Cuban Cigar Brands, N.V.

Trademark Trial and Appeal Board

Oct 19, 2007

No. 78554967 (T.T.A.B. Oct. 19, 2007)

Mailed: 10/19/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cuban Cigar Brands, N.V.
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Serial Nos. 78554795 and 78554967
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Charles W. Grimes and Jessica S. Rutherford of Grimes &
Battersby for Cuban Cigar Brands, N.V.

James A. Rauen, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Rogers and Kuhlke, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Cuban Cigar Brands, N.V. filed applications to
register the marks CLASSIC COLLECTION and MONTECRISTO
CLASSIC COLLECTION for “cigars, little cigars, roll-your-
own tobacco, pipe tobacco and smokeless tobacco” in
International Class 34.1

1 Application Serial Nos. 78554795 and 78554967, respectively,
both filed January 27, 2005, and both alleging a bona fide
intention to use the mark in commerce. The foreign word
“Montecristo” in one of applicant’s marks translates into English
as “Mountain of Christ.”
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser Nos. 78554795 and 78554967
2
In application Serial No. 78554795, the trademark
examining attorney refused registration under Section
2(e)(1) of the Trademark Act because the mark CLASSIC
COLLECTION is merely descriptive of the goods. The
trademark examining attorney refused registration in
application Serial No. 78554967 due to applicant’s failure
to comply with a requirement to disclaim the merely
descriptive words “Classic Collection” apart from the mark.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Because the two appeals involve common questions of
law and fact, and they were presented on the same record,
we will decide the appeals in this single opinion.
The essence of applicant’s argument is that the terms
“classic” and “collection,” and, in turn, the combination
“classic collection,” do not describe the goods with any
degree of particularity. Applicant contends that the words
are “so broad and amorphous” that they cannot be considered
to be merely descriptive when applied to applicant’s goods.
The examining attorney maintains that the words
“classic collection” are merely descriptive of applicant’s
tobacco products. In relying on dictionary definitions,
the examining attorney finds that the words describe two
characteristics of the goods, namely that “they are of a
Ser Nos. 78554795 and 78554967
3
well-known type (as opposed to being ‘contemporary,’ or
‘modern,’ or ‘avante-guard’ [sic]) and they are grouped
together (as opposed to being one-of-a-kind items).” The
examining attorney also submitted excerpts from printed
publication articles retrieved from the NEXIS database
showing uses of “classic cigar” and “cigar collection.”
Based on this evidence, the examining attorney finds that
the words “classic collection” will convey a descriptive
meaning to potential purchasers of applicant’s tobacco
products.
An evidentiary point requires our attention before
consideration of the merits of the appeals. In connection
with its argument that the words “classic collection” are
not merely descriptive, applicant submitted several third-
party registrations for tobacco products showing registered
marks comprising, in part, the word “CLASSIC,” but without
any disclaimer thereof. Other registrations are of marks
comprising, in whole or in part, “CLASSIC COLLECTION” for
goods in a variety of different classes; each registration
is on the Principal Register (some of the registrations
include a disclaimer of “collection”). The copies of the
registrations, retrieved from the PTO’s TARR database, were
submitted for the first time with applicant’s appeal brief.
The examining attorney, in his brief, objected to the
Ser Nos. 78554795 and 78554967
4
evidence as untimely. In its reply brief, applicant again
refers to this evidence, but offers no response to the
examining attorney’s objection.
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of an
appeal, and that the Board will ordinarily not consider
additional evidence filed after the appeal is filed.
Accordingly, the examining attorney’s objection is
sustained, and the third-party registrations have not been
considered in reaching our decision.
We now turn to the substantive merits of the appeals.
The Examining Attorney bears the burden of showing that a
mark is merely descriptive of the relevant goods. In re
Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). A mark is
descriptive if it "forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the
goods." Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 189 USPQ 759, 765 (2d Cir. 1976) (emphasis
added). See In re Abcor Development Corp., 616 F.2d 525,
200 USPQ 215 (CCPA 1978). Moreover, in order to be
descriptive, the mark must immediately convey information
as to the ingredients, qualities or characteristics of the
goods with a "degree of particularity." Plus Products v.
Ser Nos. 78554795 and 78554967
5
Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-
1205 (TTAB 1981). See also In re Diet Tabs, Inc., 231 USPQ
587, 588 (TTAB 1986); Holiday Inns, Inc. v. Monolith
Enterprises, 212 USPQ 949, 952 (TTAB 1981); and In re TMS
Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978).
The term “classic” is defined as “of a well-known
type; typical.” The term “collection” means “a group of
objects or works to be seen, studied, or kept together.”
The American Heritage Dictionary of the English Language
(3d ed. 1992).
We find that the words “classic collection,” when
applied to applicant’s goods, are suggestive and more in
the nature of mere puffery as opposed to being merely
descriptive. There is a certain amorphous quality about
the words, and no specific information about any quality or
characteristic of the goods is conveyed with a degree of
particularity. Additional thought or imagination would be
required on the part of prospective purchasers in order to
perceive any significance of the words “classic collection”
as they relate to applicant’s goods. See Wynn Oil Co. v.
Thomas, 839 F.2d 1183, 5 USPQ2d 1944 (6th Cir. 1988)
[CLASSIC CAR WASH for car wash services is a “relatively
strong mark”]; and In re Classic Beverage, Inc., 6 USPQ2d
1383 (TTAB 1988) [CLASSIC COLA is not merely descriptive of
Ser Nos. 78554795 and 78554967
6
soft drinks; the evidence does not link the meaning of
“classic” to soft drinks, or indicate any definite
information about applicant’s soft drinks].
The NEXIS evidence does not persuade us to reach a
contrary result. We recognize that the articles show use
of the words “classic cigar(s)” and “cigar collection” in
connection with cigars. But, these uses are very general
and broad in nature, and such uses do not impart any
specific information about cigars. That is to say, based
on the record before us, the words “classic” and/or
“collection” do not appear to have any particular meaning
in the trade for tobacco products. Our view remains that
neither the individual words “classic” and “collection,”
nor the combination “classic collection” impart information
about applicant’s tobacco products with any degree of
particularity.
The Board has noted on a number of prior occasions
that there is a thin line of demarcation between a
suggestive and a merely descriptive designation. Although
we find that the mark sought to be registered falls in the
suggestive category, to the extent that the Examining
Attorney’s arguments cast doubt on our finding, such doubts
are to be resolved in applicant’s favor. See, e.g., In re
Atavio, 25 USPQ2d 1361 (TTAB 1992); In re Morton-Norwich
Ser Nos. 78554795 and 78554967
7
Products, Inc., 209 USPQ 791 (TTAB 1981); and In re Gourmet
Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusals to register are reversed.