TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91164950
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`—----------------------------—-F-—--)
`C.A.T. TOBACCO CORPORATION
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`Opposer,
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`. vs“
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`ANNCAS, INC.‘
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`Applicant
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`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
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`COMES NOW Applicant, Anncas, Inc., (hereafler "App1icant"), by and through its
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`counsel, SANCHELIMA & ASSOCIATES, P.A., hereby files its motion for summary
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`judgment, in accordance with Rule 56 of the Federal Rules of Civil Procedure.
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`In support of its motion, Applicant submits herewith its Memorandum of Law in Support
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`of its Motion fo:r Summary Judgment.
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`Respectfully submitted,
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`SANCHELIMA & ASSOCIATES, P.A.
`Attorneys for Applicant
`235 S.W. Le Jeune Road
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`Miami, FL 33134-1762
`Telephone: (305) 447-1617
`Telecopier: (305)445-8484
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`By:
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`He '
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`o
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`||||||||||||||||||||||||||||||||||||||||l|||||||l|
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`01-17-2006
`U.S. Patent & TMOfclTM Mail Rcpt Dt. #26
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a true correct copy of the foregoing was served via U.S.
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`First Class Mail, this __\Q__ of January, 2006, to Mitchell ‘H. Stabbe, Esq., Dow, Lohnes &
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`Albertson, P.L.L.C.,.1200 New Hampshire Avenue N.W., Suite 800, Washington, DC. 20036-
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`6802; attorneys for Opposer.
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`He
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`no
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`°
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`q.
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`p CERTIFICATE oE" EXPRESS MAIL
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`I HEREBY CERTIFY that this correspondence is being deposited with the United
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`States Postal Service’s “First Class Mail” “o Addresses” service pursuant to 37 C.F.R § 1.10,
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`VIA Express Mail, in an envelope addressed to the Assistant Commissioner of Trademarks, 2900
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`Crystal Drive, Arlington? VA 22203=3513 on the above referenced date.
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`Date of Deposit: all] olzooc
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`By:
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`{U
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`EfXf¥."i'6{£.ZfEEB'E3i£i56i{Z3i611}""
`Opposer,
`vs.
`ANNCAS, INC.
`Applicant.
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`5
`i
`5
`g
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`Opposition No. 91164950
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`MEMORANDUM OF LAW IN SUPPORT OF APPLICANT’S
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`MOTION FOR SUMMARY JUDGMENT
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`COMES NOW Applicant, Anncas, Inc., (hereafter "Applicant"), by and through its
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`counsel, SANCHELIMA & ASSOCIATES, P.A., hereby files its memorandum of law in
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`support of its motion for summary judgment, in accordance with Rule 56 of the Federal Rules of
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`Civil Procedure.
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`1.
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`PRELIMINARY STATEMENT
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`Applicant moves the Board for a summary judgment in its favor. The Board must
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`determine if there is likelihood of confusion between Applicant’s mark as presented in its
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`application and the alleged superior rights Opposer claims. Opposer claims prior use of
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`designations that include “reserva selecta.” It will be shown that, assuming arguendo, the
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`alleged prior use is established, it is nevertheless of no consequence. There are no genuine issues
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`of material facts, as it will be shown in the following paragraphs, and Applicant is entitled to
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`judgment as a matter of law. Opposer’s designation consists of two elements (“reserva” and
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`“selecta”) that do not in fact serve as a trademark, but instead serves as a descriptive or laudatory
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`indicator of quality or class of the goods. Specifically, “reserva selecta” categorizes a particular
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`cigar product as having qualities superior to other cigars sold by Opposer. To be. clear, “reserva
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`selecta” translates into English as “select reserve”. The dictionary definition of these terms
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`clearly indicates their descriptive natures. The term select means chosen in preference to another
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`for excellence, and the term reserve means to store up or set apart for later use or for some
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`special purpose. Webster’s New World Dictiongy, 1141, 1216. (3d ed. 1991). See Exhibit J.
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`The specimens produced by Opposer show the use of the “reserva selecta” designation together
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`with the distinctive elements “Carlos Torafio” and design. The prominent element in Opposer’s
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`designation that does function as a trademark is CARLOS TORANO and Design.
