G & R Brands, LLCDownload PDFTrademark Trial and Appeal BoardJun 14, 2010No. 77417467 (T.T.A.B. Jun. 14, 2010) Copy Citation Mailed: June 14, 2010 jtw UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re G & R Brands, LLC ________ Serial No. 77417467 _______ Dana B. Robinson of G & R Brands, LLC. David C. Reihner, Trademark Examining Attorney, Law Office 111 (Craig Taylor, Managing Attorney). _______ Before Quinn, Walsh and Cataldo, Administrative Trademark Judges. Opinion by Walsh, Administrative Trademark Judge: G & R Brands, LLC (applicant) has applied to register the mark HAVANA TIME in standard characters on the Principal Register for goods now identified as: hand-rolling tobacco grown from Cuban seed tobacco; pipe tobacco grown from Cuban seed tobacco; roll your own tobacco grown from Cuban seed tobacco; rolling tobacco grown from Cuban seed tobacco; smoking tobacco grown from Cuban seed tobacco; tobacco filters; tobacco grinders; tobacco pipe cleaners; cigar and cigarette boxes not of precious metal; cigar cutters; cigar humidifiers; cigar tubes; cigars made from Cuban seed tobacco; cigarette ash receptacles; cigarette cases, not of precious metal; cigarette THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77417467 2 holders; cigarette holders, not of precious metal; cigarette papers; cigarette rolling machines; cigarette rolling papers; cigarette tubes; cigarettes made from Cuban seed tobacco; filter-tipped cigarettes made from Cuban seed tobacco; hookahs; non-electric cigar lighters not of precious metal; smoking pipe cleaners; smoking pipes; tobacco pipes, in International Class 34. Applicant filed the application on March 10, 2008, and based the application on its statement of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). Applicant has disclaimed “HAVANA.” The Examining Attorney issued a final refusal to register the mark on the grounds that the mark is primarily geographically deceptively misdescriptive of the identified goods under Trademark Act Section 2(e)(3), 15 U.S.C. § 1052(e)(3).1 Applicant appealed. Both applicant and the Examining Attorney have filed briefs. We affirm. Before addressing the refusal, we must attend to one evidentiary objection and one procedural matter. The Examining Attorney has objected to our consideration of an attachment to applicant’s main brief, a declaration from Ray Mauri, manager of applicant, on the grounds that the declaration was submitted late, that is, 1 A different Examining Attorney issued the first Office action in this case. Serial No. 77417467 3 with applicant’s main brief. Applicant has not responded to the objection in its reply brief. Applicant had numerous opportunities to submit this evidence, including in its request for reconsideration, but it did not do so. The objection is well taken; the record must be complete at the time the appeal is filed. See 37 C.F.R. § 2.142(d). Accordingly, we sustain the objection, and we have not considered this evidence. If we had considered it, we would reach the same conclusions in this appeal.2 Also, in its appeal brief applicant argued for the first time that the refusal under Section 2(e)(3) does not apply to the items in the identification of goods which do not contain tobacco, namely: tobacco filters; tobacco grinders; tobacco pipe cleaners; cigar and cigarette boxes not of precious metal; cigar cutters; cigar humidifiers; cigar tubes; cigarette ash receptacles; cigarette cases, not of precious metal; cigarette holders; cigarette holders, not of precious metal; cigarette papers; cigarette rolling machines; cigarette rolling papers; cigarette tubes; hookahs; non-electric cigar lighters not of precious 2 Furthermore, for completeness we note that the declaration directs the Board to view an online video. If this submission had been timely, we would not regard the referenced online video as part of the record. See In re Planalytics Inc., 70 USPQ2d 1453, 1458 (TTAB 2004). Online postings are fleeting. We would require the submission of a tangible recording of this type of evidence to ensure the integrity of the record. Serial No. 77417467 4 metal; smoking pipe cleaners; smoking pipes; and tobacco pipes. The Examining Attorney concurred and withdrew the refusal as to these goods in his brief. Accordingly, in this appeal we limit our consideration to the refusal as applied to the tobacco products identified in the application, namely, hand-rolling tobacco grown from Cuban seed tobacco; pipe tobacco grown from Cuban seed tobacco; roll your own tobacco grown from Cuban seed tobacco; rolling tobacco grown from Cuban seed tobacco; smoking tobacco grown from Cuban seed tobacco; cigars