BULKY DOCUMENTS
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`(Exceeds 300 pages)
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`Proceeding/Serial No:
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`gZ//é55'/ 97
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`Filed:
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`7&2
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`Title:
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`flgQ/JCM/
`x/umma/Ltifig
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`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. 91165519
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`______________________________________________________)
`CORPORACION HABANOS, S.A.,
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`Opposer,
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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.., (hereafter "Applicant"), 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 for Summary Judgment.
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`Respectfully submitted,
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`SANCHELIMA & ASSOCIATES, P.A.
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`Attorneys for Applicant
`235 SW. Le Jeune Road
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`Miami, FL 33134-1762
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`Telephone: (305) 447-1617
`Telecopier: (305) 445-8484
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`By:
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`(J
`Rodr'
`,__._
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`He
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`ez, Esq.
`7,7,
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`_____
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`\
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` cam-20!
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`1
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`US. Patent 8. TMOfchM Matt cht Dt. #22
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`i\
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`CERTIFICATE F ERVICE
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`I HEREBY CERTIFY that a true correct copy of the foregoing, Applicant’s Motion for
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`Summary Judgment, was sewed via US. First Class Mail pursuant to 37 CPR. § 1.10, this _'{_
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`of August, 2006, to David B. Goldstein and Michael Krinsky, Rabinowitz, Boudin, Standard,
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`Krinsky & Lieberman, P.C., Attorney for Opposer, 11 1 Broadway, Eleventh Floor, New York,
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`New York 10006—1901.
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`Date of Deposit: 31 W ‘96
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`CERTIFICATE QF EXPRESS MAIL
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`I hereby certify that this correspondence is being deposited with the United States Postal
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`Service's "First Class Mail” “0 Addressee" service pursuant to 37 CPR. § 1.10, VIA Express
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`Mail, in an envelope addressed to the United States Patent and Trademark Office, Trademark
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`Trial and Appeal Board, P.O. Box 1451, Alexandria, VA 22313-1451 on the above referenced
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`date.
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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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`Opposition No. 91165519
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`____________________________________________________--)
`CORPORACION HABANOS, S.A.,
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`Opposer,
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`v.
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`ANNCAS, INC.,
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`Applicant.
`------_--------_-_---_-_------_-_---_---_-------------)
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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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`I.
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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 Applicant’s use of the mark HAVANA CLUB for cigars made from Cuban-seed
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`tobacco is deceptive, deceptively misdeSCnptive, or primarily geographically deceptively
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`misdescriptive, if Applicant committed fraud upon the United States Patent and Trademark
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`Office (hereinafter PTO), and whether Corporacion Habanos, S.A. (hereinafter Opposer) has
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`abandoned its mark HABANOS UNICOS DESDE 1492 and Design. Opposer claims that the
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`U.S. cigar consuming public would be deceived into believing that Applicant’s goods bearing its
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`mark come from Cuba. There are no genuine issues of material facts, as it will be shown in the
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`following paragraphs, and Applicant is entitled to judgment as a matter of law. Applicant will
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`Show that the primary meaning of its inherently distinctive composite mark is not geographic.
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`HAVANA CLUB conjures in the public’s mind images of Caribbean nightlife and the fame
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`surrounding that designation with regards to rum. Applicant will show that the public would not
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`be deceived by its mark as they would not reasonably believe its goods originate in Cuba due to
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`such market place realities as over forty years of the Cuban Asset Control Regulations
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`(hereinafter “Cuban embargo”) preventing the importation and sale of goods of Cuban origin and
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`the presence of numerous cigar brands bearing trademarks that incorporate geographic terms like
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`“Havana” and “Cuba.”
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`Should the Board determine Applicant’s mark’s meaning is primarily geographic and it is
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`deceptive, Applicant will alternatively show that, through its use of Cuban-seed tobacco, its
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`goods have a legitimate and material connection with Cuba and thus, neither misdescribes the
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`goods nor would deceive consumers who make a goods/place association. Due to the non-
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`geographic meaning of its mark, the marketplace realities that inform the public, andlor its use of
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`Cuban-seed tobacco, Applicant’s mark would not materially affect consumer decision to
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`purchase its goods.
