Thursday, October 15, 2015

TTAB Affirms 2(e)(3) Refusal of GRAN HABANO for Cigars

Snuffing out another Cuban cigar mark, the Board affirmed a Section 2(e)(3) refusal to register the mark GRAN HABANO, finding it to be primarily geographically deceptively misdescriptive of "cigars made from Cuban seed tobacco." Applicant submitted declarations from retailers, distributors, and consumers in support of its assertion that its customers are sophisticated and are not interested in Cuban cigars, but that arguing went up in smoke in light of Examining Attorney David C. Reihner's evidence. In Santa Cruz Tobacco Co., Inc., Serial No. 77129912 (October 13, 2015) [not precedential].

Applicant translated the subject mark as "Grand Havanan," and it did not deny that Havana, Cuba is a well-known geographic location. Instead, it argued that its customers will not not translate the mark into English, and that the term “habano” has another, non-geographic meaning. The Board noted, however, that applicant’s goods are directed to the general adult population, and that the Spanish speaking population in the United States is large (probably more that 13%). The Board concluded that a substantial portion of consumers of applicant’s goods will "stop and translate" the mark. And though "habano" may have another meaning (a type of cigar wrapper), its primary significance is geographic.

Applicant is a cigar manufacturer located in Miami, Florida, with manufacturing facilities in Honduras, Nicaragua, Colombia and other Central and South American countries. The only connection between applicant's goods and Cuba or Havana is that "Applicant's tobacco seed is descended from the original tobacco seed grown in Cuba prior to the Cuban Revolution in 1962." The Board, however, has previously ruled that this connection is too tenuous to establish Cuba or Havana as the “origin” of the goods.

A goods/place association between cigars and Cuba was established by evidence that Cuba is "highly regarded for its premium cigars, which are often manufactured in or near Havana." Applicant, relying on declarations from 13 retailers and distributors and from twelve customers, maintained that its customers are sophisticated and are aware that applicant’s cigars do not originate in Havana or Cuba. The Board pointed out, however, that applicant’s identification of goods does not limit applicant's customers to those who are sophisticated, but rather includes all consumers of “cigars made from Cuban seed tobacco,” any or most of whom will be aware of the renown of Cuban cigars, often associated with Havana.

As to applicant’s assertion that consumers are aware of the United States embargo on Cuba and the inability of United States consumers to purchase Cuban cigars, Board precedent has already made clear that “such policy measures must not influence our findings.”

Finally, as to materiality, the question was “whether the misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services.” In re Spirits International, N.V., 90 USPQ2d 1489, 1490-95 (Fed. Cir. 2009). The evidence was clear that U.S. consumers “associate high quality cigars and tobacco with Cuba and Havana.” The Board recognized that some cigar consumers do not prefer Cuban tobacco. However, as noted, the customers for applicant’s identified goods are not limited to the subset represented by applicant’s declaration evidence. “[T]here is strong evidence of record that Havana, Cuba is associated with highly-desirable premium tobacco products including cigars, which, as noted, creates a presumption of materiality for purchasers.” Applicant did not rebut that evidence.

And so the Board affirmed the refusal to register

Read comments and post your comment here.

TTABlog comment: How big is that subset of relevant consumers who do not care about or for Cuban cigars? What do you think a survey of cigar smokers would show?

Text Copyright John L. Welch 2015.


At 2:33 PM, Anonymous Bob Klein said...

It is always tricky to try to guess what a survey would show, but the argument that "its customers are sophisticated and are aware that applicant’s cigars do not originate in Havana or Cuba" would seem to be cry out for a survey. And while the "goods are directed at the general adult population," shouldn't it be cigar smokers who would see and interpret the mark?


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