Bacardi & Co.

Trademark Trial and Appeal Board

May 27, 1997

EX (T.T.A.B. May. 27, 1997)

THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB May 27, 1997
Paper No.
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Bacardi & Company Limited
___________
Serial Nos. 74/534,897; 74/535,875; 74/535,192; 74/532,342;
74/532,527
___________
William R. Golden, Jr., Kelley, Drye & Warren for applicant.
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Sams, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Bacardi & Company Limited has filed five trademark
applications to register the marks HAVANA SELECT,1 HABANA
CLASICO,2 and OLD HAVANA3 for “rum”; and HAVANA PRIMO4 and

1 Serial No. 74/534,897, in International Class 33, filed June 8, 1994,
based on a bona fide intention to use the mark in commerce. The
application includes a disclaimer of the term SELECT apart from the mark
as a whole.
2 Serial No. 74/535,875, in International Class 33, filed June 8, 1994,
based on a bona fide intention to use the mark in commerce. The
application includes a disclaimer of the term CLASICO apart from the
mark as a whole and a statement that the mark means “Havana Classic” in
Spanish.
3 Serial No. 74/535,192, in International Class 33, filed June 9, 1994,
based on a bona fide intention to use the mark in commerce.
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
2
HAVANA CLIPPER5 for “rum, distilled spirits specialty
containing rum and prepared alcoholic cocktail containing
rum.” In the interest of judicial economy, as the issues in
these five appeals are identical and the facts are similar,
we will consider the appeals together and render a single
decision pertaining to all five applications.
The Trademark Examining Attorney has finally refused
registration in each application under Section 2(e)(3) of
the Trademark Act, 15 U.S.C. 1052(e)(3),6 on the ground that
applicant’s marks are primarily geographically deceptively
misdescriptive in connection with its proposed goods.

4 Serial No. 74/532,342, in International Class 33, filed June 2, 1994,
based on a bona fide intention to use the mark in commerce.
5 Serial No. 74/532,527, in International Class 33, filed June 2, 1994,
based on a bona fide intention to use the mark in commerce.
6 The amendments to Section 2 of the Trademark Act of 1946 made by
Public Law 103-183, 107 Stat. 2057, The North American Free Trade
Enactment Act, apply to applications filed on or after December 8, 1993.
Prior to these amendments, the prohibitions against registration on the
grounds that a mark is primarily geographically descriptive or that a
mark is primarily geographically deceptively misdescriptive were
contained in Section 2(e)(2) of the Act. Under the law as amended, the
prohibition against registration on the ground that a mark is primarily
geographically deceptively misdescriptive is contained in Section
2(e)(3) of the Act, which is applicable to the cases herein. The legal
standard for determining this issue has not changed, although marks
found to be primarily geographically deceptively misdescriptive are no
longer eligible for registration under the provisions of Section 2(f) of
the Act, subject to certain grandfather provisions.
While we do not consider herein the propriety of a refusal to
register in these cases under Section 2(a), we note, additionally, that
changes were made to Section 2(a) by Public Law 103-465, §522, 108 Stat.
4982, the Uruguay Round Agreement Act, signed into law on December 8,
1994, and effective January 1, 1995. The amendment adds an absolute
prohibition against the registration, in connection with wines or
spirits, of a mark that includes a geographic indication if the wines or
spirits do not originate in that geographic area. This prohibition
applies to all such uses which first commence on or after January 1,
1995. While the intent-to-use applications herein were filed and
examined prior to the effective date of the noted amendments to Section
2(a), if applicant was to submit an amendment to allege use or a
statement of use in any of these applications indicating that use of the
mark commenced subsequent to January 1, 1995, it would be appropriate
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs in each case, but oral
hearings were not requested. We affirm the refusals to
register.
In order for registration to be properly refused under
Section 2(e)(3), it is necessary to show that (i) the mark
sought to be registered is the name of a place known
generally to the public; and that (ii) purchasers are likely
to believe, mistakenly, that the goods or services sold
under applicant’s mark have their origin in or are somehow
connected with the geographic place named in the mark. In
re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
See also, In re California Pizza Kitchen, Inc., 10 USPQ2d
1704 (TTAB 1988), citing In re Societa Generale des Eaux
Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed.
Cir. 1987).