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`Should the Board determine that the designation “reserva selecta” carries any trademark
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`weight, Opposer still needs to show there is likelihood of confusion between CARLOS
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`TORANO and Design and RESERVA SELECTA VIII. See Exhibits A and H. The weakness of
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`Opposer’s posi1.ion relating to the designation “reserva selecta,” along with a showing of
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`numerous third party uses of that designation and variations thereof, will be shown to support a
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`finding of no likelihood of confusion.
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`Lastly and in the alternative, Applicant traverses Opposer’s assertion that its use of
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`“reserva selecta” constitutes a separate trademark use. Applicant contends that the use of the
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`element “reserva selecta” is inseparable from its use with CARLOS TORANO and Design.
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`Applicant also asserts that its arguments presented against a finding of likelihood of confusion
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`lead to the same legal conclusion whether Opposer’s mark is determined to be CARLOS
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`TORANO RESERVA SELECTA and Design or RESERVA SELECTA.
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`II.
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`FACTS
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`C.A.T. Tobacco Corporation (hereinafter Opposer) filed its Notice of Opposition
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`(“Notice”) to the subject application on April 20, 2005, alleging that Applicant’s mark
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`RESERVA SELECTO VIII is confusingly similar, under Lanham Act §2(d), to Oppo‘ser’s mark
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`CARLOS TOFLANO RESERVA SELECTA and Design. See 11 9 and 1] 10 of the Notice.
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`Additionally, Opposer alleges superior prior rights in its mark. See 1] 8 of the Notice.
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`Applicant is a corporation organized under the laws of Florida, and is domiciled in Miami
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`Dade County, Florida. See 111 of The Declaration of William Bock (“Declaration”). Opposer is
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`also a Florida corporation, and is domiciled in Miami, Florida. See Notice.
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`Applicant has been in the business of developing, marketing, and selling cigars in the
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`United States since 1996. See 111 of Declaration. In January 2002, Applicant decided to create a
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`new line of cigars that could be promoted by cigar shops. See 113 of Declaration. On or about
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`January of'2003~, Applicant adopted the mark RESERVA SELECTO VIII for cigars. See 13 of
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`Dec1aratio:n.
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`The application for the mark RESERVA SELECTO VIII has been pending with the
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`United States Patent and Trademark Office (“USPTO”) since September 19, 2003. See 118 of
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`Notice. Applicant began selling cigars bearing its mark in commerce in April 2004. See 114 of
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`Declaration.
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`Opposer alleges to have used its designation CARLOS TORANO RESERVA SELECTA
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`and Design in commerce since on or about October 1999. See j[1 of the Notice. Opposer
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`submitted an application for registration of its designation on February 16, 2005. For purposes
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`of this motion for summary judgment, Applicant accepts Opposer’s alleged priority of use but
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`reserves the right to contest that allegation at a later date.
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`III. STANDARDS
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`The Supreme Court set a trend in 1986 liberalizing and encouraging the use of motions
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`for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. Matsushita
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`Electric Industrial Co. v. Zenith Radio Com, 106, S. Ct. 1348 (1986), Celotex Corp. V. Cattret,
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`54 U.S.L.W. 4775 (June 25, 1986). The Supreme Court's holdings reflect the concern of
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`meritless litigation and awareness of the potential of summary judgment to fulfill the just, speedy
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`and inexpensive determination of every action. These holdings have been extended to trademark
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`cases. L_ang v. Retirement Living Publishing C0,, 21 U.S.P.Q. 1041 (2nd Cir. 1991).
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`Where there are no genuine issues as to any material fact, applicant is entitled to a
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`judgment in his favor as a matter of law. Bongrain lntemational (American) Corporation v.
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`Moguet Ltg, 230 U.S.P.Q. 626, 627 (T.T.A.B. 1986). The purpose of summary judgment is to
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`avoid an unnecessary trial where additional evidence would not reasonably be expected to
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`change the outcome. Pure Gold, Inc. v. Syntex gU.S.A.) Inc., 730 F. 2d 624, 222 U.S.P.Q. 741
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`(Fed. Cir. 1984). See also TBMP § 528.01 and cases cited therein. Generally, summary
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`judgment is appropriate in cases where the moving party establishes that there are no genuine
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`issues of material fact which require resolution at trial and that it is entitled to judgment as a
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`matter of law. Fed. R. Civ. P. 56(c). An issue is material when its resolution would affect the
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`outcome of the proceeding under governing law. Anderson v. Libegty Lobby, Inc., 477 U.S. 242,
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`106 S. Ct. 2505 (1986); and Octocom Systems Inc. v. Houston Computers Services, Inc., 918
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`F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990). A fact is genuinely in dispute if the
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`evidence of record is such that a reasonable fact finder could return a verdict in favor of the
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`nonmoving party. Anderson, 477 U.S. at 248.
