Precedential No. 3: Finding KUBA KUBA Primarily Geographically Deceptively Misdescriptive for Cigars, TTAB Affirms 2(e)(3) Refusal
The Board affirmed a Section 2(e)(3) refusal of KUBA KUBA for cigars, tobacco, and related products, finding the mark to be primarily geographically deceptively misdescriptive of the goods. In doing so, the Board attempted to clarify the law of Section 2(e)(3) in view of recent court decisions. In re Jonathan Drew, Inc. d/b/a Drew Estate 97 USPQ2d 1640 (TTAB 2011) [precedential].
Applicant Drew did not dispute that the primary meaning of "Cuba" is geographic, or that Cuba is famous for its tobacco products and cigars. Moreover, Drew conceded that its products will not originate in Cuba, nor will its products be made from Cuban seed tobacco.
Drew argued, however, that the term KUBA, and the mark KUBA KUBA, "would convey meanings and associations that are different from the country of Cuba. It also maintained that Examining Attorney David C. Reihner did not meet the high burden to prove that a substantial portion of relevant consumers would be materially influenced by the mark to purchase the products, and further that because of the US embargo on goods from Cuba, consumers would not likely believe that Applicant's goods originate in Cuba.
Meaning of KUBA: The Board found nothing unusual or fanciful about the spelling of Cuba as KUBA. Drew contended that KUBA would be "primarily viewed as a non-geographic term with a meaning 'associated with the overall look and feel of the art and culture of the African Kuba Kingdom,'" and that KUBA has other geographic meanings. The Board pointed out, however, that the mark must be considered in the context of the goods. Moreover, there was no evidence that the "alternative" meanings offered by Drew were anything other than obscure to the ordinary consumer. And even if the KUBA KINGDOM were commonly known, that "would not detract from the significance of KUBA KUBA as a reference to Cuba," since Drew's goods are cigars not tribal artifacts.
The Board therefore concluded that the geographic meaning denoting Cuba is the primary meaning of KUBA KUBA.
Materiality: Drew asserted that, in view of the CAFC's decisions in Spirits and California Innovations, "the USPTO's burden of establishing deceptiveness now requires a higher showing of deceptiveness, and that there has been no showing ... that a substantial portion of the relevant consumers would be materially influenced to purchase applicant's products." Drew further argued that direct evidence of public deception is required.
The Board, however, opined that a "strong or heightened goods/place association, which we have here, is sufficient to support a finding of materiality." Moreover, direct evidence of public deception is not required. "[W]e may infer from the evidence showing that Cuba is famous for cigars, that a substantial portion of relevant consumers would be deceived."
The Board also distinguished the recent decision of the U.S. District Court for the District of Columbia in the Guantanamera Cigar case, because here "there is no question that a substantial portion of relevant consumers would recognize the meaning of KUBA KUBA as meaning Cuba; and the evidence showing that Cuba is famous for cigars provides a reasonable predicate for finding that a substantial portion of the relevant consumers would be deceived."
Embargoed Goods: Finally, Applicant Drew argued that consumers would not believe that KUBA KUBA brand cigars come from Cuba because the US has embargoed goods from Cuba. But the Board pointed out that Drew offered no evidence that the embargo would have any effect on the perception of KUBA KUBA as a geographically deceptive term.
Text Copyright John L. Welch 2011.