Cuban Cigar Brands, N.V.v.Inter America Cigar Co.

Trademark Trial and Appeal Board

May 21, 2008

No. 91169391 (T.T.A.B. May. 21, 2008)

Mailed: May 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Cuban Cigar Brands, N.V.
v.
Inter America Cigar Co.
_____

Opposition No. 91169391
_____

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

Jesus Sanchelima of Sanchelima and Associates, P.A., for
Inter America Cigar Co.
______

Before Quinn, Taylor, and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Inter America Cigar Co. filed an application for the
mark PRIMO DEL CRISTO, with design, for “cigars” in
International Class 341 as follows:

1 Application No. 78470957, filed August 20, 2004, under Section
1(a) of the Trademark Act of 1946, 15 U.S.C. §1051(a), with the
disclaimer: “No claim is made to the exclusive right to use ‘HAND
MADE IMPORTED CIGARS LONG FILLER’ apart from the mark as shown.”

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91169391
2

Cuban Cigar Brands, N.V., opposed the registration of
applicant’s mark on the grounds of likelihood of confusion
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d); and dilution under Sections 13(a) and 43(c), 15
U.S.C. §1063(a) and 1125(c). Specifically, opposer alleged
that applicant’s mark is likely to cause confusion with
opposer’s MONTECRISTO mark for “cigars”2 and for opposer’s
other marks as follows (collectively, the “MONTECRISTO
MARKS”):

2 Registration No. 1173547, issued on October 13, 1981 for
MONTECRISTO in typed drawing, for “cigars” in International Class
34, claiming July 25, 1935 as the date of first use and first use
in commerce. Renewed.
Opposition No. 91169391
3

Applicant denied the essential allegations in the
notice of opposition, and asserted the affirmative defense
of laches and equitable estoppel. Both parties filed
briefs. For the reasons discussed herein, we sustain the
opposition.3

3 We note that applicant raised for the first time in its brief
an alternative prayer for leave to convert its application to a
concurrent use application if the opposition is sustained.
Applicant’s request was improperly submitted and will not be
considered. See Trademark Rule 2.42, 37 CFR §2.42. Further, in
the event of a final decision adverse to applicant, there is no
authority to reopen the application. See TBMP §807 (2d ed. rev.
2004). Concurrent use rights may be determined only in the
context of a concurrent use proceeding. See TBMP §1112 (2d ed.
rev. 2004).
Opposition No. 91169391
4
Evidentiary Issues
Opposer filed various unauthenticated Internet
printouts as Exhibit AA to its Notice of Reliance. This
evidence is not properly submitted. There is no provision
in the Trademark Rules of Practice for filing copies of web
pages through a notice of reliance. See Trademark Rule
2.122(e), 37 CFR §2.122(e), which provides for the filing of
printed publications and official records through a notice
of reliance. Accordingly, these documents and their
contents will not be considered except to the extent they
may also have been properly submitted and authenticated
through other means, such as via exhibits to the testimonial
depositions.
The Record
By operation of law, the record includes the pleadings
and the application file. Trademark Rule 2.122(b), 37 CFR
§2.122(b). The record also includes the following testimony
and evidence:
A. Opposer’s Evidence.

