Tuesday, April 29, 2014

TTAB Affirms Section 2(e)(3) Refusal of KUBA KUBA BY DREW ESTATE for Cigars

The Board affirmed a Section 2(e)(3) refusal of KUBA KUBA BY DREW ESTATE, finding it to be primarily geographically deceptively misdescriptive of "cigars made with Cuban seed tobacco." In 2011, the Board affirmed a similar refusal of applicant's mark KUBA KUBA for cigars, tobacco, and related products, [TTABlogged here], and so applicant started (and ended up) behind the eight ball. In re Drew Estate Holding Company, LLC, Serial No. 77840485 (March 25, 2014) [not precedential].

The Board found that, on the issue of the primary significance of KUBA KUBA, the record contained substantially the same evidence as in the prior case. Therefore this Board panel agreed with the earlier panel that "when the term 'Kuba Kuba' is viewed in connection with cigars, for which Cuba is famous, the most likely meaning of the term would be a reference to the island nation of Cuba."

The addition of the phrase BY DREW ESTATE did not avoid the refusal because a Section 2(e)(3) refusal is appropriate even if only a part of the composite mark consists of primarily geographically misdescriptive matter. [E.g., NEW YORK WAYS GALLERY, PARIS BEACH CLUB].

Alternatively, applicant argued that its cigars do have an origin in Cuba, because Cuban seed tobacco has its origins in Cuba. The Board, however, snuffed out that argument, pointing to Board precedent referring to the phrase "cigars made with Cuban seed tobacco" as a marketing term used in this country to refer to tobacco actually grown outside Cuba that is "claimed to be grown from multi-generation descendants of seeds taken from Cuba more than fifty or sixty years ago." That "claim of distant descent" was found insufficient to support a finding that cigars made with Cuban seed tobacco come from or originate in Cuba. In short, tobacco grown and processed outside Cuba over many generations cannot replicate the qualities or characteristics of genuine Cuban tobacco.

As to consumer perception of KUBA KUBA as a geographically deceptive term, applicant offered no evidence or reason to believe that anything has changed in the three years since the earlier decision.

The Board also affirmed a refusal based upon applicant's failure to provide a specimen of use that matched the application drawing. In the specimen of use, the words KUBA KUBA are separated from the words BY DREW ESTATE by a considerable distance (see illustration above), and the Board agreed with Examining Attorney David C. Reihner that these phrases will be perceived by the consumer as two separate marks.

Read comments and post your comment here.

TTABlog note:  WYHA?

Text Copyright John L. Welch 2014.


At 8:38 AM, Anonymous Anne Gilson LaLonde said...

I find it very surprising that companies persist in trying to register Cuba-related marks (KUBA KUBA, HAVANA CLUB, HAVANA TIME, YBOR GOLD, GUANTANAMERA) for cigars, tobacco and rum. Isn't there enough precedent by now to suggest that these attempts won't succeed? I suppose the payoff in consumer recognition and interest would be pretty big if you managed to sneak such a mark by the USPTO . . . but it isn't going to happen.

At 8:57 AM, Anonymous RL said...

For this one, the "A" in WYHA should stand for "applied" ...


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