Bacardi & Co. Ltd.

Trademark Trial and Appeal Board

Jun 3, 1997

EX (T.T.A.B. Jun. 3, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB June 3, 1997
Paper No. 12
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Bacardi & Company Limited
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Serial No. 74/534,896
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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 a trademark
application to register the mark, HAVANA STYLE1 for “rum.”
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(3) of the Trademark Act, 15
U.S.C. 1052(e)(3),2 on the ground that applicant’s mark is

1 Serial No. 74/534,896, 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 STYLE apart from the mark
as a whole.
2 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
Serial No. 74/534,896
2
primarily geographically deceptively misdescriptive in
connection with its proposed goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
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).
The issues presented in this case are identical, and
the facts are similar, to those presented in the appeals in
applications Serial Nos. 74/534,897 (HAVANA SELECT),

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.
Serial No. 74/534,896
3
74/535,875 (HABANA CLASICO), 74/535,192 (OLD HAVANA),
74/532,342 (HAVANA PRIMO), and 74/532,527 (HAVANA CLIPPER).
We affirm the refusal herein for the reasons asserted in the
single decision of the Board in those cases and we
incorporate that decision by reference herein. A copy of
the Board’s decision is enclosed.
With respect to the mark in this case, we briefly
address the question of whether the addition of the term
STYLE to the geographic term HAVANA detracts from the
primary geographic significance of the proposed composite
mark, HAVANA STYLE.3
Regarding this issue, applicant merely reiterates its
unsupported contention that the mark “evokes the image of a
pre-Castro, free-wheeling lifestyle that would appeal to the
purchasers of aged, fine rum”; and makes the also
unsupported contention that applicant is “internationally
renowned for being the originator of the light style of
Cuban rum, aged and carefully blended, which became a
favorite in the United States after Prohibition and
continues to gain in popularity today.” (Applicant’s brief,
p. 3.) The Examining Attorney contends that, even if the
mark conveys that it is “of the Havana type” of rum, that
the mark remains primarily geographic as it connotes that

3 The Examining Attorney submitted a definition of STYLE as “n. a
particular kind, sort or type, as with reference to form” from The
Random House College Dictionary (1973), and contends that STYLE is
descriptive in relation to alcoholic beverages.
Serial No. 74/534,896
4
“the rum from Havana is of a particular kind.” (Examining
Attorney’s brief, p. 8.)
We agree with the Examining Attorney that, in this
case, the primary connotation of the mark remains
geographic. In certain cases, by adding the word STYLE to a
geographic term in a mark, the connotation of the mark, when
considered in connection with the identified goods or
services, may be descriptive of a style of the goods or
services rather than primarily descriptive of the geographic
origin of the goods or services. However, this
determination must be made on a case-by-case basis and will
depend on a balancing of the evidence of a goods/place
association and any evidence that the geographic term is
also descriptive of a style of the goods or services. In
this case, while there is strong evidence that HAVANA is a
geographic location for which rum is a significant product
so that, as concluded herein, consumers are likely to make a
goods/place association, there is no evidence to support
applicant’s contention that consumers would be aware of a
HAVANA style of rum. Further, even if consumers might
understand the mark HAVANA STYLE as also identifying a style
of rum, there is no evidence that consumers would not also
believe, primarily, that all such rum comes from HAVANA.
Thus, we conclude that HAVANA STYLE remains primarily
geographic in connotation.
Serial No. 74/534,896
5
In further support of our conclusion that the addition
of the word STYLE to HAVANA does not alter its primary
significance as indicating geographic origin in connection
with applicant’s rum, we note the recent amendment to
Section 2(a) of the Trademark Act,4 as indicated in bold
print:
No trademark by which the goods of the applicant
may be distinguished from the goods of others
shall be refused registration on the principal
register on account of its nature unless it --
(a) consists of or comprises . . . a geographical
indication which, when used in connection with
wines or spirits, identifies a place other than
the origin of the goods and is first used on or in
connection with wines or spirits by the applicant
on or after one year after [January 1, 1995].
This amendment, contained in P.L. 103-465, implements the
United States’ obligations under the Agreement Establishing
the World Trade Organization (WTO) and the annexed Uruguay
Round agreements, which includes the Agreement on the Trade
Related Aspects of Intellectual Property (TRIPs). Of
relevance to us in this case, is Article 23 of Section 3
[Geographical Indications]5 of the TRIPs Agreement, which
states, in pertinent part, as follows:
Each Member shall provide the legal means for
interested parties to prevent use of a
geographical indication . . . identifying spirits

4 Public Law 103-465, § 522, 108 Stat. 4982, the Uruguay Round Agreement
Act, signed into law on December 8, 1994, and effective January 1, 1996.
5 Geographical indications are defined in TRIPs Article 22(1) as
“indications which identify a good as originating in the territory of a
Member, or a region or locality in that territory, where a given
quality, reputation or other characteristic of the good is essentially
attributable to its geographical origin.”
Serial No. 74/534,896
6
not originating in the place indicated by the
geographical indication in question, even where
the true origin of the goods is indicated or the
geographical indication is used in translation or
accompanied by expressions such as “kind,” “type,”
“style,” “imitation” or the like.
This prohibition, required by the TRIPs Agreement and
implemented by the amendment to Section 2(a) of the
Trademark Act of P.L. 103-465, is an absolute prohibition
against the registration, in connection with wines or
spirits, of a mark that includes a geographical indication
if the wines or spirits do not originate in that geographic
area.6 Further, the language of Section 23 of the TRIPs
Agreement makes it clear that the addition of certain terms,
in particular STYLE, does not alter the primary geographic
significance of the geographic indication. While the
refusal to register in the case before us is under Section
2(e)(3), rather than Section 2(a), the question of the
geographic connotation of the mark is the same under both
sections. Thus, we believe these amendments to Section 2(a)
and the reasons therefor are very relevant to our

6 See, Senate Report No. 103-412, Joint Report of the Committee on
Finance, Committee on Agriculture, Nutrition, and Forestry, Committee on
Governmental Affairs of the United States Senate to Accompany S. 2476,
Uruguay Round Agreements Act, p. 226, which states: “TRIPs requires WTO
member countries to refuse or invalidate a registration of any trademark
consisting of a geographic indication identifying wines or spirits not
originating in the place indicated. Section 522 of the bill amends
section 2 of the Trademark Act to provide that marks for wines or
spirits are not registerable to the extent they include a geographical
indication if in fact, the wines or spirits do not originate in that
geographic area.”
Serial No. 74/534,896
7
consideration herein of the connotation of HAVANA STYLE as
primarily geographic.7

7 We do not consider herein the propriety of a refusal to register in
this case under Section 2(a). However, while this intent-to-use
application was 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 indicating that use of the
mark commenced subsequent to January 1, 1995, it would be appropriate
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. 74/534,896
8
Decision: The refusal under Section 2(e)(3) of the Act
is affirmed.
J. D. Sams
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board