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`Regarding Opposer’s allegation of fraud, Applicant denies any misrepresentation to the
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`PTO examiner during the application process. Applicant supports this position with a
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`declaration statement contained herein.
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`Lastly, Applicant will show that Opposer has abandoned its mark HABANOS UNICOS
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`DESDE 1492 and Design. Opposer’s lack of use in commerce over the eight years since it
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`received its registration for its mark, conjoined with its lack of a bona fide intent to use the mark
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`in US. commerce require that its Registration No. 2,177,837 be cancelled.
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`11.
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`FACTS
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`Opposer filed its Notice of Opposition (“Notice”) to the subject application on April 20,
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`2005, alleging that Applicant’s mark HAVANA CLUB is primarily geographically deceptively
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`misdescriptive under Lanham Act §2(e)(3), deceptively misdescriptive under Lanham Act
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`§2(e)(1), and deceptive under Lanham Act §2(a). See 1151 through 1154 of the Notice.
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`Additionally, Opposer alleges that Applicant committed fraud upon the PTO. See 1l55 through
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`57 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 1]] of The Declaration of William Bock (“Declaration”). Opposer is
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`a Cuban corporation, and is domiciled in Havana, Cuba. See 32 of 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 ill of Declaration. Toward the end of 2003, Applicant decided to
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`create a new line of high-end cigars that could be promoted by cigar shops. See $3 of
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`Declaration. On or about January of 2004, Applicant adopted the mark HAVANA CLUB for
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`cigars to be made from Cuban-seed tobacco. See 113 of Declaration.
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`The application for the mark HAVANA CLUB has been pending with the United States
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`Patent and Trademark Office (“USPTO”) since February 5, 2004. See 111 of Notice.
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`In its
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`Answer to Opposer’s Notice, Applicant counterclaimed for cancellation of Opposer’s
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`Registration No. 2,177,837, plead in 113 of Notice, based upon abandonment. Opposer has not
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`made use of its mark in US. commerce. See Exhibit G (Requests for Admissions Nos.
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`1 through
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`6).
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`III.
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`STANDARD
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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 C011, 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. Lang v. Retirement Living Publishing Co., 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 International (American) Corporation v.
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`Moguet Ltd., 230 U.S.P.Q. 626, 627 (T.T.A.B. 1986). The purpose of summaryjudgment 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 (U.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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`I outcome of the proceeding under governing law. Anderson v. Libem Lobby, Inc., 477 US. 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 US. 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 US. 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 US. 341, (1976); and Lfly Harmon Pictures Corp. v. The William's Restaurant
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`Com” 929 F.2d 662, 18 USPQ2d 1292, 1293 (Fed. Cir. 1991).
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`In cases involving marks incorporating geographic terms, the Board must apply
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`established standards of law regarding whether the mark constitutes a deceptive, deceptively
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`misdescriptive, and/or primarily geographically deceptively misdescriptive mark. For a mark to
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`be considered primarily geographically deceptively misdescriptive the mark, when used in
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`connection with Applicant’s goods, misdescribe the goods, its meaning must be primarily
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`geographic, and “there must be a reasonable basis for believing that purchasers are likely to be
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`deceived.” In re Nantucket Inc, 213 U.S.P.Q. 889 (C.C.P.A. 1982). For a mark to be
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`considered deceptively misdescriptive the mark, when used in connection with Applicant’s
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`goods, misdescribes the goods and cause reaSOnable consumers to believe the misdescription.
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`l_n
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`re Automatic Radio Mfg. Co., 160 U.S.P.Q. 233 (C.C.P.A. 1969). For a geographic mark to be
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`considered deceptive the mark, when used in connection with Applicant’s goods, must first be
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`found to be primarily geographigally deceptively misdescriptive and the geographic
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`misrepresentation must materially affect consumers” decision to purchase the goods. SLtch
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`Whisky Ass’n v. US. Distilled Prods. Co., 952 F.2d 1317, 21 U.S.P.Q.Zd 1145 (Fed. Cir. 1991).
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`In cases involving cancellation of a registration, the Board must apply established
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`standards of law regarding what constitutes abandonment of a mark. There is a presumption of
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`abandonment after three years of nonuse. See 15 U.S.C.A. §1 127.