1. Notice of Reliance on:
a. Applicant’s responses to certain of opposer’s
discovery requests.
b. Various advertisements, articles, and excerpts
from printed publications, discussing the
MONTECRISTO cigar brand.
Opposition No. 91169391
5
c. Various dictionary translations of the foreign
term “primo.”
d. Status and title copies of opposer’s
MONTECRISTO MARKS.
2. Rebuttal Notice of Reliance on various
advertisements, articles, and excerpts from printed
publications, discussing the MONTECRISTO cigar brand.
3. The testimony deposition of Eric Workman, Vice-
President of Marketing and National Accounts for Altadis
U.S.A. Inc., together with exhibits thereto.
4. The testimony deposition of Edward McVey, cigar
purchasing agent, together with exhibits thereto.
B. Applicant’s Evidence.
1. Notice of Reliance on opposer’s responses to
certain of applicant’s discovery requests.
2. The testimony deposition of Benjamin Gomez, Jr.,
President of Inter America Cigar Co., together with exhibits
thereto.
3. The testimony deposition of Juan Del Cerro,
licensed customs broker, together with exhibits thereto.
Standing
A party has standing to oppose a registration under
Section 13 of the Trademark Act of 1946, 15 U.S.C. §1063 if
that party can demonstrate that it has a real interest in
the proceeding (i.e., a direct and personal stake in the
Opposition No. 91169391
6
outcome of the proceeding). Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025-1026 (Fed. Cir. 1999); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). Opposer has submitted status and
title copies of its pleaded registrations, the MONTECRISTO
MARKS. Opposer has also testified as to the continuous use
of its MONTECRISTO mark since at least 1978. (Workman dep.
at 16:6-8). Therefore, opposer has established its standing
to oppose applicant’s registration. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Lipton Industries, Inc. v. Ralston Purina Co., 213
USPQ 185 at 189.
Laches
Prior to our consideration of opposer’s pleaded claim
of likelihood of confusion, we must first address
applicant’s affirmative defense of laches and equitable
estoppel to determine whether opposer’s claim is barred
thereby. The defense of laches is not generally available
in an opposition proceeding, but under certain circumstances
it may be considered based upon an opposer’s failure to
object to an applicant’s earlier registration of
substantially the same mark for substantially the same
goods. Aquion Partners Limited Partnership v. Envirogard
Products Ltd., 43 USPQ2d 1371 (TTAB 1997)(affirmative
defense of laches not available without showing of material
Opposition No. 91169391
7
prejudice); Barbara’s Bakery Inc. v. Landesma, 82 USPQ2d
1283, 1292 n. 14 (TTAB 2008)(affirmative defense of
equitable estoppel not properly pled or proven). Applicant
owned two prior registrations, now expired, for essentially
the same mark covering essentially the same goods.4
Therefore, we give due consideration to applicant’s
affirmative defense of laches, which subsumes applicant’s
argument regarding equitable estoppel.
In order to prevail on the affirmative defense of
laches, a defendant must establish that there was undue or
unreasonable delay by the plaintiff in asserting its rights,
and that prejudice to the defendant resulted from the delay.
See Bridgestone/Firestone Research Inc. v. Automobile Club
de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462
(Fed. Cir. 2001). “Mere delay in asserting a trademark-
related right does not necessarily result in changed
conditions sufficient to support the defense of laches.
There must also have been some detriment due to the delay.”
Id., 58 USPQ2d at 1463. With regard to delay, the focus is
on reasonableness and the Board must consider any excuse
offered for the delay. See A. C. Aukerman Co. v. R. L.
Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321,
1329 (Fed. Cir. 1992). With regard to prejudice, there must

4 Registration Nos. 883186 and 1244746, both claiming first use
and first use in commerce July 1, 1968, and both expired for
failure to file Section 8 affidavit.
Opposition No. 91169391
8
also have been some detriment due to the delay such as
evidentiary prejudice or economic prejudice, and respondent
must show that its prejudice resulted from the delay. Id.
The mere passage of time does not constitute laches. See
Aquion Partners L.P. v. Envirogard Products, Ltd., 43
USPQ2d 1371, 1373, citing Advanced Cardiovascular Systems v.
SciMed Life Systems, 988 F.2d 1157, 26 USPQ2d 1038, 1041
(Fed. Cir. 1993).
Applicant has not evidenced any reliance or harm due to
opposer’s nonaction regarding applicant’s prior-registered
PRIMO DEL CRISTO mark. Although applicant has twice before
registered the PRIMO DEL CRISTO mark for “cigars,” both
times it has abandoned the registration due to applicant’s
failure to file Section 8 affidavits. Applicant has
testified only as to very low level sales of its cigars
under the PRIMO DEL CRISTO mark at any time, with no current
advertising or promotions (Gomez dep. at 142:5-142:25;
143:1-143:5). Meanwhile, opposer has testified as to its
lack of knowledge of applicant’s use of the PRIMO DEL CRISTO
mark at any time. (Workman dep. at 12:7-15). An experienced
cigar purchasing agent with over 20 years in the business
also testified as to his lack of lack of knowledge of
applicant’s use of the PRIMO DEL CRISTO mark at any time.
(McVey dep. at 8:19-22) With no apparent reliance upon, or
harm done to applicant, by opposer’s lack of action
Opposition No. 91169391
9
regarding the PRIMO DEL CRISTO mark, we deny applicant’s
affirmative defense of laches and equitable estoppel.
Priority
Because opposer’s registrations for the MONTECRISTO
MARKS have been made of record, Section 2(d) priority is not
an issue with respect to the goods identified therein. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974); B.V.D. Licensing Corp. v.
Rodriguez, 83 USPQ2d 1500, 1506 (TTAB 2007). In any event,
as indicated supra, opposer has introduced testimony
regarding its prior use of the marks. (Workman dep. at
16:6-8). Applicant has raised priority as an issue in its
answer to the opposition as well as in its brief. However,
as the Board has already pointed out to applicant when
denying applicant’s motion for summary judgment:
“Any attack on the validity of opposer’s pleaded
registrations is a compulsory counterclaim that
will not be heard unless a counterclaim or
separate petition seeking the cancellation of such
registrations is filed.”
Board’s Order, December 4, 2006, quoting Trademark
Rule 2.106(b)(2); 37 CFR §2.106(b)(2).
Accordingly, applicant may not collaterally attack
opposer’s registrations, or opposer’s priority, via
this opposition proceeding.
Opposition No. 91169391
10
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
The similarity or dissimilarity
and nature of the goods
Applicant is seeking to register PRIMO DEL CRISTO for
“cigars.” Opposer has, among its MONTECRISTO MARKS, several
registrations for “cigars.” Therefore, the goods are
identical. This du Pont factor weighs heavily toward
finding a likelihood of confusion.
The similarity or dissimilarity of established,
likely-to-continue trade channels

