Cuban Cigar Brands, NVv.Valle Grande Limitada

Trademark Trial and Appeal Board

Aug 9, 2007

No. 91165277 (T.T.A.B. Aug. 9, 2007)

Mailed: August 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Cuban Cigar Brands, N.V.
v.
Valle Grande Limitada
_______

Opposition No. 91165277
to Application No. 78392366
filed on March 29, 2004
_______

Charles W. Grimes of Grimes & Battersby for Cuban Cigar
Brands, N.V.

David A. Weinstein, Esq. for Valle Grande Limitada.
_______

Before Walters, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Cuban Cigar Brands, N.V. filed its opposition to the
application of Valle Grande Limitada to register the mark
MONTECRISTO for “olive oil,” in International Class 29, and
“vinegars and balsamic vinegar,” in International Class 30.1

1 Application Serial No. 78392366, filed March 29, 2004, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91165277
2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered marks
shown below as to be likely to cause confusion, under
Section 2(d) of the Trademark Act.
MARK GOODS and
NOTATIONS
REGISTRATION
NO.
MONTECRISTO Cigars 1173547
Cigars,
cigarettes,
and cut
tobacco
0332324
MONTE CRISTO Cologne,
after-shave
lotion, cuff
links,
wallets,
bathrobes,
scarves,
headwear.

“The English
translation
of Monte
Cristo is
Mountain of
Christ.”
2236889
MONTE CRISTO Desk sets,
desk pads,
pens, stands
for pens and
pencils,
golf balls,
cigar cases
not of
precious
metal.
2304416
Opposition No. 91165277
3

“The English
translation
of Monte
Cristo is
Mountain of
Christ.”
MONTECRISTO Hat
ornaments
not of
precious
metal,
ashtrays not
of precious
metal,
credit card
services
2396980
MONTECRISTO Cocktail
lounge, bar
and
restaurant
services;
night clubs
2623858
MONTECRISTO Alcoholic
beverages
2594564
MONTECRISTO Ground and
whole bean
coffee