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`In deciding a motion for summary judgment, the
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`Board may not resolve an issue of fact; it may only determine whether a genuine issue of
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`material fact exists. Meyers v. Brooks Shoe Inc., 912 F. 2d 1459, 16 U.S.P.Q. 2d 1055 (Fed. Cir.
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`1990). The nonmoving party must be given the benefit of all reasonable doubt as to whether
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`genuine issues of material fact exist, and the evidentiary record on summary judgment, and all
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`inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to
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`the nonmoving party. Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847,
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`23 U.S.P.Q. 2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22
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`U.S.P.Q. 2d 1542 (Fed. Cir. 1992).
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`In certain cases, however, even though disputes remain with respect to certain facts,
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`summary judgment may be granted, so long as all factual disputes are resolved in favor of the
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`non-moving party and inferences drawn from the undisputed facts are viewed in the light most
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`favorable to the non-moving party. Anderson, 477 U.S. at 255 (1986) ("The evidence of the
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`non-movant is to be believed, and all justifiable inferences are to be drawn in his favor"); Bishop
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`v. Wood, 426 U.S. 341, (1976); and Lzgg Harmon Pictures Corp. v. The William's Restaurant
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`Corp., 929 F.2d 662, 18 USPQ2d 1292, 1293 (Fed. Cir. 1991).
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`In likelihood of confusion cases, the Board must apply established standards of law
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`regarding what constitutes trademark use and the basis for finding likelihood of confusion. For a
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`symbol or term to be considered a trademark depends on whether the public would imbue such a
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`designation with source identifying properties. Textron, Inc. v. Cardinal Engineering Corp., 164
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`U.S.P.Q. 397 (T.T.A.B. 1969). The most appropriate manner of answering that question is by
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`asking whether the designation in question creates a commercial impression distinct from all
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`other material appearing on the good.
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`In re Berg Electronics, Inc., 163 U.S.P.Q. 487 (T.T.A.B.
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`1969). When comparing two trademarks with the aim of determining if the public would likely
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`be confused by the marks, a thirteen—factor analysis is employed. In re E. I. Du Pont de Nemours
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`& Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). It is the burden of the proponent to
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`prove by preponderance of the evidence that a likelihood of confusion exists. Chase Manhattan
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`Bank N.A. v. Life Care Servs. Corp, 227 U.S.P.Q. 389, 394 (T.T.A.B. 1985).
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`IV.
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`ILEGAL ISSUE
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`A. Whether Opposer’s use of the term “Reserva Selecta” constitutes a
`trademark.
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`Trademark law requires that a proponent asserting trademark rights show that the
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`designation, in and of itself, functions as an indicator of origin. Self-Realization Fellowship
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`Church v. /ida Church of Self—Realization., 59 F.3d 902, 35 U.S.P.Q.2d 1342 (9th Cir. 1995).
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`It is well settled that “not every single word [or] phrase
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`that appears on a label or in an
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`advertisement qualifies as a protectable mark.” 1 J. Thomas McCarthy, McCarthy on
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`Trademarks and Unfair Competition, §3:3 (4th ed. 2001). If a purported mark fails to identify its
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`source, it is not protectable under trademark law.
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`I_d. The test is whether the designation creates
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`a commercial impression distinct from other material appearing on the label. Proctor & Gamble
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`Co. v. Keystone Automotive Warehouse Inc., 191 U.S.P.Q. 468, 474 (T.T.A.B. 1976).
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`The descriptive or laudatory designation “Reserva Selecta,” as used by Opposer, does not
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`create an association between the designation and the source of the goods. The term “Reserva
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`Selecta” serves; to distinguish a particular line of cigars produced by Opposer from other cigar
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`lines produced by Opposer. It is the mark CARLOS TORANO and Design, used in a similar
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`manner across Opposer’s cigar lines (Carlos Torafio Nicaragua Selection, Carlos Torafio
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`Signature Collection, Carlos Torafio Exodus 1959), that identifies the source of the goods in the
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`eye of the consumer. See Exhibit A, Bates No. TORANO 12 & Exhibit B, Bates Nos. TORANO
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`29, 65. It is this mark that Opposer sets prominently on its goods. See Exhibit A. It is this mark
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`that Opposer sets prominently in its advertisements for its goods. See Exhibit B, Bates Nos.
