Tuesday, October 21, 2008

Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco

The Board sustained a Section 2(e)(3) opposition to registration of the mark HAVANA CLUB for "cigars made from Cuban seed tobacco" [HAVANA disclaimed], finding the mark to be primarily geographically deceptively misdescriptive. The key issue was whether Applicant's goods should be deemed to originate from Havana, Cuba, even though they will be made elsewhere. Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2011) [precedential].

Opposer submitted a copy of its U.S. trademark registration for the mark HABANOS UNICOS DESDE 1492 for cigars and related products. Its Commercial Vice-President testified that the company currently uses its mark in advertising in United States and intents to sell Cuban cigars in this country as soon as the law allows. The Department of Treasury confirmed that Cuban entities are permitted to oppose registration of new trademarks "where these actions relate to protection of a trademark in which Cuba ... has an interest." Despite the fact that Opposer, a Cuban entity, "does not and cannot engage in any business in the United States due to the embargo on Cuban goods," the Board concluded that Opposer has a "real interest" in the outcome of this proceeding, and thus has standing.

Turning to the merits of the 2(e)(3) claim, the pertinent elements were set out in In re California Innovations Inc., 66 USPQ2d 1853, 1856-57 (Fed. Cir. 2003):

(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.

Applicant Anncas did not dispute that the primary significance of HAVANA CLUB is a generally known location. [And it's not Havana, Illinois - ed.] As to the second element, Anncas did not dispute that there is a goods/place association between cigars and Havana. However, the "central issue" in the case was this: "whether applicant's 'cigars made from Cuban seed tobacco' should be deemed to originate from Havana, Cuba, although they will be made elsewhere."

The uncontroverted testimony of Opposer's witnesses established that "Cuban seed tobacco" is descended from tobacco seed taken decades ago from Cuba, and that there is little or no connection between the characteristics of 'cigars made from Cuban seed tobacco' and genuine Cuban cigars. Even Applicant's witness admitted that he has no information that cigars from "Cuban seed tobacco" share any qualities or characteristics with cigars made in Cuba. The Board therefore concluded that there was an "insufficient connection between Cuban seed tobacco ... and Havana to support a finding that cigars made from Cuban seed tobacco come from or originate in Havana." And so, for purposes of the second element, the goods do not come from the place named in the applied-for mark.

Moving to the third element of the 2(e)(3) test, Opposer established that cigars are a principal product of Havana, and that the desirability of cigars from Havana is well-known. Therefore the association of Applicant's products with Havana "undoubtedly would be material" to the purchasing decision.

The Board therefore affirmed the Section 2(e)(3) refusal.

Text Copyright John L. Welch 2008.


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