Applicant seeks to sell cigars under the proposed PRIMO
DEL CRISTO mark. Opposer sells cigars under its MONTECRISTO
MARKS. In the absence of specific limitations in either
opposer’s pleaded registrations or in the application, we
must presume that the goods at issue will travel in all
Opposition No. 91169391
11
normal and usual channels of trade and methods of
distribution and be sold to all classes of consumers, which
in this case may overlap. Squirtco v. Tomy Corporation, 697
F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). Accordingly, this
du Pont factor weighs in favor of finding that there is a
likelihood of consumer confusion.
The Strength of Opposer’s Marks
Opposer’s mark “MONTECRISTO” is registered with the
translation “Mountain of Christ.”5 This mark, as applied to
“cigars,” is arbitrary, and therefore inherently strong.
Opposer has also demonstrated a significant degree of market
strength of the MONTECRISTO mark, testifying that its cigars
sold thereunder are “in the top ten” among sales of cigars
in the United States, “perhaps in the top five or six.”
(Workman dep. at 40:7-8) Opposer has further testified as
to sales of “millions” of cigars annually (Workman dep. at
39:23-24), with revenues in the “tens of millions” of
dollars (Workman dep. at 40:2), and advertising in the
“hundreds of thousands,” sometimes “millions” of dollars per
year (Workman dep. at 52:17-20). The record is devoid of
third-party uses or registrations of the same of similar
marks in the industry. While the Board is not prepared on
this record to call the MONTECRISTO mark “famous,” the

5 See Opposer’s Registration No. 2304416, for “MONTECRISTO.”
Opposition No. 91169391
12
strength of the mark does weigh in favor of finding a
likelihood of confusion.
The similarity or dissimilarity of the marks
in their entireties.
Preliminarily, we note that the more similar the goods
at issue, the less similar the marks need to be to find a
likelihood of confusion. Real Estate One, Inc. v. Real
Estate 100 Enterprises Corporation, 212 USPQ 957 (TTAB
1981). Here, the goods are identical, thereby requiring a
lesser showing of similarity between the appearance, sound,
connotation and commercial impression of the marks at issue.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
Both marks have foreign translations. Opposer’s
MONTECRISTO mark, as discussed previously, is registered
with the translation “Mountain of Christ.” Applicant has
submitted a translation of its PRIMO DEL CRISTO as “Cousin
of Christ.” Opposer disputes applicant’s submitted
translation, contending rather that “primo” is best
translated as “first,” “leading,” “excellent,” or
“superior.” Opposer has submitted several dictionary
definitions to support its proffered translations. (Opp.’s
Not. of Reliance, Ex. K). We accept the definitions
submitted by opposer in accordance with Trademark Rule
2.122(e), 37 CFR §2.122(e), and we find it inapposite that
“primo” may also be translated as “cousin.” Therefore, we
Opposition No. 91169391
13
find it likely that U.S. consumers will understand PRIMO DEL
CRISTO to mean “the Best of Christ.”
This is highly relevant to the commercial impression
created by applicant’s proposed mark. Opposer’s MONTECRISTO
MARKS include several registrations for embellishments of
its MONTECRISTO mark, including WORLD OF MONTECRISTO,6
MONTECRISTO LE CIGARE DES ARTS,”7 and MONTECRISTO CASINO,8
all for “cigars.” Furthermore, opposer has testified that
it is common practice in the industry for cigar makers to
create derivatives of their signature cigar lines as opposer
has already done (Workman dep. at 38:19). The clear
implication is that consumers will likely be confused into
thinking that PRIMO DEL CRISTO is a new brand offered by
opposer as a “first,” “leading,” “excellent,” or “superior”
line of MONTECRISTO cigars. Id.; (McVey dep. at 22:25).
Applicant’s proposed mark includes a design element.
Where a mark consists of words as well as a design however,
the words are generally considered dominant. CBS Inc. v.
Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983). We thus
find that the design does not distinguish applicant’s mark
from opposer’s marks. Furthermore, applicant’s design
contains elements reminiscent of designs already registered
by opposer in its MONTECRISTO MARKS. We also take note that
since opposer owns several registrations for MONTECRISTO in

6 See Opposer’s Registration Nos. 2555239, 2673722.
7 See Opposer’s Registration No. 2423694.
8 See Opposer’s Registration No. 2872359.
Opposition No. 91169391
14
standard character or typed drawing format, there is no
restriction on how opposer may present its mark. Phillips
Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ
35, 36 (CCPA 1971).

The Board therefore finds that this du Pont factor
weighs in favor of finding a likelihood of consumer
confusion.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that a
likelihood of confusion exists because the goods are
identical, they are likely to be sold through the same
channels of trade, and the marks are similar.9
Decision: The opposition is sustained. Serial No.
78470957 is refused registration.

9 Since we sustain the opposition on the ground of likelihood of
confusion, we need not consider opposer’s claim of dilution.