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`TORANO 16-17, 29, 45, 60-61, 64-65, 67. It is this mark that industry experts use to identify
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`the source of the goods. See Exhibit C, Bates Nos. TORANO 22, 31, 36, 55. It is by this mark
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`and not “Reserva Selecta” that the consuming public associates Opposer’s goods with their
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`source. The term “Reserva Selecta” acts as either a laudatory term extolling the virtues of
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`Opposer’s cigars or a descriptor of the characteristics in Opposer’s line of cigars (specifically,
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`that these cigars are produced from a select reserve of tobacco crop). Opposer’s advertisements
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`clearly show its descriptive intent by explaining the manner (“crafted
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`with the most refined
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`tobacco” and “carefully aged in reserve for three years”) of the cigar’s manufacture. See Exhibit
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`B, Bates No. TORANO 17. Opposer has not developed secondary meaning in the designation
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`“Reserva Selecta.” The consuming public does not treat the designation as a source identifier.
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`The facts of this case are analogous to those of Phillip Morris, Inc. v. R.J. Reynolds
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`Tobacco Co_., 188 U.S.P.Q. 289 (S.D.N.Y 1975). In that case, the plaintiff had brought a
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`trademark infringement claim based on likelihood of confusion of their designation ‘Lights’ for a
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`cigarette line. The court held that the defendant’s use of ‘Lights’ could not infringe plaintiff’s
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`use, as plaintiff’s use did not constitute a trademark usage. The court stated, “while Phillip
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`Morris may have intended to use ‘Lights’ as a trademark, ‘Lights’ did not ‘take on trademark
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`characteristics’ because Phillip Morris did not ‘give ‘Lights’ a conspicuous position in its
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`marketing; and display techniques, without giving prominence to the mark Marlboro.
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`Phillip
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`Morris Inc. v. R.J. Reynolds Tobacco Co., 188 U.S.P.Q. at 9. Likewise, Opposer has not given
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`“Reserva Selecta” a conspicuous position without giving prominence to the mark CARLOS
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`TORANCI and Design. Furthermore, Opposer has admitted that “to really create a brand name,
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`you have I:o have only one name and really focus on it,” and Opposer chose CARLOS
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`TORANO. See: Exhibit C, Bates No. 22. The court went on to note that “Marlboro was the
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`trademark name used to identify the product; Lights was the descriptive term which
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`distinguished the cigarette from “Menthols” or “100’s” (Plaintiff’s other cigarette products).
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`l_d.
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`Opposer’s use of the descriptive term “Reserva Selecta” accomplishes the same function
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`as “Lights.” It distinguishes between Opposer’s products without taking on the critical source
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`identification function required of trademarks.
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`In Phillip Morris, the Court noted that secondary
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`meaning had not been achieved due in part to the minimized significance of Phillip Morris’
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`advertisement expenditure. The Court reasoned that “the monies spent to promote the product,
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`which prominently displayed the famous Marlboro trademark name, cannot be considered to
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`have been used in ‘a course of steady promotion of the mark ‘Li ghts.”’ Li. The weight given to
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`Opposer’s advertising is likewise diminished when considering whether secondary meaning has
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`been established. See IV.B.ii. infra for further arguments against finding secondary meaning.
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`Opposer, therefore, has no basis for a likelihood of confusion claim against Applicant’s mark.
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`l0
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`B. Whether Applicant’s mark RESERVA SELECTO VIII is confusingly
`similar to Opposer’s mark?
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`Should the Board find for the Opposer with respect to question A., Applicant presents the
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`following alternative argument. It is Opposer’s burden to prove by a preponderance of the
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`evidence that Applicant’s mark is confusingly similar to Opposer’s mark CARLOS TORANO
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`RESERVA SELECTA and Design. Chase Manhattan Bank N.A. V. Life Care Servs. Corp, 227
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`U.S.P.Q. 389, 394 (T.T.A.B. 1985). Such a showing requires a comparative analysis of the two
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`marks employing the DuPont factors.