“The English
translation
of Monte
Cristo is
Mountain of
Christ.”
2855557

As an additional ground of opposition, opposer asserts
that its MONTECRISTO mark is famous in connection with
premium cigars; that its mark has been distinctive and
famous in the United States since before applicant acquired
any rights in its mark; and that registration of the opposed
mark will dilute the distinctive quality of opposer’s famous
marks.
Opposition No. 91165277
4
Applicant, in its answer, admitted that it has not made
use of MONTECRISTO as a trademark in the United States; that
applicant’s mark “is exactly similar in appearance and
sound” to opposer’s pleaded MONTECRISTO marks in
Registrations Nos. 1173547, 2396980, 2623858, 2594564 and
2855557; and that opposer submitted copies of its pleaded
registrations with its notice of opposition. Otherwise,
applicant denied the salient allegations of opposer’s
claims.
Preliminary Matters
There are several procedural and evidentiary matters to
address before we turn to the merits of this opposition.
First, opposer submitted with its notice of opposition
photocopies of its pleaded registrations; but, it did not
submit status and title copies of these registrations as
required by Trademark Rule 2.122(d)(1), 37 C.F.R.
§2.122(d)(1). See TBMP §§704.03(b)(1) and 704.05. However,
applicant, in its brief, does not challenge the competence
of the photocopies of opposer’s pleaded registrations and,
in fact, states that “[b]ased upon opposer’s evidence and
the constructive use effect of its federal registrations,
opposer’s priority date is earlier than applicant’s priority
date” and that “opposer’s evidence in support of its claims
must be limited to (1) the constructive use effect
applicable to its pleaded registrations for priority
Opposition No. 91165277
5
purposes and, (2) only the goods and services recited in
those registrations” (brief, pp. 8 and 22, respectively).
Therefore, we deem applicant to have conceded the ownership
and subsistence of the pleaded registrations.
Second, opposer submitted its own responses to
applicant’s interrogatories as an exhibit to the testimony
of Mr. Workman. Other than to acknowledge their identity
and sign a verification that the answers are true and
correct, Mr. Workman did not discuss the interrogatory
responses document. Interrogatory responses may be made of
record only by the inquiring party, except under the
provisions of Trademark Rule 2.120(j)(5), 37 C.F.R.
§2.120(j)(5), or upon the stipulation of the parties. See
TBMP §704.10 and cases cited therein. Applicant, in its
brief, has not objected to this submission, has listed these
interrogatory responses as being part of the record before
the Board, and has relied extensively on these responses in
arguing its position. Therefore, we deem applicant to have
stipulated to the submission by opposer of its responses to
applicant’s interrogatories.
Third, opposer submitted by notice of reliance
documents characterized as having been produced in response
to applicant’s document production request. It is
immaterial that such documents were part of opposer’s
document production to applicant and applicant has not
Opposition No. 91165277
6
objected to this material. Each of the documents in
Exhibits B through G is an excerpt from a print publication
in general circulation and, thus, has been properly
submitted by notice of reliance. Exhibits H and J are
excerpts from print publications obtained online and, as
such, are also properly submitted by notice of reliance.
However, Exhibit I consists of excerpts of advertisements
from Internet websites. Contrary to opposer’s statement in
its notice of reliance, these Internet excerpts are not
self-authenticating in nature and thus not admissible by
notice of reliance. Raccioppi v. Apogee Inc., 47 USPQ2d
1368, 1370 (TTAB 1998). It appears that some if not all of
these exhibits are also submitted as exhibits to Mr.
Workman’s testimony. However, Mr. Workman does not
authenticate these exhibits during his testimony. Despite
applicant’s failure to object to this evidence, it is of no
probative value due to its lack of authentication and, thus,
the Board has not considered this Internet evidence.
Fourth, applicant objects to the testimony deposition
by opposer of Mr. Workman, stating that “a certified copy of
the Workman Tr. Dep. … does not appear to have been filed in
this proceeding as required under 37 CFR §2.125 [TBMP
§703.01(k)].” (Applicant’s Brief, p. 9.) Applicant does
not specify any deficiency it perceives in the filing of the
deposition other than the alleged lack of certification.
Opposition No. 91165277
7
However, except that it is not signed by the witness as
required under 37 CFR §2.123(e)(5), all requirements for
filing the deposition, including certification, have been
met. With regard to the lack of signature, we refer to 37
CFR §2.123(j), which provides, in part, that “[n]otice will
not be taken of merely formal or technical objections which
shall not appear to have wrought a substantial injury to the
party raising them; and in case of such injury it must be
made to appear that the objection was raised at the time
specified in said rule.” Generally, procedural objections
to testimony depositions must be raised promptly or they are
waived. See TBMP §707.03(c). In this case, applicant has
not alleged any injury from this procedural irregularity.
Further, this is an irregularity that could have been cured
if promptly presented, but applicant waited until its final
brief to raise the alleged lack of certification and did not
raise the lack of signature at all. Therefore, we find
applicant’s objection to be waived. In any event, applicant
has not challenged the substance of the deposition and,
thus, we find the deficiency sufficiently insignificant in
this instance to permit us to consider Mr. Workman’s
testimony deposition herein.
Finally, we address a substantive issue raised by
applicant for the first time in its brief. Applicant makes
a number of arguments that are essentially the same
Opposition No. 91165277
8
argument, namely, that opposer is not the proper plaintiff
in this case or the proper owner of the pleaded marks and
registrations because it does not use the marks or otherwise
control the use of the marks or the quality of the products
and services identified hereunder. Despite the fact that
applicant devoted a substantial amount of its briefing to
this argument, it is not well taken. Opposer is the wholly
owned subsidiary of Altadis U.S.A., and Altadis U.S.A.
clearly controls the licensing and use of the involved marks
and the manufacture of the identified goods and rendering of
the identified services. We note the following statements
in this regard by Mr. Workman during his testimony
deposition:
Q What is your current place of employment? Who is
your employer?

A Altadis U.S.A.

. . .

Q Has the company always been known as Altadis
U.S.A. ?