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`In cases where a registration
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`is based on a foreign registration and there has been no use in the US, “cancellation is proper if
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`a lack of intent to use in the United States accompanies the nonuse.” Rivard v. Linville, 45
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`U.S.P.Q.2d 1374 (Fed. Cir. 1998).
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`IV.
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`LEGAL ISSUE
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`A.
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`Whether Applicant’s mark is Primarily Geographically Deceptiver
`Misdescriptive
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`Trademark law requires that the Opposer prove through a preponderance of the evidence
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`that Applicant’s mark is primarily geographically deceptively misdescriptive, as contemplated by
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`15 U.S.C. §1052(e)(3). To determine if a mark should be refused registration based 2(e)(3), a
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`four-pronged test is used: 1. the mark must incorporate a term that denotes a geographic location
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`generally known to the public, 2. the primary significance of the mark is geographic, 3. the
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`public must reasonably believe that the goods covered by the application originate in that
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`geographic location (i.e. that there is a goods/place association), and 4. the goods do not
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`originate in that geographic location. James E. Hawes, Trademark Registration Practice, §7z7
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`(2nd ed. 2003). Applicant will show that Opposer cannot satisfy this test for the primary
`significance of the mark is not geographic, the reasonably prudent consumer would not believe
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`that Applicant’s goods originate in Cuba, and alternatively, that the goods do have a direct link to
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`Cuba.
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`Applicant’s mark HAVANA CLUB incorporates the geographic term “Havana.” For
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`purposes of this motion, Applicant will concede that the public generally knows Havana to be a
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`city in Cuba. However, the primary significance of Applicant’s mark is not geographic.
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`Foremost, Applicant’s mark is an inherently distinctive composite mark that incorporates a
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`geographic term and a distinctive term. Composite marks should not be dissected to determine
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`the geographic significance of its constituent parts. “It is the likely reaction of customers to the
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`total mark that is at issue.” 2 J. Thomas McCarthy,Wm
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`Competition, §14z 11 (4th ed. 2001). It is well settled that “[a] mark that has a popular
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`significance apart from its geographical meaning is not
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`‘primarily’ geographical.” 2 J.
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`Thomas McCarthy, McCarthy on Trademarks and Unfair Competitiou, §14z28 (4th ed. 2001); l_n
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`re InternatiOnal Taste, 53 U.S.P.Q.2d 1604 (T.T.A.B. 2000) (The Board held that the meaning of
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`HOLLYWOOD FRIES and Design [a star element] was not primarily geographic as the term
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`also referred to the entertainment industry, a connotation strengthened by the design element).
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`Taking the mark as a whole, HAVANA CLUB conveys a distinctive image of the vibrancy of
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`Caribbean nightlife. See $3 of Declaration.
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`It is that imagery combined with the fame associated
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`with the mark “Havana Club” for rum, owned by a third party, that forms the primary
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`significance to the public of Applicant’s mark. Applicant entered into a consent agreement with
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`said party permitting Applicant’s use of the mark HAVANA CLUB for the goods listed in its
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`application. See Exhibit D. This fame and style encompassed by Applicant’s mark creates a
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`powerful non—geographic meaning akin to the meaning tapped by the owner of HOLLYWOOD
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`FRIES and Design.
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`In addition, the term “Havana” has additional non-geographic meanings that
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`preclude the mark from being viewed as primarily geographic in nature in relation to the goods.
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`As Opposer noted in 118 of its Notice, the term “Havana” is noted in several American
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`dictionaries to refer to “a cigar made from Cuban tobacco.” Merriam-Webster Online
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`Dictionary. Applicant’s goods will satisfy this definition as the goods that will bear its mark
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`HAVANA CLUB will be made from Cuban—seed tobacco. See 513 of Declaration and
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`Applicant’s Cuban—seed discussion infra.
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`The relevant U.S. consuming public, upon encountering Applicant’s mark in the US.
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`marketplace, would not reasonably believe that the goods originate in Havana, Cuba. The public
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`would not be so deceived. Opposer itself has noted that U.S. consumers cannot legally obtain
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`cigars manufactured in Cuba due to the Cuban embargo. See 5} 19 of Notice. Opposer has noted
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`that it has not sold its Cuban cigars in U.S. commerce due to the Cuban embargo. See Exhibit G
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`(Requests for Admission Nos.
