Friday, March 23, 2012

Precedential No. 15: TTAB Affirms Section 2(e)(3) Refusal of OLD HAVANA as Primarily Geographically Deceptively Misdescriptive of Rum

Providing a detailed discussion of Section 2(e)(3), the Board affirmed a refusal to register OLD HAVANA for rum, finding the mark to be primarily geographically deceptively misdescriptive. The Board also briefly addressed and quickly rejected Applicant's claim of acquired distinctiveness under Section 2(f) for lack of sufficient evidence. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841 (TTAB 2012) [precedential]

Section 2(e)(3): There are four elements that must be met to invoke the bar of Section 2(e)(3):

1) The primary significance of the mark is a generally known geographic place;

2) The goods or services do not originate in the place identified in the mark;

3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and

4) The misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services.

The Board concluded as follows:

The primary significance of Havana is the name of the capital of Cuba, a geographic location that is generally known to the American consumer. The presence of “OLD” in the mark OLD HAVANA does not diminish the primary geographic significance of the mark when considered as a whole; “OLD” only serves to reinforce the primary geographic significance which, in point of fact, is a section of Havana. Because of the large and well-known rum industry in Havana, consumers will make a good/place association, that is, consumers will mistakenly believe that the rum originates in Havana, Cuba when in fact it does not. Lastly, because of the renown of rum originating in Havana, Cuba, the geographic origin of the rum would be a material factor for a significant portion of the relevant consumers in their decision to buy the rum.

Applicant contended that "Havana" has two non-geographic meanings, and so the term is not primarily geographic in meaning. First, the term suggests a certain special method for producing rum, and second the term "possesses a certain prestige, evoking a place in time or a historical era, rather than a geographic city."

It was undisputed that Havana is a generally known geographic location, and the Board found that the primary significance of "Havana" to be geographic. Adding the term OLD does not diminish that primary significance. "Old Havana" is more than a historical reference; in fact, there is a section of Havana that is referred to by the name "Old Havana."

The record did not support the assertion that OLD HAVANA primarily evoked a particular lifestyle of a bygone era. Moreover, even if this connection were established, it would not overcome the primary geographic significance because the connection may be made precisely because Havana is a city in Cuba. Nor did the evidence support the assertion that there is a "Havana" style or method of rum production.

There was no dispute that Applicant's rum does not originate in Havana, Cuba.

As to the connection between rum and Cuba, and particularly Havana, the record showed that rum is the most famous alcoholic product of Cuba. In fact, Cuba is called the Island of Rum. Applicant argued that consumers know that they cannot buy "real" Cuban rum due to embargo restrictions, and so they will not believe that Applicant's rum came from Cuba. Instead they will ascribe the other meanings to "Havana." The Board noted that it has rejected this embargo argument in several cases, for lack of evidence, and it did the same here.

Applicant also pointed to its labeling (see above), which includes the word "brand" after OLD HAVANA, indicating that the term is a trademark, not a geographic indicator; the phrase "Cuban style rum;" and the phrase "Product of USA." Here, however, the Board is concerned with the applied-for mark OLD HAVANA by itself, regardless of what may appear on the label. In other words, the mark itself must pass PTO muster.

Applicant further maintained that its rum has a connection with Havana because its president was born in Cuba and has 30 years of experience in making "Cuban-style" rum. The Board was not moved. The evidence was too tenuous to show the required substantial current connection between Applicant's rum and Havana such that consumers would consider the goods to come from Havana.

Finally, the materiality element was satisfied by evidence that Cuba, and particularly Havana, is famous for rum. As the Board stated in In re Jonathan Drew [KUBA KUBA for cigars], direct evidence of materiality is not required. It may be inferred from indirect or circumstantial evidence, such as gazetteer entries and third-party websites.

In short, the Board found that consumers would care about whether Applicant's rum comes from Havana, and the misrepresentation conveyed by OLD HAVANA is likely to materially impact the purchasing decisions.

And so the Board affirmed the Section 2(e)(3) refusal.

Acquired Distinctiveness: Applicant claimed use of the mark beginning in November 1991. Acquired distinctiveness may overcome a Section 2(e)(3) refusal only if the mark became distinctive prior to enactment of the NAFTA Implementation Act on December 8, 1993. Thus Applicant had only two years of qualifying use, but the only evidence of record was its attorney's unsupported statement as to the length of use. The Board agreed with the Examining Attorney that Section 2(f) was not satisfied.

TTABlog comment: If I saw OLD HAVANA on a bottle of rum, I would probably first start chanting "Yo Ho Ho," but I would also think the rum came from Cuba and I might pay more for it than for rum from, say, Chicago.

Text Copyright John L. Welch 2012.


At 5:01 PM, Anonymous Scott Gerien said...

I think its good that the Board is showing deference to geographic terms with significance relative to the product. However, I don't believe the shortcut to the burden of proof in demonstrating consumer deception that was established in In re Jonathan Drew is defensible. As with In re Bose, the Board is trying to get around legal standards and burdens of proof established by the Federal Circuit and other courts to reach a desired end result.


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