G & R Brands, LLC

Trademark Trial and Appeal Board

Jun 14, 2010

No. 77417467 (T.T.A.B. Jun. 14, 2010)

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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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.