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`1 through 6). The U.S. public, for over forty years, has not
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`encountered cigars of Cuban origin through any legal stream of commerce within the U.S. The
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`relevant consumers know full well of the existence of and the effects of the Cuban embargo upon
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`the U.S. cigar market. See 117 of Declaration. Upon encountering Applicant’s cigars bearing the
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`term “Havana,” the reasonable U.S. consumer is not likely to think the product was
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`manufactured in Havana or any other place in Cuba.
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`In fact, the U.S consumer has been exposed
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`to numerous cigars bearing marks that incorporate the geographic terms “Havana” or “Cuba,” or
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`similar variations thereof (e.g. Havana Blend, La Vieja Havana, Havana Sun Grown, Havana
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`Honeys, Joya de Havana, Havana Cuba Premier Selection, Gran Habano, etc...), which do not
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`and cannot originate in Havana or Cuba. See 115 of Declaration and Exhibits B, Bates Nos. 104,
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`116, 117, 165, 176, 178, and 192. Several of these marks have been registered with PTO. See
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`116 of Declaration and Exhibit C. For example, a cursory review of just one U.S. distributor’s
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`cigar catalog (Phillips & King International’s Cigar Kutter) shows many companies advertising
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`cigars with marks that include the term Havana, Cuba, or similar variations thereof (e.g. Havana
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`Sweets, La Vieja Habana, El Rico Habano, Camacho Havana, Cuban Rejects, La Gloria Cubana,
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`etc. . .). See Exhibit B, Bates Nos. 83 through 90.
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`In the event the Board finds that there is a
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`goods/place association between the geographic term in the mark and the goods, such a finding is
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`“negated by showing that the goods/place association is not the primary meaning a geographic
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`mark connotes, but instead suggests that the product is stylish or of high quality.” James E.
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`Hawes, Trademark Registration Practice, §7:7 (2nd ed. 2003); In re Jacques Bemier Inc., 13
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`ll
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`U.S.P.Q.2d 1725 (Fed. Cir. 1990) (“a geographic mark may indicate that a product is stylish or
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`of high quality, i.e. HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a
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`car”). Applicant’s mark similarly suggests a certain style and aura of high quality that forms the
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`primary significance of the mark, beyond any geographic meaning (as discussed supra).
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`Should the reasonable consumer have any lingering doubts regarding the origin of
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`Applicant’s goods, US. Customs regulations will dispel any such doubts. Said regulations
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`require Applicant to state the country of origin of the goods on the containers for said goods,
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`including the retail boxes in which the goods are sold to US. consumers. See 118 of Declaration.
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`Given the preceding arguments, a finding similar to that stated by the Board in In re Venice Maid
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`M should apply to the instant case. The Board in that case found that the composite mark
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`VENICE MAID, despite a clear implication from the mark that the products originate in Italy,
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`was not primaril y geographically deceptively misdescriptive (i.e. consumers were not likely to
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`make a goods-place association) because the mark itself was “fanciful and suggestive of the
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`method of food preparation in Italy” and the judicial notice the Board took regarding “the
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`marketing of Italian—type food products under marks that include Italian names or other words
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`and phrases suggesting Italy.” In re Venice Maid Co. Inc. 222 U.S.P.Q. 618 (T.T.A.B. 1984).
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`The facts in the present case are even more favorable for Applicant. HAVANA CLUB has no
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`similarly clear implication of origin. HAVANA CLUB is an inherently distinctive combined
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`mark. Likewise, it is common in today’s market to find Cuban-style cigar products under marks
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`that include Cuban names or other words and phrases suggesting Cuba, including the term
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`“Havana.”