for the Examining Attorney to consider whether to refuse registration
under the provisions of Section 2(a) as amended by P.L. 103-465.
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
4
Marks Convey Primarily Geographic Connotation.
With regard to the first prong of the test, there is no
genuine issue that HAVANA7 is the name of a major city in
Cuba. Applicant contends that the term HAVANA does not
convey primarily a geographic meaning; rather it “evokes an
historic and stylistic image,” associated with a “pre-Castro
free-wheeling lifestyle.” However, applicant has submitted
absolutely no evidence to establish in this record that the
relevant purchasers would make such an association.
Further, even if applicant had established an association
between HAVANA and a particular lifestyle, such association
would not contradict the primary geographic significance of
the term, as the association may be made precisely because
of the primary significance of HAVANA as a city in Cuba.
Further, we conclude that the additional term added to
the proposed mark in each application does not detract from
the primary geographic significance of each of the proposed
composite marks. See, In re Chalk’s International Airlines
Inc., 21 USPQ2d 1637, 1639 (TTAB 1991). Moreover, as the
Board has stated in the past, the determination of
registrability under Section 2(e)(2) [and, now, Section
2(e)(3)] should not depend on whether the mark is unitary or

7 The record shows that HABANA, which is the relevant term in the
proposed mark HABANA CLASICO, is the Spanish term for HAVANA. We find
HAVANA and HABANA to be equivalent and, thus, the geographic
significance of the terms is the same. The record contains no evidence
to indicate otherwise. Our discussion herein pertaining to HAVANA
pertains equally to HABANA.
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
5
composite. See, In re Cambridge Digital Systems, 1 USPQ2d
1659, 1662 (TTAB 1986).
HAVANA SELECT, HAVANA CLASICO, HAVANA PRIMO.
The Examining Attorney contends that the terms SELECT,
CLASICO and PRIMO, in, respectively, the marks HAVANA
SELECT,8 HABANA CLASICO9 and HAVANA PRIMO10 are laudatory
and/or descriptive in connection with the identified goods.
Applicant has entered disclaimers of the terms SELECT and
CLASICO in the respective applications, although it is
applicant’s contention that these additional terms emphasize
the lifestyle connotation of HAVANA. Notwithstanding the
disclaimers of record, the record supports the conclusion
that these terms would be perceived merely as type or grade
designations in connection with the identified goods, such
that these terms do not alter the primary geographic
significance of the composite marks.
OLD HAVANA.
Similarly, regarding the proposed mark OLD HAVANA, the
addition of the term OLD to the geographic term HAVANA

8 The Examining Attorney submitted a definition of SELECT as “adj.
choice; of special excellence” from The Random House College Dictionary
(1973), and contends that SELECT is descriptive in relation to alcoholic
beverages.
9 The record shows that CLASICO is the Spanish term for CLASSIC. The
Examining Attorney submitted a definition of CLASSIC as “adj. of the
first or highest class or rank” from The Random House College Dictionary
(1973), and contends that CLASICO is a laudatory or descriptive term
indicating that applicant’s rum is “first-class or highly valuable.”
10 The Examining Attorney submitted a definition of PRIMO as “slang a.
first-class, b. highly valuable or most essential” from The Random House
College Dictionary (2d ed. 1993), and contends that PRIMO is a laudatory
term indicating the quality of applicant’s alcoholic beverages.
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
6
simply either describes a characteristic of the city or
refers to a section of the city. Thus, OLD reinforces the
geographic significance of the composite mark.
HAVANA CLIPPER.
Regarding the mark HAVANA CLIPPER, the Examining
Attorney submitted a dictionary definition11 of CLIPPER,
noting the entry “4. a person or thing that moves along
swiftly”; however, we note, also, the entry “5. a sailing
vessel built and rigged for speed, esp. a type of three-
masted ship built in the U.S. from c1845.” The Examining
Attorney contends that the composite mark implies that
“applicant’s products are so good that the consumption of
the beverages move along swiftly” (Office Action, June 9,
1995). On the other hand, applicant contends that the
composite mark is evocative of “the fast-sailing clipper
ships that used to ply the waters of the Caribbean”
(applicant’s response, April 20, 1995). We are inclined to
agree with applicant that, as HAVANA is located in the
Caribbean, the connotation of HAVANA CLIPPER is more likely
to be of Caribbean sailing vessels that may sail out of
HAVANA. There is no evidence that there is a type of ship
called a HAVANA CLIPPER or a famous ship named the HAVANA
CLIPPER, such that the geographic significance of HAVANA

11 The Random House College Dictionary (1973).
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
7
would be diminished.12 On the record, we conclude that the
term CLIPPER does not detract from the primary geographic
significance of HAVANA as a city in the Caribbean and, thus,
the primary significance of the composite mark remains
geographic.
Goods/Place Association.
We turn, then, to the question of whether purchasers
are likely to make a goods/place association between the
geographic place named in applicant’s marks and the
identified goods. We answer that question in the
affirmative. The Examining Attorney has submitted evidence
from dictionaries, encyclopedias and gazetteers indicating
that HAVANA, Cuba, is a major city which produces a variety
of goods, among which “rum” is listed as a significant
product. Applicant has alleged that its family name,
Bacardi, is widely associated with rum that is historically
from Cuba and that U.S. consumers associate a certain
popular style of rum as originating in Cuba. We find
sufficient evidence herein to conclude that a goods/place
association is likely to be made by purchasers between
HAVANA, the major city in Cuba, and the rum products
identified in these applications. Thus, purchasers are
likely to believe that the rum products to be sold under the
proposed marks originate in HAVANA, Cuba.