made from Cuban seed tobacco; cigarettes made from Cuban seed tobacco; and filter-tipped cigarettes made from Cuban seed tobacco. Turning to the refusal, to determine whether the HAVANA TIME mark is primarily geographically deceptively misdescriptive we must consider: (1) [whether] the primary significance of the mark is a generally known geographic location, (2) [whether] the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) [whether] the misrepresentation was a material factor in the consumer's decision. In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir. 2003). See also In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. Serial No. 77417467 5 2003); United States Playing Card Co. v. Harbro LLC, 81 USPQ2d 1537 (TTAB 2006). Before addressing these factors specifically, we will dispose of two dominant arguments in the briefs which implicate a number of the factors. First, in arguing the case both applicant and the Examining Attorney devote much of their attention to the question of whether we should reverse here because a number of registrations have issued for marks which include HAVANA, and similar terms, for tobacco products where the identification of goods specified that the tobacco was grown from Cuban seeds. In a related argument, applicant asserts here that, because it intends to use seeds newly exported from Cuba, we should regard HAVANA as used in its mark as accurate and merely descriptive and not deceptively misdescriptive. Consistent with that argument applicant has disclaimed HAVANA, as we noted. In the Havana Club case, the Board addressed the issue of the existing third-party HAVANA registrations with the “Cuban-seed” identifications, and stated: … to the extent that applicant argues that it has been the USPTO's practice to allow an applicant to overcome a Section 2(e)(3) refusal by amending its identification of goods from “cigars” to “cigars made from Cuban seed tobacco,” and disclaiming the geographic term in the mark, such argument is not well taken. It cannot be said Serial No. 77417467 6 from the third-party registrations and applications submitted by applicant that this has been the policy of the USPTO. It may well be the practice of just a few examining attorneys. In any event, it is well established that even if some prior registrations have some characteristics similar to applicant's, the USPTO's allowance of such prior registrations does not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1793 (TTAB 2008) (HAVANA CLUB held primarily geographically deceptively misdescriptive of “cigars made from Cuban seed tobacco” not made in Cuba). We, of course, conclude likewise with regard to the relevance of the third-party registrations in this case. Accordingly, we reject this argument. In the Havana Club case, the Board also rejected the related argument that the tobacco products made from seeds exported from Cuba should be regarded as products which could be accurately described as being from Havana or Cuba. Id. We likewise reject the same argument here. The only difference between the arguments in the two cases is applicant’s contention that its Cuban seeds will be newly exported from Cuba whereas the seeds at issue in the Havana Club case were exported from Cuba decades ago. We agree with the Examining Attorney and conclude that this is a distinction without a difference. To conclude Serial No. 77417467 7 otherwise, and to treat agricultural products, such as tobacco (or potatoes, oranges or grapes for that matter) grown from seeds from the place named as equivalent to the products grown in that place, could eviscerate Section 2(e)(3). We decline to go down that path on the facts of this case. We reject applicant’s contention that the age of the seeds was the controlling factor in the Havana Club case. Furthermore, we reject the fundamental contention that the inclusion of language specifying that the tobacco is grown from Cuban seeds of any vintage forecloses the determination that the mark is primarily geographically deceptively misdescriptive of the identified tobacco products. For completeness we note applicant’s offer in its main brief to amend its identification of goods further to specify “made of tobacco grown from seeds newly exported from Cuba.” Obviously, such an amendment would be futile in view of our conclusion that the date of export of the seeds is not relevant. In addition, applicant failed to propose the amendment in a timely manner and in an appropriate request. Furthermore, in view of the fact that this case is nearly identical to the Havana Club case in all important Serial No. 77417467 8 respects, we reject applicant’s arguments