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`The final prong of the test touches on the misdescriptive requirement of 2(e)(3), i.e. the
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`origination of the goods covered by Applicant’s mark. Applicant’s goods will bear a direct link
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`to Cuba due to its requirement that the tobacco to be used in the manufacture of its cigars be of
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`Cuban—seed (also known as Havana—seed). See 113 of Declaration. Cuban—seed tobacco is a term
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`commonly used in the cigar industry. See 514 of Declaration and Exhibit 11A (for examples of
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`marketplace use of Cuban—seed, including industry catalogs, articles, and advertisements). The
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`term denotes tobacco grown from seeds descended from Cuban tobacco plants or seeds taken
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`from Cuba prior to the Cuban embargo. See 114 of Declaration and Exhibit 11A, Bates Nos. 131-
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`150 & 159 (for origin of Cuban-seed, see Nos. 138—140). Thus, through the use of tobacco of
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`Cuban—seed, Applicant obviates any misdescriptiveness that US. consumers might, however
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`unlikely, associate with its mark due to the term HAVANA. Additionally, it has been the policy
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`of the PTO to support this common marketplace usage by permitting the registration of
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`numerous trademarks that incorporate the geographic terms “Havana,” “Cuba,” or similar
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`variations thereof, for cigars and other tobacco products derived from Cuban-seed. See 36 of
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`Declaration. A few registrations of marks incorporating these geographic terms have been
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`permitted without reference to the type of seed. Applicant urges the Board to continue the
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`PTO’s policy by holding HAVANA CLUB to not be primarily geographically deceptively '
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`misdescriptive and permit registration of the mark on the Principal Register.
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`R.
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`Whether Applicant’s mark is Deceptiver Misdescriptive
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`Trademark law requires that the Opposer prove through a preponderance of the evidence
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`that Applicant’s mark is deceptively misdescriptive, as contemplated by 15 U.S.C. §1052(e)(1).
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`To determine if a mark should be refused registration based 2(e)(1), a two-pronged test is used:
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`1. the mark must misdescribe a characteristic or quality of the product, and 2. the reasonable
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`consumer must be likely to believe this misrepresentation. James E. Hawes, Trademark
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`13
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`Registration Practice, §7:6 (2nd ed. 2003). Applicant will show that Opposer cannot satisfy this
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`test.
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`Applicant incorporates its arguments and conclusions regarding the primarily
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`geographically deceptively misdescriptiveness of its mark in IV.A. (supra) herein. Applicant’s
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`mark HAVANA CLUB is an inherently distinctive composite mark that does not misdescribe
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`any particular quality or characteristic of the goods due to its primary meaning being non—
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`geographic, or alternatively describes the goods connection to Cuba via the use of Cuban-seed
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`tobacco. Even given the geographic nature of an element of Applicant’s mark, the reasonably
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`prudent US. consumer will not believe that the mark implies that Applicant’s goods originate in
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`Havana or any other place in Cuba. The long—standing Cuban embargo laws, US. Customs’
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`regulations, and the realities of the
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`cigar industry have informed consumers that cigar
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`products sold in the US. cannot originate in Cuba and that such goods bearing marks containing
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`geographic terms do not suggest any such origination. There would not be any deception. The
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`present circumstances are akin to the holding in In re George Washington Ate Here, Inc. In that
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`case, the Board held that the reasonably informed consumer would not believe the statement
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`made by the mark GEORGE WASHINGTON ATE HERE, as the statement was historically
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`impOSsible. In re George Washington Ate Here, Inc, 167 U.S.P.Q. 702 (T.T.A.B. 1970).
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`Likewise, a reasonably informed consumer would not think HAVANA CLUB cigars originate in
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`Cuba as it is historically and legally impossible. The Board held GEORGE WASHINTON ATE
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`HERE to be a fanciful mark. In re George Washington Ate Here, Inc., 167 U.S.P.Q. at 70_
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`(1970). Applicant urges the Board to hold likewise in the instant case.
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`C.
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`Whether Applicant’s mark is Deceptive
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`Trademark law requires that the Opposer prove through a preponderance of the evidence
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`14
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`that Applicant’s mark is deceptive as contemplated by 15 U.S.C. §1052(a). To determine if a
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`mark consisting of a geographic term should be refused registration based 2(a), the “materiality”
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`test is used. A geographic mark is deceptive if it is first found to be primarily geographically
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`deceptively misdescriptive and then it is determined that the geographic misrepresentation
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`materially affects the consumer’s decision to purchase the good. Scotch Whisky Ass’n v. US.