12 We do not suggest that, if the record contained such information, we
would necessarily reach a different conclusion regarding the geographic
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
8
Ground for Refusal.
At this juncture in our analysis, we note that, if
applicant’s goods, in fact, originated in Cuba, the marks
herein would be appropriately refused registration under
Section 2(e)(2) of the Act, on the ground that such marks
would be primarily geographically descriptive in connection
with the identified goods. However, in these cases,
applicant admits that it does not produce rum in Cuba and
that applicant is presently legally precluded from
distributing rum originating in Cuba in United States
commerce. Thus, we agree with the Examining Attorney that
the marks herein are properly refused registration, under
Section 2(e)(3), on the ground that such marks are primarily
geographically deceptively misdescriptive of the identified
goods because purchasers’ belief that the rum products to be
sold under the proposed marks originate in HAVANA, Cuba, is
a mistaken belief.13
Applicant’s Allegation of Extenuating Circumstances.
Applicant contends, essentially, that extenuating
circumstances warrant reversal of the refusal to register.
Applicant states that it began its rum-producing business in
Cuba and intends to resume producing rum in Cuba, and to use
the proposed marks herein in connection with such rum, as

significance of the composite mark.
13 We find no evidence to support applicant’s contention that, in view
of the U.S. trade sanctions against Cuba, purchasers will know that no
products on the U.S. market could originate in Cuba.
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
9
soon as legally and politically possible. Applicant
explains its history and relationship to Cuba, stating that
“applicant is presently owned by descendants of Don Facundo
Bacardi, who over a century ago in Cuba originated a recipe
and process for the distillation and manufacture of rum that
is sold under the BACARDI name and mark” and that “[o]n
October 14, 1960, the Cuban properties of applicant’s
predecessor were unlawfully expropriated” (Applicant’s
response, April 20, 1995); that applicant is a well-known
producer of Cuban rum, which is now produced elsewhere
according to the same formulae and processes that have been
handed down over the past 130 years in the Bacardi family;
that applicant originated the “light style of rum, aged and
carefully blended” that applicant alleges is popular in the
United States; and that applicant intends to produce rum in
Cuba, where applicant’s rum business began, “[w]hen the
President of the United States, pursuant to the Cuban
Democracy Act of 1992, 22 U.S.C.A. Section 6007(b),
certifies that a democratic government has been re-
established in Cuba such that the U.S. trade embargo with
Cuba is lifted” (Applicant’s response, supra). Applicant
submitted no evidence in support of its statements.
Applicant states, in its brief, that:
to refuse to allow intent-to-use applications
. . . because of the current embargo, unfairly
prejudices companies . . . that adhere to U.S.
law. Cuban state-run trading companies, many of
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
10
which operate out of facilities confiscated by
Castro from pre-Castro Cuban free enterprises, are
unfairly favored, because they are presumably
permitted to register such marks in the United
States on an ‘intent-to-use’ basis or under treaty
rights even though they cannot have a present bona
fide intent to use those marks in interstate
commerce within the United States as the embargo
does not permit such usage. Such a policy
unfairly favors the anti-democratic, Communist-
controlled business entities in Cuba, by
permitting them, in effect, to register marks that
arguably evoke the rich heritage of Cuban history
and culture, while denying the expatriate Cuban
businesses that helped build that heritage from
registering marks . . . that evoke a pre-Castro,
Cuban lifestyle. Such a policy is contrary to the
Cuban Democracy Act, which is intended to promote
the adoption of a democratic government in Cuba.
Applicant asserts that “[i]n view of recent events, it is
quite possible that the policy of the U.S. government as
expressed in federal law will be effective and within [the]
thirty months [that an intent-to-use applicant is permitted
after allowance in which to use a mark] democracy will be
re-established in Cuba” and, thus, the refusal to register
will be moot.14
We find applicant’s position to be unpersuasive of a
different result herein as it is based on a number of
misconceptions. First and foremost, regardless of the
existence of trade sanctions against Cuba, we have
determined that the marks herein would be subject to refusal

