods should
not be deemed to originate or come from Havana, Cuba. In
particular, opposer argues that “‘Cuban seed tobacco’ is a
term used in the United States to refer to tobacco grown
outside Cuba and claimed to be grown from seeds that are
multi-generation descendants of seeds taken from Cuba at
least 45 years ago,” “that there is no connection between
‘Cuban seed tobacco’ and Havana, or Cuba or Cuban tobacco or
cigars other than the claim of distant descent,” (Brief at
3) and this “claim of distant descent” is insufficient to
warrant a finding that cigars made from “Cuban seed tobacco”
come from or originate in Havana, Cuba.
Opposer offered the testimony of Eumelio Espino
Marrero, Technical and Productive Under Director of the
Cuban Institute of Tobacco Research. Mr. Espino testified
that tobacco grown outside Cuba over many generations will
not and cannot replicate the qualities or characteristics of
tobacco grown in Cuba. According to Mr. Espino, the
16
Opposition No. 91165519
characteristics of a cigar are based on four factors,
namely, the kind (genetic type and purity) of the tobacco;
the soil; the climate; and the agricultural and
manufacturing processes. Mr. Espino testified that if any
“one of these factors is missing, then you don’t get the
quality that distinguishes the Habano in the world.” Espino
dep. at 34. According to Mr. Espino, “in another
environment in another location, the [tobacco] plant is not
going to express with loyalty the characteristics that it
does express in the area or in the zone that we cultivated
in Cuba.” Espino dep. at 38. Mr. Espino observed that
tobacco grown in Nicaragua, for example, in the 1980’s from
seeds taken from Cuba in the 1960’s “no longer was the
original Cuban tobacco.” Espino dep. at 39.
Opposer also offered the testimony of Richard B.
Perelman, president of Pioneer & Company and editor of
Perelman’s Pocket Cyclopedia of Cigars. With regard to the
meaning of “Cuban seed tobacco” in the United States, Mr.
Perelman testified that:
It is generally understood to the point of not ever
being questioned that when there is a reference to
Piloto Cubano or to Cuban seed, we’re talking about
some distant relationship with Cuba at a time prior
to the United States trade embargo [in] 1962. And
so we’re talking about some relationship to tobacco
seeds that could have come from Cuba in the 1940’s
or 1950’s or maybe 1960 or ’61. But not any time
after that.
Perelman dep. at 36.
17
Opposition No. 91165519
Further, Mr. Perelman testified that claims of “Cuban
seed tobacco” are a marketing tool in the United States that
may “imply some sort of relationship or nexus to Cuba or the
Cuban cigar industry, but there really is none.”
Perelman dep. at 56. In addition, Mr. Perelman testified
that:
In my opinion and to my knowledge, there is no
relationship between Cuban seed tobaccos and the
city of Havana, Cuba, the Cuban cigar industry or
Cuban tobacco except [a] potential and unprovable
relationship that goes back many, many, many
generations and dozens of years. As a matter of
fact, it would be more than 40 years.
Perelman dep. at 56.
Applicant has offered no testimony or other evidence
that rebuts the testimony of opposer’s witnesses. Rather,
applicant simply maintains that the term “Cuban seed
tobacco” is widely used in the industry, and that the USPTO
considers “cigars made from Cuban seed tobacco” an
acceptable identification of goods. Applicant has submitted
copies of a number of third-party registrations and
applications for marks covering goods identified as “cigars
made from Cuban seed tobacco.”
In this case, the uncontroverted testimony of opposer’s
witnesses establishes that “Cuban seed tobacco” is descended
from tobacco seeds taken decades ago from Cuba. Indeed, in
response to opposer’s Interrogatory no. 16(f), applicant
acknowledges that “Cuban seed tobacco” “descended from seeds
18
Opposition No. 91165519
that were taken from Cuba in the late 1950’s and early
1960’s.”
And, in the case of applicant’s intended goods, even
the claim that its cigars will be made from “Cuban seed
tobacco” appears unverifiable as applicant’s president, Mr.