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`Distilled Prods. Co., 952 F.2d 1317, 21 U.S.P.Q.2d 1145 (Fed. Cir. 1991). This test is employed
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`to distinguish between marks that are primarily geographically deceptively misdescriptive and
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`those that are deceptive.
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`Applicant incorporates its arguments and conclusions regarding the primarily
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`geographically deceptively misdescriptiveness of its mark in IV.A. (supra) herein. Should the
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`Board determine that HAVANA CLUB is not primarily geographically deceptively
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`misdescriptive, the mark cannot be held to be deceptive either. Even if HAVANA CLUB were
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`found to satisfy 2(e)(3), Applicant’s use of the geographic term “Havana” in its mark would not
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`be the causes of any motivation consumers derive from the mark to purchase its goods. Given
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`the primary significance of the term HAVANA CLUB, the Cuban embargo, and the prevalence
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`in the marketplace of cigars bearing the term “Havana,” the reasonable consumer would not
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`believe the goods to come from Havana. The reasonable consumer, having no such belief, would
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`not be motivated to purchase based on the presence of HAVANA in the mark. Given the
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`preceding arguments, Applicant argues a finding similar to that stated by the Board in M
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`ALrise should apply to the instant case. The Board in that case found that the composite mark
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`ITALIAN MAIDE, despite a clear implication frOm the mark that the products originate in Italy,
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`was not deceptive (i.e. consumers were not likely to immediately assume the goods came from
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`Italy) because the mark itself had a double meaning and the fact that “it is not unusual in today’s
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`15
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`market to find tomato paste, spaghetti sauce, and like products of American manufacture sold
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`under Italian names and marks.” In re Amerise, 160 U.S.P.Q. 687 (T.T.A.B. 1969). The facts in
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`the present case are even more favorable for Applicant. HAVANA CLUB has no similarly clear
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`implication of origin. HAVANA CLUB is an inherently distinctive combined mark. Likewise,
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`it is not unusual in today’s market to find cigar products of non—Cuban manufacture sold under
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`Cuban names and marks, including the term “Havana.”
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`D.
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`Whether Applicant committed fraud upon the PTO in the application
`process
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`A motion for summary judgment is an improper tool for addressing such issues as fraud
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`upon the PTO. Copelands’ Enterprise Inc. v. CNV Inc., 20 U.S.P.Q.2d 1295 (Fed. Cir. 1991).
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`However, Applicant denies Opposer’s allegation that Applicant misrepresented to the PTO
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`Examiner that the cigars to be covered by its mark were to be of Cuban-seed. See 1156 & 57 of
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`Notice. Applicant has had the intention, since the inception of its mark, that its cigar bearing the
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`mark HAVANA CLUB would be of Cuban—seed. See 113 of Declaration.
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`E.
`Whether Opposer abandoned its mark upon which it claims Standing
`Trademark law requires that the cancellation petitioner bear the burden of proof that
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`Registrant has abandoned its mark through a preponderance of the evidence. Beech Aircraft
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`Corp. v. Lightning Aircraft Co., 1 U.S.P.Q.ld 1290 (T'I‘AB 1986). Opposer has noted that it has
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`never had use of its mark, i.e. sale or transportation of its goods, in US. commerce. See Exhibit
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`G (Requests for Admissions Nos. 1 through 6). Given that its registration was issued on August
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`4, 1998, the ensuing eight-year period of nonuse is prima facie evidence of abandonment. See
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`15 U.S.C.A. §1127. Those whose trademark application rely on §44, like Opposer, are not
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`required to demonstrate use in order to obtain registration but such evidence is usually required
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`upon the filing of an Affidavit of Continued Use under §8.
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`In re Cyber—Blitz Trading Servs. 47
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`16
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`
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`U.S.P.Q.2d 1638 (Comr. 1998). However, “Where a registrant has never used the mark in the
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`United States because the registration issued 01] the basis of a foreign counterpart registration,
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`cancellation is proper if a lack of intent to use in the United States aCCOmpanies the nonuse.”