A No. It used to be known as Consolidated Cigar,
who I started with. In 2000 Consolidated Cigar
merged with HavaTampa Cigars and formed Altadis
U.S.A.

Q What is Cuban Cigar Brands, N.V.?

A That is a trademark company that is a subsidiary
of Altadis U.S.A.

Q Do you know if it is a wholly owned subsidiary of
Altadis?

A To the best of my knowledge, yes, sir.
Opposition No. 91165277
9

Q So for the balance of this deposition, whenever I
refer to quote, Altadis, close quote, I would like
to have you understand that I’m referring not only
to Altadis U.S.A. Inc., but also to its
predecessor, Consolidated Cigar Corporation and to
its wholly owned subsidiary Cuban Cigar Brands,
N.V. Is that understandable to you?

A Yes.

We note that, in any event, applicant’s claims of non-
use and abandonment by opposer of its marks are unavailing
because they constitute impermissible collateral attacks on
opposer’s registrations in the absence of counterclaims to
cancel those registrations.
The Record
The record consists of the pleadings; the file of the
involved application; the pleaded registrations; various
specified responses of applicant to opposer’s
interrogatories and requests for admissions and excerpts
from printed publications, all made of record by opposer’s
notice of reliance; and the testimony deposition by opposer
of Eric Workman, vice president, marketing and national
accounts at Altadis U.S.A., opposer’s parent company, with
accompanying exhibits. Applicant submitted no testimony or
other evidence. Both parties filed briefs on the case.
Factual Findings
Opposer is the wholly owned subsidiary of Altadis
U.S.A. (hereinafter referred to together as “opposer”),
which primarily manufactures and sells premium and mass-
Opposition No. 91165277
10
market cigars. The MONTECRISTO brand, one of opposer’s
brands, primarily identifies a premium cigar. It is sold to
approximately 2000 premium retailers by its thirty-five
person premium cigar sales force (Workman Dep. p. 7-8, 15),
although one of its five types of MONTECRISTO cigars is
aimed at the mass market and distributed in convenience
stores, Walgreens and CVS, among others (id. at p. 27, 34).
Opposer also markets its MONTECRISTO cigars through
wholesale distributors, who resell the cigars to consumers
via the Internet or to restaurants, nightclubs and golf
courses designated by opposer (id. at p. 15)(see also
Exhibit 2 to Workman Deposition, Opposer’s Answer to
Interrogatory No. 2, hereinafter “Workman Dep. Ex. 2, No.
2”).
Opposer has licensed the MONTECRISTO brand for use in
connection with coffee (id. at p. 30) and alcoholic
beverages (Workman Dep., Ex. 2, No. 2). Opposer has
licensed the mark for use on a variety of ancillary items,
including coffee mugs, ashtrays, hats, and ashtrays, all
prior to the filing date of the application herein. During
Christmas 2004, opposer promoted a package combining
MONTECRISTO cigars, coffee and a demitasse cup to
approximately 1200 retailers (id. at p. 30). Opposer has
also licensed the MONTECRISTO brand for use in connection
with, for example, rum and credit cards (id. at p. 47).
Opposition No. 91165277
11
Historically, premium cigar retailers sold only cigars
and tobacco, but they have branched out to include a variety
of items including fine coffees (id. at p. 28-29).
Retailers’ catalogs and websites that include opposer’s
cigars also include clothing items, hats and items such as
coffee cups, beer steins, golfing accessories and,
occasionally, fancy food items such as chocolates and nuts
(id. at p. 36). Most of these retailers do not include
edibles or products found in the kitchen (id. at p. 38).
MONTECRISTO cigars were first sold in the United States
in 1935 as a Cuban handmade cigar by opposer’s predecessor
(id. at p. 13). Sales in the United States occurred
regularly until 1960, at which time sales were interrupted
by the Cuban Embargo (id.). In 1978, opposer purchased the
brand and has sold MONTECRISTO brand cigars in the United
States since that time (id. at p. 14). Opposer advertises
these cigars in men-oriented magazines, particularly cigar-
oriented magazines (id. at 15-16). Opposer also conducts
cooperative advertising with its retailers and sends
retailers promotional items such as shopping bags, humidors,
ashtrays and coffee cups to be given away and/or sold (id.
at p. 17). The vast majority of cigar smokers are men,
although Mr. Workman testified that these ancillary items
may be purchased and/or used by women (id. at 20).
Opposer’s Montecristo Foundation features the cigars at
Opposition No. 91165277
12
charity events and opposer promotes the MONTECRISTO brand
and ancillary items on its website (id. at p. 26).
Mr. Workman stated that opposer’s MONTECRISTO premium
cigars are among the best-known and top-selling brands of
cigars in the United States, comparing it to Cohiba, Fuente
and Macanudo cigars (id. at p. 41). In the deposition of
Mr. Workman, opposer’s counsel indicated that the deposition
would resume at later date under a protective order.
However, the deposition was not continued nor was a
protective order entered in this case. The record contains
no evidence of sales or advertising dollar amounts either