Bock, testified that he has no knowledge whether the
intended tobacco in fact comes from seeds that are distant
descendants of seeds that came from Cuba, or seeds that in
fact have no Cuban ancestry. Bock dep. at 101-102.
Further, the uncontroverted testimony of opposer’s
witnesses establishes that there is little or no connection
between the characteristics of “cigars made from Cuban seed
tobacco” and 100% or genuine Cuban cigars, that is, those
which are made from tobacco seed grown or cultivated in
Cuba. Indeed, even Mr. Bock admitted that he has no
information that cigars made from “Cuban seed tobacco” share
any qualities and characteristics, such as taste, flavor or
aroma, with cigars made in Cuba. Bock disc. dep. at 96.
We find that there is an insufficient connection
between Cuban seed tobacco, which is descended from tobacco
seeds taken from Cuba many decades ago, and Havana to
support a finding that cigars made from Cuban seed tobacco
come from or originate in Havana. This is particularly the
case because the record in this case shows that cigars from
19
Opposition No. 91165519
Cuban seed tobacco share few, if any, qualities or
characteristics of genuine or 100% Cuban cigars.
In this case, the connection between applicant’s
intended goods and Havana is far too tenuous and is unlike
the factual situations in Nantucket and In re Joint-Stock
Company “Baik”.
Applicant also argues that its goods may eventually
originate in Cuba. Specifically, applicant states that
“[c]onceivably, Applicant may even purchase goods [from
Cuba] if the Cuban embargo is lifted.” (Brief at 24)
Suffice it to say that this statement is far too speculative
to support a finding that applicant’s goods will originate
in or come from Havana.
In view of the foregoing, the second element of the
Section 2(e)(3) test has been satisfied, that is, the
consuming public is likely to believe that Havana, Cuba
indicates the origin of applicant’s goods when in fact the
goods will not come from that geographic location.
Before turning to the third and final element, two
matters require comment. Applicant argues that “cigars made
from Cuban seed tobacco” is an acceptable identification of
goods. The issue of whether “cigars made from Cuban seed
tobacco” is an acceptable identification of goods is not
before us and is not relevant to whether applicant’s mark is
primarily geographically deceptively misdescriptive under
20
Opposition No. 91165519
Section 2(e)(3). Indeed, such issue is an examination issue
and our decision herein should not be construed as a holding
one way or the other on this issue.
Second, to the extent that applicant argues that it has
been the USPTO’s practice to allow an applicant to overcome
a Section 2(e)(3) refusal by amending its identification of
goods from “cigars” to “cigars made from Cuban seed
tobacco,” and disclaiming the geographic term in the mark,
such argument is not well taken. It cannot be said from the
third-party registrations and applications submitted by
applicant that this has been the policy of the USPTO. It
may well be the practice of just a few examining attorneys.
In any event, it is well established that even if some prior
registrations have some characteristics similar to
applicant’s, the USPTO’s allowance of such prior
registrations does not bind the Board. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
(3) The mark’s misrepresentation is a material factor
in the consumer’s decision to purchase the goods.
We turn then to the third and final element, which
requires proof that the misleading goods/place association
is a material factor in the customer’s decision to purchase
applicant’s goods. Opposer has established that cigars are
a principal product of Havana, and the desirability of
cigars from Havana is well-known the world over. In view
21
Opposition No. 91165519
thereof, we find that the goods/place association created by
applicant’s mark with Havana undoubtedly would be material
in a customer’s decision to purchase applicant’s cigars.
Conclusion
Based on the evidence of record and for the reasons
discussed above, we find that opposer has satisfied all
three of the elements of its Section 2(e)(3) claim. The
primary significance of applicant’s mark is that of a
geographically known place; there is a goods/place
association, and applicant’s goods will not come from the
place named; and such goods/place association created by
applicant’s mark with Havana would be material to the
decision to purchase applicant’s goods.
Fraud
In view of our decision in opposer’s favor on its
Section 2(e)(3) claim, we need not and do not reach
opposer’s pleaded claim of fraud with respect to applicant’s
amendment of its identification of goods.
Decision: The opposition based on Section 2(e)(3) of
the Trademark Act is sustained and registration to applicant
is refused.
22