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`In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177
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`U.S.P.Q. 563 (C.C.P.A. 1973).
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`1.
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`Si ght/Sound/Commercial Impression
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`Analysis under the sight and sound factors must consider the marks “in their entirety as
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`assembled.” flaliday Casuals v. M. Beckerman and Sons, Inc., 108 U.S.P.Q. 140, 228 F.2d 224
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`(C.C.P.A., 1955). The marks must be considered in the whole as is “usually done in the
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`marketplace.” Sears Roebuck & Co. v. Hofman, 119 U.S.P.Q 137 (C.C.P.A.). Additionally,
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`“Even close similarity between two marks is not dispositive,” other factors must be considered
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`too. Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 257, 216 U.S.P.Q. 177,182 (2d
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`Cir. 1982).
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`a. Commercial Impression
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`The meanings of the marks are sufficiently dissimilar to preclude any likelihood of
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`confusion. “If two conflicting marks each have an aura of suggestion, but each suggests
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`something different to the buyer, this tends to indicate a lack of a likelihood of confusion,” 3 J.
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`Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:28 (4th Ed. 2001).
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`In the instant case, Applicant’s mark suggests a particular batch (number VIII) of tobacco used to
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`11
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`create the cigars sold under the mark. The consumer will likely attach this specific meaning to
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`the mark. This particular meaning created by Applicant’s mark is wholly different from the
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`meaning in Opposer’s mark. The Opposer’s mark suggests that the particular batch of tobacco
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`used to create the cigars sold under the mark was chosen or approved by “Carlos Torafio.” This
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`difference in meaning obviates any likelihood of confusion arising from the marks’ sharing two
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`words. Revlon Inc. V. Jerell Inc., 713 F.Supp. 93, 11 U.S.P.Q.2d 1612, 1616 (S.D.N.Y. 1989)
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`(“such differences of connotation and meaning are key factors in determining the likelihood of
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`confusion. Differing connotations themselves can be determinative, even where identical words
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`with identical meanings are used.”)
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`Additionally, the use by Applicant of the masculine form of the Spanish adjective
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`“select” as SELECTO creates a lasting distinction upon the consuming public. This is due to the
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`dissonance in Applicant’s mark. RESERVA SELECTO breaks fundamental rules of Spanish
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`grammar by joining two different gendered terms where correct grammar requires the noun and
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`its adjective to have the same gender. Simon & Schuster’s International Spanish Dictionary, v,
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`1471, 1493 (2d ed. 1997). See Exhibit J . Opposer’s mark uses the correct form of the Spanish
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`adjective “select,” the feminine SELECTA. Such differences create a greater impact as to
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`meaning than would the typical impact a one—letter difference would be expected make. The
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`American consuming public is composed of a significant percentage of Spanish speakers. This
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`population intuitively understands the importance of gendered terms. More specifically, the
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`target buying class of cigar consumers are well accustomed to encountering Spanish designations
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`due to the important position Latin countries and Latin companies have in the growing of
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`tobacco and production of cigars (see 117 of Declaration).
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`12
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`“The commercial impression of a composite trademark on an ordinary prospective buyer
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`is created by the mark as a whole, not by its component parts,” 3 J. Thomas McCarthy,
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`McCarthy on Trademarks and Unfair Competition, §23:41 (4th Ed. 2001). In the instant case,
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`Opposer’s composite mark creates a wholly distinct commercial impression from that of
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`Applicant’s word mark.
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`The Federal Circuit has stated that “There is no general rule as to whether letters
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`or design will dominate in composite marks,” In re Electrolyte Laboratories, Inc., 929 F.2d 645,
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`16 U.S.P.Q.2d 1239 (Fed. Cir. 1990). The Court in that case compared a stylized word mark
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`(K+) to a word mark (K+EFF) and found that the commercial impression created by the stylized
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`word mark was sufficiently distinct to preclude a likelihood of confusion between the applicant’s
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`mark (K+) and the registered mark (K+EFF). The court went on to note that “A design is
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`viewed, not spoken, and a stylized letter design cannot be treated simply as a word mark,” hi
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`Electrolyte, 913 F.2d at 647, 16 U.S.P.Q.2d at 1240.