for opposer or the industry as a whole.
Based on its responses to opposer’s requests for
admissions and interrogatories, we find that applicant
selected its mark in August 2000; that applicant has used
its mark only in Chile in connection with olive oil since
November 2002 and in connection with vinegars since August
2004; that applicant has not used or advertised its mark in
the United States in connection with the identified goods;
and that applicant intends to sell its goods in the United
States directly to restaurants and, through supermarkets and
specialty stores, to consumers. Applicant admits that it
was aware of opposer’s use of its mark in connection with
cigars at the time it chose its mark (Admission No. 1);
although, applicant asserts that it chose its mark based on
Opposition No. 91165277
13
a Bible passage rather than any attempt to trade on
opposer’s good will in its marks (Answer to Interrogatory
No. 2). Applicant admits that “opposer’s trademark
MONTECRISTO is a well-known trademark specifically in
connection with ‘cigars’; [but states that] consumers do not
identify the opposer’s trademarks with other goods different
from ‘cigars’” (Answer to Interrogatory No. 6).
Analysis
Because opposer’s pleaded registrations are of record,
and because opposer’s likelihood of confusion claim is not
frivolous, we find that opposer has established its standing
to oppose registration of applicant’s mark. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982). Moreover, because
opposer’s pleaded registrations are of record, Section 2(d)
priority is not an issue in this case as to the marks and
goods and services covered by said registrations. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
Opposition No. 91165277
14
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
The first du Pont factor we consider is the fame of
opposer’s marks. As our primary reviewing Court has made
clear, fame of the prior mark plays a dominant role in cases
featuring a famous or strong mark. “Famous or strong marks
enjoy a wide latitude of legal protection” and a famous mark
“casts a long shadow which competitors must avoid.” Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992); and Recot, Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir.
2000). We consider opposer’s claim of fame herein to
pertain to its cigars, as this is its primary product by its
own admission.
Applicant has admitted that opposer’s MONTECRISTO mark
is “well-known” in connection with cigars. However, opposer
has not submitted evidence that would establish that this
renown rises to the level of “fame,” as that term is
understood in the law. See Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002)
(“Because fame plays such a dominant role in the confusion
Opposition No. 91165277
15
analysis, … those who claim fame for product marks that are
used in tandem with a famous house mark can properly be put
to tests to assure their entitlement to the benefits of fame
for the product marks”); Opryland USA, Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1474
(Fed. Cir. 1992) (“a well-known mark enjoys an appropriately
wider latitude of legal protection, for similar marks tend
to be more readily confused with a mark that is already
known to the public”); and Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed.
Cir. 1984).
Opposer’s allegation of fame, asserted in its brief and
by its employee, Eric Workman, is self-serving. Further,
its evidence in support of this claim is minimal, consisting
of promotional materials, advertising in a several
publications, and two publication excerpts, from The Cigar
Connoisseur and Pittsburg Business Times, that make
reference to opposer’s MONTECRISTO cigars. Opposer has
submitted no dollar amounts for its sales or advertising, no
indication of the breadth of exposure that it receives by
advertising in the aforementioned publications, and no
evidence of its sales ranking vis-à-vis other cigar brands.
There is no direct evidence of consumer recognition of its
MONTECRISTO marks in connection with cigars and insufficient
indirect evidence of the nature and extent of consumer
Opposition No. 91165277
16
recognition from which to conclude that MONTECRISTO is
famous in connection with cigars.2 Therefore, while it is
clear from applicant’s concession that opposer has
established a certain degree of renown for its MONTECRISTO
cigars, we conclude that opposer has not established that
its mark is famous in connection therewith.
In considering the evidence of record on the remaining
du Pont factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976). See also In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases
cited therein.
Regarding the parties’ marks, as applicant admits, its
mark is identical to opposer’s five pleaded and established
single-word MONTECRISTO marks. We also conclude that
applicant’s mark is essentially the same as opposer’s two
pleaded and established two-word MONTE CRISTO marks because
the space creating the two words in these marks is
insignificant and does not distinguish it from the single-
word mark MONTECRISTO, which consists of the two