based on the other Section 2(e)(3) cases applicant cites, such as, In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB 2006), all of which are distinguishable on their facts from this case. We now consider the California Innovations factors, first - whether the primary significance of the mark is a generally known geographic location. Applicant does not argue that Havana is not a generally known geographic location, but that the entire mark HAVANA TIME, properly considered, is not primarily geographically deceptively misdescriptive. The Examining Attorney has provided evidence from the online Columbia Gazetteer which establishes that Havana identifies a generally known geographic location. Attachment to Office Action of June 18, 2008. As we noted, applicant does not dispute this fact. Rather, applicant posits that the TIME component of its mark is transformative and operates to cancel out the geographical meaning of HAVANA. Applicant states that HAVANA TIME “… captures a new sort of time like Miller Time, or Island Time, or even Greenwich Meantime.” Applicant’s Brief at 2. Applicant argues further that the HAVANA TIME mark does not refer to the place HAVANA, but to “… the lifestyles or qualities associated with that place.” Id. at 3. Serial No. 77417467 9 We are not persuaded by this argument. In fact, again we find no difference between the HAVANA CLUB and HAVANA TIME marks in this regard. There is nothing about either mark which in any way alters the primary geographical meaning of HAVANA, in particular, as applied to tobacco products. The Board considered the issue in Havana Club and rejected the proposition that the mark as a whole was not geographic. Havana Club, 88 USPQ2d at 1791 (“… we find that the primary significance of the mark HAVANA CLUB is geographic. The word CLUB does not detract from the primary geographic significance of the mark.”) (citation omitted). See also In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO and HAVANA CLIPPER held primarily geographically deceptively misdescriptive for rum and related products). Accordingly, we conclude that the primary significance of HAVANA TIME is that of the name of a generally known geographic location. Here too, in view of the close similarity between this case and the Havana Club case we find unpersuasive applicant’s arguments based on other cases, such as, In re Jacques Bernier Inc., 894 F.2d 389 13 USPQ2d 1725 (Fed. Cir. 1990) (RODEO DRIVE held not primarily geographically Serial No. 77417467 10 deceptively misdescriptive of perfume). We find the cited cases easily distinguishable. We now turn to the second factor under California Innovations, that is, whether the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place. Above we rejected the notion that applicant could avoid the refusal under Section 2(e)(3) by simply identifying its tobacco products as being grown from Cuban seed tobacco. Applicant has not argued and effectively concedes that the tobacco for its tobacco products will not be grown in Cuba and that its tobacco products will not be made in Cuba. Thus, because we reject the Cuban-seed loophole, we conclude that the tobacco products applicant identifies in the application will not come from Cuba. We also conclude that consumers viewing the mark would believe that applicant’s tobacco products do come from Cuba. The evidence the Examining Attorney provided from the online Columbia Gazetteer, which we referenced above, establishes an association between Havana and tobacco by identifying Havana as a port through which tobacco is exported. Attachment to Office Action of June 18, 2008. The evidence, discussed below in relation to the third and Serial No. 77417467 11 final factor, provides even more compelling evidence of this association. We also reject applicant’s facile argument, without supporting evidence, that U.S. consumers would understand that applicant’s products do not come from Cuba, apparently because those consumers would be aware of the U.S.