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`b. Sight
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`The applicant respectfully argues that under Section 2(d), when the marks are considered
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`in their entireties, the sights are wholly dissimilar. “The visual impact of the marks on the minds
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`of the prospective purchasers who use them” is different. Owens—Illinois Glass Co. v. Clevite
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`@134, 139 U.S.P.Q. 505, 324 F.2d 1010 (C.C.P.A. 1963). On their face alone, it is clear that the
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`visual impact of these two marks would not confuse a prospective consumer. Opposer’s mark is
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`a composite design/word mark, whereas Applicant’s mark is a typed—drawing word mark.
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`Composite marks must be analyzed as a whole and not dissected.
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`In the instant case, the differences are even more striking. The applicant’s mark contains
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`a design with elements that include an oval with baroque designs, a shield—shaped heraldic
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`13
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`device composed of a castle keep and a boar. These visual elements provide a packet of
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`distinctive visual information that combines with the words CARLOS TORANO and the
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`descriptive terms RESERVA SELECTA to create a unique and specific impression upon
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`perspective consumers. The consumer is not likely to confuse this design mark with a mark as
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`simple in style as Applicant’s typed—drawing word mark.
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`c. Sound
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`Considering the marks in their entireties, the sounds are sufficiently dissimilar to
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`preclude any likelihood of confusion. The applicant’s mark contains different auditory elements
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`that create a distinctive sound to consumers. First and foremost, a consumer speaking
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`App1icant’s mark will hear more than just the term “reserva selecto.” A consumer will
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`separately hear the mark element VIII spoken as “eight.” A consumer will also hear the “o” in
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`the mark element SELECT0 instead of the “a” in Opposer’s mark element SELECTA. The
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`difference of one—letter changes both the sound heard and the gendered meaning of the term
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`(discussed supra). Further comparison with Opposer’s mark shows other significant auditory
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`differences. Specifically, consumers will first hear Opposer’s mark element CARLOS
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`TORANO. This mark element provides a wholly distinct set of sounds not present in
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`Applicant’s mark. Even if both marks were phonetically similar, the other elements of the
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`applicant’s: mark certainly lead to a finding of no likelihood of confusion. Standard Brands Inc.
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`v. eastern Sig Canning Co., 172 F.2d 144, 80 U.S.P.Q. 318 (4th Cir.) (V-8 and VA, for
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`vegetable and tomato juice respectively, were not likely to be confused by the public).
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`ii.
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`Strength
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`A strong mark is inherently distinctive. Opposer’s mark is a composite mark composed
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`of three elements. The first component is an oval design element. The mark also includes two
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`14
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`descriptive components. The first is the family name, CARLOS TORANO. This component is a
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`personal name that requires proof of secondary meaning to be distinctive. 815 Tonawanda Street
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`Corp. v. F_a)QDrug Co., 842 F.2d 643, 648, 6 U.S.P.Q.2d 1284 (2d Cir. 1988) (Personal names,
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`both surnames and first names, are descriptive terms requiring proof of secondary meaning by
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`the party seeking legal protection). The second component is RESERVA SELECTA, which
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`translates to “select reserve”. These terms are either descriptive as they indicate a desirable
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`characteristic of Opposer’s good, or are laudatory terms. Devcon Corp. v. Woodhill Chemical
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`Sales Corp., 455 F.2d 830, 172 U.S.P.Q. 417 (1st Circ. 1972) (5 MINUTE EPOXY descriptive
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`of the goods as the glue set in 5 minutes when in room temperature; thus the mark was
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`unregisterable); In re San Miguel Corp, 229 U.S.P.Q. 617 (T.T.A.B. 1986) (Board held
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`SELECTA was laudatory and descriptive of a quality of applicant’s product). The foreign
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`equivalent of a merely descriptive English word is considered merely descriptive also.
`
`In re
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`Oriental Daily News Inc., 230 U.S.P.Q. 637 (T.T.A.B 1986).
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`Applicant refers the Board to several prior U.S. Registrations wherein “reserve” or
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`“reserva” has been disclaimed when used in connection with cigars. See Exhibit D. The
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`Examiner :in Op-poser’s application also required a disclaimer of the term “reserva.” See exhibit
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`F. Applicant refers the Board to several prior U.S. Registrations wherein “select,” “selecta, ” or
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`“selecto” have been disclaimed when used in connection with cigars. See Exhibit E. Therefore,
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`the distinctiveness value of Opposer’s mark is quite limited, which translates to a limited scope
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`of protection, if any.
