Wednesday, November 28, 2012

TTAB Sustains Section 2(e)(3) Opposition to HAVANA COLLECTION for Cigar Accessories

The Board sustained a Section 2(e)(3) opposition to registration of HAVANA COLLECTION for "cigar cutters; non-electric cigar lighters not of precious metal; humidors; and cigar carrying cases not of precious metal" [COLLECTION disclaimed], finding it to be primarily geographically descriptively misdescriptive of the goods. The Board concluded that because Havana, Cuba, is well known, if not famous, for cigars, consumers will make a goods/place association between cigar accessories and Havana, and the misdescription will be a material factor in the purchasing decision. Corporacion Habanos, S.A. and Empressa Cubano del Tabaco, dba, Cubatabaco v. Xikar, Inc., Opposition No. 91186534 (November 13, 2012) [not precedential].

It was beyond dispute that Havana, Cuba is a generally known geographic location. The addition of COLLECTION to HAVANA does not diminish the primary geographic significance of HAVANA. And it was undisputed that Applicant's products do not originate in Havana.

What about the required goods/place association? Applicant conceded that there is a goods/place association between Havana and cigars, but denied such an association between Havana and cigar accessories. There was little direct evidence referencing cigar accessories and Havana.  Nonetheless, the Board concluded that there is a goods/place association, relying on the CAFC's decision in In re Save Venice N.Y., Inc., which held that "the registrability of a geographic mark may be measured against the public's association of that region with both the traditional goods and any related goods or service that the public is likely to believe originate there." [Emphasis supplied by TTABlog]. Said the Board:

[T]o the extent there is a goods/place association between cigar accessories and Havana, it exists solely as a result of the fame of Havana in connection with cigars. Because Havana is so well-known for cigars, consumers seeing Havana used in connection with a product associated with cigars are likely to believe that there is a goods/place association between these products and Havana.

Finally, as to the materiality of the misdescription in the consumer's purchasing decision, the Board found that, "[b]ecause cigar accessories have no purpose other than to be used in connection with cigars, it follows that cigar accessories are more desirable if there is some association with Havana." This conclusion was bolstered by Applicant's specimen of use, whichfeatured the term "a la Havane" and a certificate of authenticity. A consumer would believe that Applicant was certifying that the product is from Havana and is part of the "HAVANA COLLECTION." Only in the small print is the consumer informed that the certificate refers to the fact that the cigar cutter is hand-made. The Board concluded that Applicant was attempting to associate his product with the positive commercial impression engendered by Havana cigars. In sum, the Board ruled that the use of HAVANA in Applicant's mark is a material factor in the purchasing decision.

And so the Board sustained the opposition.

TTABlog comment: What about HAVANA for bubble-gum cigars? Are those goods related to real cigars? Isn't "El Bubble" an attempt to suggest a Cuban origin? What if the proofs showed that baseball players create a chaw out of tobacco and bubble gum? What if the baseball players include Cubans?

Text Copyright John L. Welch 2012.


At 9:26 AM, Anonymous Anne Gilson LaLonde said...

I find it baffling that anyone would still try to register a mark with HAVANA or CUBA for tobacco-related products or for rum, given the overwhelming number of rejections. Frankly, I think HAVANA bubble gum cigars might not even make it!

At 7:27 AM, Anonymous Frank Herrera said...

Ms. Gilson LaLonde: I find it baffling that the TTAB does not require the party seeking cancellation or opposition to actually profer any real evidence to support the final element (not factor) of a 2(e)(3) claim. I also find it baffling that Cuba (the party that files all of these cancellation and opposition proceedings has any standing to file same). See Guantanamera v. Corp. Habanos (on appeal after remand USDC DC). My client owns Guantanamera registration for rum, yet Cuba has not sought cancellation of that registration. Rather, Cuba attacked my client's application for Guantanamera for cigars because Cuba's largest production (and sales) machine-made cigar is also known as Guantanamera. Not because it is actually concerned about a good/place association etc.. Mind you, Cuba's Guantanamera launched (outside of the US) 5 years after my client's launch in the US (the world's largest cigar market).

Now, if Cuba is ultimately successful in its opposition of my client's registration (after all appeals) what is my client left with? A federal registration for rum and "not-common-law-rights" for cigars? What does my client have after 15 years of sole and exclusive use of Guantanamera for cigars in the US?

And don't even get me started on Cuba's human rights record. -Frank Herrera


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