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`Rivard v. Linville, 45 U.S.P.Q.2d 1374 (Fed. Cir. 1998). Opposer has not put forth any evidence
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`of use of its mark for the listed goods in US. commerce and its claim of excusable nonuse in its
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`§8 Affidavit does not suffice to satisfy its legal requirement to have an objective bona fide intent
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`to use the mark in US. commerce.
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`A bona fide intent to use has a specific meaning provided by legislative history. The
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`Trademark Review Commission stated that “By ‘bona fide,’ we mean no mere hope, but an
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`intention that is firm though it may be contingent on the outcome of an event — e.g. product
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`testing or market research.” Report of the Trademark Review Commission, 77 Trademark Rep.
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`375, 397 (1987), USTA, “The Trademark Law Rev. Act of 1988,” p.37 (1989). The Senate
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`Report noted, “This bona fide requirement focuses on an objective good—faith test to establish
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`that the intent is genuine.” Senate Judiciary Committee Report on S. 1883, S. Rep. No. 100-515,
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`p.6 (Sept. 15 1988). The House Report provides us with similar language, “The use of the term
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`‘bona fide’ is meant to
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`require, based on an objective view of the circumstances, a good faith
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`intention to eventually use the mark in a real and legitimate commercial sense.” House Judiciary
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`Committee Report on HR. 5372, HR. Rep. No. 100—1028, pp. 8—9 (Oct. 3, 1988). This objective
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`test requires Opposer to provide evidence of its intent such as, “in the form of a written plan of
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`action for a new product or service, a new line of goods, or for the re—branding of an existing line
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`of goods.” 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19: 14
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`(4th ed. 2001). The Board has supported this view of an objective test for bona fide intent “when
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`it held that if an ITU applicant, when challenged in an opposition, has no documents supportive
`
`17
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`of or bearing on its claimed intent to use, then this absence of evidence is alone sufficient to
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`prove that applicant lacked a bon fide intention to use.” E at §19: l4, referencing Commodore
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`Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503 (T.T.A.B. 1993); Lane Ltd. v.
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`Jackson lnt’l Trading Co., 33 U.S.P.Q.2d 1351 (T.T.A.B. 1994) (Board noted that “Applicant’s
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`evidence of its implementation and formulation of its business plan
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`constitutes credible,
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`objective corroboration of its
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`bona fide intention to use the mark in commerce on tobacco.’).
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`Opposer stated in its §8 Affidavit that it “intends to sell and tranSport goods using this
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`mark in the United States as soon as the above—cited [the Cuban embargo] prohibition is lifted.”
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`See Exhibit E, Bates Nos. HABOOO62 through HAB00069. This mere hope of the lifting of the
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`Cuban embargo at some unknown future date does not satisfy the objective good—faith test
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`required by the Lanham Act.
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`In response to Applicant’s request for documentation supporting
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`its claim of a bona fide intent to use its mark in U.S. commerce, Opposer has produced no
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`written business plan in support of its claim. See Exhibit G (lnterrogatory No. 8 & Request for
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`Production No. 8). Instead, Opposer has produced images of its foreign use of its mark (and
`other designations) and images ofits advertisement bearing its mark (and other designations that
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`falls outside the scope of its registration). See Exhibit E, Bates Nos. HABOOOOI—HABOOOSS and
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`HABOOZ42—HABOO472 & HABOOSSZ, respectively). For purposes of this motion, Applicant
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`will concede that the advertisements are generally circulated in the US. Yet, 99 of 1 10
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`advertisements bear a designation different from the mark appearing on the registration. They
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`show either “Habanos” (with and without the design element) or “Habanos Unique Since 1492”
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`(with design). Only 10% of these advertisements produced bear the registered mark l-IA BANOS
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`UNICOS DESDE 1492 and Design. Additionally, the reasonable consumer would not gather
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`that the designations used by Opposer were in connection with the goods listed in its registration
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`18
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`(i.e. raw tobacco, cigars, cigarettes, cut tobacco rappee, matches, tobacco, tobacco pipes, pipe—
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`holders, ashtrays, match boxes, cigar cases, and humidors). Many of the advertisements give the
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`impression that Opposer’s designations are connected with the service of distribution of or the
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`retail sale of tobacco products. See Exhibit E, Bates Nos. HABOO309, HAB00310, HAB00318,
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`HAB00319,