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`Opposer’s mark requires proof of secondary meaning. Self—Realization Fellowship
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`Church v. Ananda Church of Self—Realization., 59 F.3d 902, 35 U.S.P.Q.2d 1342, 1349 (9th Cir.
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`1995) (Court requires secondary meaning for the descriptive mark to be valid). Opposer cannot
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`rely upon. any presumption of distinctivity arising from length of use of the mark. See Sunbeam
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`Prods. lnciwest Bend Co., 123 F.3d 246, 255, 44 U.S.P.Q.2d 1161 (5th Cir. 1997) (Court
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`noted proof of five years of continuous and substantially exclusive use may be accepted as prima
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`facie evidence of acquired distinctiveness); 15 U.S.C. § 1052(f). The proper calculation begins
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`from the date of Opposer’s alleged use (October, 1999) and ends upon Applicant’s date of
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`constructive use (i.e. the application date, September 19, 2003). See 111 and 118 of Notice. B_l2_19k
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`& Decker§9_r_p. v. Dunsford, 944 F.Supp. 220, n.12, 42 U.S.P.Q.2d 1531 (S.D.N.Y. 1996)
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`(Court callculated the length of exclusivity of use from senior user’s use in commerce date to
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`junior user’s constructive use based on its trademark application filing date). Without the five-
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`year use to create the presumption of acquired distinctiveness, the Board must treat Opposer’s
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`mark as not inherently distinctive and deserving of narrow protection.
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`The composite nature of CARLOS TORANO RESERVA SELECTA and Design does
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`not overcome the mere descriptiveness of its non-distinctive constituent parts. General Foods
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`Corp. v. Ralin Purina Co., 220 U.S.P.Q. 990 (T.T.A.B. 1984) (ORIGINAL BLEND for cat
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`food held to be a merely descriptive composite of descriptive components). Because Opposer’s
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`mark is descriptive of the goods, CARLOS TORANO RESERVA SELECTA must be
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`categorized as a weak mark. Spraying Systems Co. v. Delavan, Inc. 975 F.2d 387, 24
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`U.S.P.Q.2d 1181 (7th Cir. 1992). Because of the narrow scope of protection due to Opposer’s
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`mark, a subsequent mark can come closer in appearance and meaning to a senior user’s mark
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`without resulting in likelihood of confusion. 2 J. Thomas McCarthy, McCarthy on Trademarks
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`and Unfair@ip§tit_io_n, §1 1 :73 (4th Ed. 2001).
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`Even if the Board were to determine that Opposer has achieved some distinctiveness due
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`to the design elements and length of use of the name CARLOS TORANO, this does not translate
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`to an exclusive right to the use of RESERVA SELECTA. It is well established that descriptive
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`elements of a composite mark are given less weight because the public will look to other portions
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`of the mark to establish source identification. 3 J. Thomas McCarthy, McCarthy on Trademarks
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`and Unfair Competition §23:48 (4th Ed. 2001). Where the common elements of two marks are
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`weak, likelihood of confusion is reduced. Nestle’s Milk Products, Inc. v. Baker Importing Co.,
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`182 F.2d 193, 86 U.S.P.Q. 80 (C.C.P.A. 1950). In the instant case, Opposer’s mark and
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`Applicant’s mark share the weak element “reserva.” However, Opposer’s mark contains the
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`additional descriptive element “selecta” and the elements of “Carlos Torafio” and a design.
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`Applicant’s mark contains the additional elements “VIII” and “selecto.” The latter is inherently
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`distinctive due to the dissonance created when conjoined with “reserva.” Applicant respectfully
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`contends that these provide sufficiently distinguishable trademark elements to negate any
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`likelihood of confusion. Duluth News—Tribune v. Mesabi Publ. Co., 84 F.3d 1093, 38
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`U.S.P.Q.2d 1937 (8th Cir. 1996) (no likelihood of confusion arising from the use by both parties
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`of the relatively weak common terms “news” and “tribune” in their trademarks for DULUTH
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`NEWS—TRIBU;\IE and SATURDAY DAILY NEWS & TRIBUNE); In re Bed & Breakfast
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` , 791 F.2d 157, 229 U.S.P.Q. 818 (Fed. Cir. 1986) (no confusion likely between BED
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`AND BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL due to the
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`weakness and descriptiveness of the common elements “bed and breakfast”).