2 Opposer emphasizes that its MONTECRISTO cigars are of premium quality.
However, the fact that the mark may identify a high quality and/or
exclusive product does not mean that it is a famous mark.
Opposition No. 91165277
17
independently identifiable Spanish words MONTE and CRISTO.
Applicant’s mark is likewise substantially similar to
opposer’s pleaded and established design mark, which
consists of the two separate words MONTE and CRISTO within a
crest consisting of crossed swords. Certainly, the word
portion of opposer’s mark is dominant because it is the word
portion of the mark that is used to call for the goods and
because the shield is more in the nature of a border or
carrier for the words than a highly distinctive design.
Therefore, this factor weighs strongly in opposer’s favor.
There is no indication that the purchasers of the
respective goods and services are other than general
consumers, encompassing all levels of sophistication and
purchasing discretion. Thus, this factor also weighs in
opposer’s favor.
We turn now to the goods and services of the parties.
There is no evidence that cigars and olive oil and vinegar
are related items or items that may be perceived by
consumers as coming from the same source. For example,
there is no evidence that such items may be used together or
that they are complementary products; nor is there evidence
that they would be sold in the same stores or in close
proximity in the same stores. Mr. Workman testified that
tobacco and cigar stores have expanded to include sales of
specialty items such as coffee, nuts and chocolate.
Opposition No. 91165277
18
However, it is mere speculation to conclude that this would
also include sales of olive oil and vinegar, especially in
view of Mr. Workman’s testimony that most of these retailers
do not include edibles or products found in the kitchen.
Opposer indicates that its cigars are available at some
restaurants and nightclubs and opposer indicates that it
will sell its products to restaurants. However, there is no
evidence indicating, even if these goods did appear in the
same stores and restaurants, that consumers encountering
these products would believe that these disparate items come
from the same source.
The additional items identified in the pleaded
registrations include smoking accessories, such as, cigar
cases and ashtrays; personal items, such as, cologne, after-
shave lotion, cuff links, wallets, bathrobes, scarves,
headwear and hat ornaments, desk sets, desk pads, pens,
stands for pens and pencils, golf balls; as well as
Alcoholic beverages and ground and whole bean coffee.
Opposer’s identified services include credit card services;
and nightclub, cocktail lounge, bar and restaurant services.
There is no evidence that these goods and services, either
individually or considered as a group, have any relationship
to olive oil and/or vinegar. Many of opposer’s products, as
well as its credit card services, are logical ancillary
items which service to promote opposer’s primary product
Opposition No. 91165277
19
under its mark – cigars. There is no evidence in the record
that olive oil or vinegar logically fall into that category.
In view of the great differences between opposer’s goods and
services and applicant’s goods, we find that this factor is
determinative.
Therefore, in view of the wide differences between
applicant’s identified goods and opposer’s identified goods
and services, and despite the identity of the marks, we
conclude that there is no likelihood of confusion.
Opposer has not established the fame of its marks in
connection with cigars or the identified goods and services
in its pleaded registrations and, thus, its dilution claim
must fail.
Decision: The opposition is dismissed.