-Cuban embargo. The Board has rejected that argument in similar cases, and we do likewise here. In re Bacardi & Co. Ltd., 48 USPQ2d at 1035. Accordingly, we conclude that the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place. And now we turn to that third factor - whether the misrepresentation as to the geographical origin of the identified goods would be a material factor in the consumer's decision to purchase. We conclude that it would. Applicant does not address this factor directly. Implicit in its core argument that tobacco products derived from Cuban seeds are equivalent to tobacco products grown and made in Cuba is the recognition that consumers value tobacco produced from Cuba. The Examining Attorney has provided evidence from the online Columbia Gazetteer which Serial No. 77417467 12 establishes the basic fact that Cuba produces and exports tobacco products. Attachment to Office Action of June 18, 2008. The Examining Attorney has also provided copies of pages from three websites which offer Cuban cigars for sale. Id. We infer from the advertising on these sites that consumers of tobacco products highly value tobacco products from Cuba. In his brief the Examining Attorney cites factual findings in the Havana Club case derived principally from expert testimony presented in that case. That evidence is not of record in this case and we have not relied on it for any purpose in reaching our decision here. However, we have consulted and take judicial notice of relevant reference works which offer further support for the proposition that consumers of tobacco products highly value tobacco products from Cuba and that the Cuban origin of those products would be material to their decision to purchase such products.3 The Good Cigar, A Guide to the World of Cigars (1996), states, “So powerfully associated with the best tobacco in the world was Cuba that the name of its chief city for 3 The Board may take judicial notice of dictionaries and similar references. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77417467 13 exportation quickly became synonymous worldwide with a fine cigar. Havana became the center for exporting Cuban tobacco due to twin blessings of geography: a magnificent harbor and proximity to a region endowed by Nature with a soil superbly suited to growing tobacco.” The guide elucidates on the properties of that region, stating, “Here, where rain falls in the right amounts in the right seasons and sun, shade and temperature are perfectly attuned to the needs of the tobacco plant….” Good Cigar at 44-45. The Cigar Companion – A Connoisseur’s Guide (2nd ed. 1995) details the production of Havana cigars, noting, “It has been estimated that a handmade Havana cigar goes through no fewer than 222 different stages from seedling to the finished product, before being ready for distribution. And the care and expertise shown at the factory is not only crucial to the final appearance of the cigar, but also affects how well it burns and what it actually tastes like.” Cigar Companion at 32-22. Finally, Cigar Aficionado’s CIGARS (1997) includes the following quote from Raul Roa Couri, Cuba’s ambassador to France, “The best Cuban ambassador is the Cuban Cigar.” CIGARS at 79. Serial No. 77417467 14 The evidence establishes that consumers of tobacco products highly value such products from Havana, Cuba. Accordingly, we conclude that the misrepresentation in the HAVANA TIME mark will be a material factor in the consumer's decision to purchase the identified tobacco products. Finally, after considering all of the evidence and arguments, including any we have not specifically discussed here, in view of the factors delineated in California Innovations, we conclude that HAVANA TIME is primarily geographically deceptively misdescriptive of the identified tobacco products. Decision: We affirm the refusal under Trademark Act Section 2(e)(3) with regard to the tobacco products identified in the application, namely: hand-rolling tobacco grown from Cuban seed tobacco; pipe tobacco grown from Cuban seed tobacco; roll your own tobacco grown from Cuban seed tobacco; rolling tobacco grown from Cuban seed tobacco; smoking tobacco grown from Cuban seed tobacco; cigars made from Cuban seed tobacco; cigarettes made from Cuban seed tobacco; and filter-tipped cigarettes made from Cuban seed tobacco. Accordingly, if applicant fails to appeal this decision, or if applicant does appeal and is unsuccessful Serial No. 77417467 15 in that appeal ultimately, the application will proceed with the identification of goods limited to the following: tobacco filters; tobacco grinders; tobacco pipe cleaners; cigar and cigarette boxes not of precious metal; cigar cutters; cigar humidifiers; cigar tubes; cigarette ash receptacles; cigarette cases, not of precious metal; cigarette holders; cigarette holders, not of precious metal; cigarette papers; cigarette rolling machines; cigarette rolling papers; cigarette tubes; hookahs; non- electric cigar lighters not of precious metal; smoking pipe cleaners; smoking pipes; and tobacco pipes. If applicant files and ultimately succeeds in an appeal, the application will proceed on the basis of the entire current identification of goods, subject to any directive in the appellate decision. Copy with citationCopy as parenthetical citation