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`iii.
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`Common Usage of the Terms Reserve and Select
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`Numerous other cigar manufacturers use Opposer’s mark, at least in part. A simple
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`search within online cigar manufacturer databases (such as Cigar Weekly) shows many ci gar
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`companies whose designations includes the terms “reserve” or “reserva,” “select” or “selecta” or
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`“selecto,” or “reserva selecta” (e. g. Flor de Gonzales Reserva Selecta, Miura Reserva Selecta,
`
`17
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`

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`Gurkha Masters Select, Especiales Selectos Dominican, Cibao Selecto, La Hoja Selecta —
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`Selectos No.1, Romeo y Julieta Reserve, Onyx Reserve, Miraflor Limited Reserve, etc.) See 116
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`of Declaration. This widespread use of the terms “reserve” and “select,” and variations thereof,
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`as designations by others in the cigar industry weakens Opposer’s mark. Freedom Sav. & Loan
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`Ass‘n v. W_ay, 757 F.2d 1176, 226 U.S.P.Q. 123, 127 (11"‘ Cir. 1985). “Determining that a mark
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`is weak means that consumer confusion has been found unlikely because the mark’s components
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`are so widely used that the public can easily distinguish slight differences in the marks, even if
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`the goods are related.” General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626, 3 U.S.P.Q.2d
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`1442, 1445 (8"‘ Cir. 1987).
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`The T.T.A.B. applied this principle in finding that the widespread use of the term
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`“FIBER” in various word marks for cereals high in fiber meant that there was no likelihood of
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`confusion between FIBER _ONE and FIBER 7 FLAKES. General "Mills, Inc. v. Health Valley
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`Foods, 24 U.S.P.Q.2d 1270, 1277 (T.T.A.B. 1992). See Smithkline Beckman Corp. v. Proctor &
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`Gamble Cg, 591 F.Supp. 1229, 223 U.S.P.Q. 1230 (N.D.N.Y. 1984), aff’d without op., 755 F.2d
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`914 (2d Cir. 1985) (no likelihood of confusion where consumers encounter other similar marks
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`[ECOTRIN, EXCEDRIN, and EMPIRIN] in commerce and defendant’s mark [ENAPRIN] was
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`no more confusing than existing marks). Additionally, these third party uses demonstrate
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`Opposer has not used the designation “reserva selecta” substantially exclusively and that
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`Opposer’s mark. has not obtained secondary meaning.
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`iv.
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`Class of Purchaser
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`The degree of consumer care used in the purchase of cigars also militates against
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`likelihood of confusion. The goods covered by Opposer’s mark are high—end cigars. They are
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`not low—cost items when analyzed comparatively within the cigar industry. See 518 of
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`18
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`Declaration. The evidence shows that the cigars sold under the mark CARLOS TORANO
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`RESERVA SELECTA have received critical reviews in high-end publications within the
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`industry. See Exhibit C, Bates Nos. TORANO 21-24, 31, 36. The act of searching and
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`obtaining a high-quality cigar, oftentimes with particular characteristics, requires great consumer
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`care during the purchasing process. Empresa Cubana Del Tabaco v. Culbro Corp., 2004 U.S.
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`Dist. LEXIS 4935, 70 U.S.P.Q.2d (BNA) 1650 (S.D.N.Y. Mar. 26, 2004); Camacho Cigars, Inc.
`
`
`v. Compania Insular Tabacalera S.A., 1971 U.S. Dist. LEXIS 11123, 171 U.S.P.Q. 673, 674
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`(D.D.C. 1971). In cases involving such high-end products, the consumer is deemed to be a
`
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`discriminating purchaser. Weiss Assoc. Inc. v. HRL Assoc. Inc., 902 F.2d 1546, 14 U.S.P.Q.2d
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`1840 (Fed Cir. 1990). Thus, the careful consideration necessary in purchasing the product in
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`question greatly reduces the likelihood of confusion even if the marks were deemed very similar.
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`Kiekhaefer Corp. v. Willys—Overland Motors, Inc., 236 F.2d 423, 111 U.S.P.Q. 105 (C.C.P.A.
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`1956);