14 As applicant notes, the provisions establishing and defining the
terms of the trade sanctions, or “embargo,” against Cuba can be found in
the Trading With The Enemy Act, 50 U.S.C.A. App. § 16(b)(1), the Cuban
Democracy Act, 22 U.S.C.A. 6001 et. seq. and the Cuban Asset Control
Regulations, Chapter 31 C.F.R. Part 515.
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
11
under either Section 2(e)(2),15 if the identified goods are
intended to originate in HAVANA, or Section 2(e)(3),16 if
the identified goods are not intended to originate in
HAVANA. Thus, if circumstances change so that applicant can
indicate a present intention to manufacture the goods to be
identified by the proposed mark in Cuba, the Examining
Attorney would be likely to withdraw the basis for the
refusal to register herein under Section 2(e)(3) of the Act
and refuse registration, instead, under Section 2(e)(2) of
the Act.17
Similarly, we see no basis for applicant’s allegations
of prejudice. A so-called Cuban state-run trading company
applying to register in the United States the marks herein
on the basis of a bona fide intention to use such marks in
commerce, in connection with the identified goods herein,
would be subject to the same examination and same refusals
to register as applicant. The fact that such company would
likely indicate its intention for its identified goods to
originate in HAVANA, Cuba, would result in the refusal,

15 As previously stated, the composite marks herein are primarily
geographic in connotation; HAVANA, the place named in the marks, is
known generally to the public; and purchasers would be likely to believe
that the identified goods originate in, or are somehow connected with,
HAVANA.
16 As previously stated, the composite marks herein are primarily
geographic in connotation; HAVANA, the place named in the marks, is
known generally to the public; and purchasers would be likely to
believe, mistakenly, that the identified goods originate in, or are
somehow connected with, HAVANA.
17 A mark refused registration under Section 2(e)(2) may be registrable
on the Supplemental Register, under Section 23, or it may be registrable
on the Principal Register with a showing of acquired distinctiveness
under Section 2(f).
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
12
based on the geographic significance of the marks, being
made under Section 2(e)(2), rather than, as herein, under
Section 2(e)(3). Presumably, the sanctions contained in the
relevant laws and regulations pertaining to Cuba would
present the same problems to any intent-to-use applicant
(i.e., the uncertainty that the required use of the mark in
commerce between the United States and Cuba could occur
within the timeframe mandated in the Trademark Act so that
the intent-to-use application could mature into a
registration).
The Cuban Asset Control Regulations (“the
Regulations”), at 31 C.F.R. 515.527, permit certain
transactions with respect to the filing of trademark
applications and maintenance of trademark registrations.
Certain special procedures pertaining to such transactions
are detailed in the Regulations; however, in all other
respects, the procedural and substantive provisions of the
Trademark Act and relevant law and regulations must be
met.18
Finally, we note that, to the extent applicant is
arguing that substantive examination of an application
should be deferred until a statement of use is filed,

18 Thus, for example, the most likely statutory basis for filing a
trademark application, subject to the Regulations, would be under
Section 44 of the Act, based on a foreign filing or registration in a
country that is a party to the Paris Convention and/or the World Trade
Organization. Further, an existing registration, which is subject to
the Regulations, would be subject to the maintenance provisions in
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
13
applicant’s position is not well-taken. While it is not the
case herein, even if an uncertain future event could render
a substantive refusal moot, the Examining Attorney is
required to conduct, to the fullest extent possible, a
substantive examination of an application, regardless of
whether it is based upon Sections 1(a), 1(b) or 44 of the
Act, prior to passing the application to publication for
opposition. See, In re Parfums Schiaparelli Inc., 37 USPQ2d
1864 (TTAB 1995); and In re American Psychological
Association, 39 USPQ2d 1467 (Comm’r. 1996). Thus, the
Examining Attorney properly considered the issue of
geographic descriptiveness during his examination of the
subject applications. Further, applicant admitted that, at
the time of filing the applications and during the
examination thereof, it was legally precluded from producing
the identified products in Cuba. Therefore, the Examining
Attorney properly considered those facts, rather than
considering applicant’s allegations of possible future
occurrences, and correctly refused registration under
Section 2(e)(3) of the Act, on the ground that the marks
herein are primarily geographically deceptively
misdescriptive in connection with the identified goods.
Decision: The refusal under Section 2(e)(3) of the Act
is affirmed as to each application.

Sections 8 and 9 of the Act, permitting a showing of nonuse due to
Serial No. 74/534,897; 74/535,876; 74/535,192; 74/532,342;
74/532,527
14
J. D. Sams
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board

special circumstances.