Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA204549
`ESTTA Tracking number:
`04/14/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91165519
`Defendant
`Anncas, Inc.
`JESUS SANCHELIMA, ESQ.
`SANCHELIMA & ASSOCIATES, P.A.
`235 S.W. LE JEUNE ROAD
`MIAMI, FL 33134-1762
`UNITED STATES
`Brief on Merits for Defendant
`Jesus Sanchelima
`legalassist@sanchelima.com
`/js/
`04/14/2008
`Anncas Brief.pdf ( 36 pages )(2231215 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA204549
`ESTTA Tracking number:
`04/14/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91165519
`Defendant
`Anncas, Inc.
`JESUS SANCHELIMA, ESQ.
`SANCHELIMA & ASSOCIATES, P.A.
`235 S.W. LE JEUNE ROAD
`MIAMI, FL 33134-1762
`UNITED STATES
`Brief on Merits for Defendant
`Jesus Sanchelima
`legalassist@sanchelima.com
`/js/
`04/14/2008
`Anncas Brief.pdf ( 36 pages )(2231215 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opp. No. 91165519
`
`)
`
`) )
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`) )
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`) )
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`) )
`
`CORPORACION HABANOS, S.A.,
`
`Opposer,
`
`»v.
`
`_
`
`ANNCAS, INC.,
`
`Applicant.
`
`
`
`ANSWER BRIEF OF APPLICANTANNCAS, INC.
`
`' ]esus'Sanche1ima
`SANCHELIMA & ASSOCIATES, P.A.
`Attorneys for Applicant
`235 S.W. Le Jeune Road
`Miami, FL 33134-1762
`Telephone: (305) 447-1617
`Telecopierr (305) 445-8484
`1' esu_s@sanchel:i.ma. com
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS .............................................. ..ii
`
`TABLE OF AUTHORITIES ....................................... ..iii, iv
`
`PRELIMINARY STATEMENT ................................... ..1—3
`
`STATEMENT OE FACTS. .
`
`. . .%.....................
`
`.............4~10
`
`ISSUES..........
`
`................................
`
`................%....11
`
`LEGAL ARGUMENTS .....
`
`...................................... ..11~30
`
`CONCLUSION ............................
`
`......................... ..30—31
`
`CERTIFICATE OF SERVICE................
`
`I..
`
`.T..................32
`
`
`
`TABLE OF AUTHORITIES
`
`In re Corporacion I-Iabanos S./1.‘ v. Gnantanarnera Cigars,
`Opp. No. 91152248 (Feb. 29, 2008 TTAB) ......................... ..13
`
`_
`In re California Innovations, Inc.,
`329 F2d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003) ................. ..23
`
`In re First Drarft, Inc.,
`76 U.S.P.Q. 1183 (TTAB 2005) ....................................... ..19
`
`Havana Club Holdings, 5.71. '0. Galleon, 5.21.,
`203 F.3d 116, 53 -U.S.P.Q 21) 1609, (2nd Cir. 2000) .... ..19, 20, 21
`
`_
`Havana Club Holdings, SA. '0. Bnflet,
`2003 TTAB Lexis 129 2003) ........................................... ..19
`
`Lipton Incl-as., Inc. '0. Ralston Purina Co.
`670 F.2d 1024, 213 USPQ 185 (CCPA 1982) ...................... ..19
`
`.
`_
`joint Stock Society 22. VDV Noth America,
`266 F. 3d 164,60 USPQ 2d 1258 (3d Cir. 2001) ................... ..20
`
`Lajan v. Defenders of Wilcllzfe,
`_
`5_04 U.S. 555, 119 L. Ed. 2d 351,
`112 S. Ct. 2130 (1992) ........................ .. ......................... ..12
`
`l\/IcDerrnott Z7. San Francisco Women ’s Motorcycle Contingent,
`240 Fed. Appx. 865, (Fed. Cir. 2007) ........................... ..18 19I
`
`(Ritchie 7). Simpson,
`170 F. 3d 1092, 1095, 50 USPQ2d 1023, (Fed. Cir. 1999) ........ ..16
`
`Singer Mfg. Co. E}. Birginal-Bisby Corp.
`319 F. 2d 273, 138 USPQ 63 (CCPA 1963) the Court.................18
`
`Torres :2. Cantine Torresella S.r.l,
`808 F. 2d 46 (Fed. Cir. 1986) ........................................... ..29
`
`'
`Universal Oil Prod. Co. Z). Reirall Drag 5’ Cliern. Co.
`463 F.2d 1122, 174 USPQ 458, (CCPA 1972) ................... ..'...17
`
`iii
`
`
`
`STATUTORY AUTHORITIES
`
`Section 13 of the Lanhnrn Act." ............................................... ..1, 17
`
`Section 211 (a)(2) of the Omnibus Consolitlritecl
`and Emergency Supplement Appropriations Act of 1999 .................. ..22
`
`Section 211(b) of the Omnibus Consolidated and
`Emergency Supplement Appropriations Act of 1999 ................ ..21, 22
`
`Section 2(a) ofthe LnnhmnAct 23
`
`"Section 2(e)(2) ofthe Lanhnm Act ......
`
`.
`
`.
`
`................................i18
`
`Section 2(e) (3) of the Lrinhiim Act ........................
`
`................ ..3, 23
`
`Art. 14 of the Cuban Constitution (Amnd. 1992.) .........
`
`.............. ..15
`
`OTHER AUTHORITIES
`
`Section 205 of the Helrns—Bnrton Act, 22 USC 6065(b)(2)(c)........'.15~16
`
`iv
`
`
`
`APPLICANTS BRIEF
`
`I.
`
`PRELIMINARY STATEMENT
`
`Opposer has filed this opposition under Section 13 of the
`
`Lanham Act, 15 USC 1063. The statute requires from Opposer a
`reasonable belief that it will be damaged by App1icant’s registration of
`
`its mark. However, Opposer has not, and does not, use arg marks in
`
`commerce
`
`and has not used any marks
`
`in commerce,
`
`or
`
`commercialized any tobacco products ‘for that matter. Thus, Opposer
`does not compete with Applicant in the U8. market so it cannot be
`damaged by the registration of Applicant’s mark. Additionally,
`
`Opposer does not have standing to bring this action on behalf of the
`American consumer since its interest is remote, if any. Lastly, Section
`211(b)- of the Omnibus Consolidated and Emergency Supplement
`
`Appropriations Act of 1999 prevents a Cuban national from bringing
`
`any action in U.S. courts for marks that were confiscated by the Cuban
`
`Government.
`
`
`
`Notwithstanding the foregoing impediments, Opposer is not the
`
`owner of the denomination of origin HABANA. Another entity, not a
`
`party to these proceedings, claims ownership rights through an
`
`international registration over this geographic denomination.
`
`Opposer’s convoluted and speculative arguments, as to what
`
`goods Applicant will eventually use its mark on is, at best, premature.
`
`This
`is an intent
`to use application and Opposer
`is already
`characterizing Applicant’s ‘goods that will be purchased possibly
`several years in the future.
`Conceivably, Applicant may even
`purchase Cuban goods if the Cuban embargo is lifted. Opposer has
`entered into at least one agreement where it acknowledges that it will
`
`not oppose, protest or bring legal actions if the goods actually come
`irom Cuba. Therefore,
`if by the time Applicant declares use of its
`
`mark, the U.S.- Cuba relations have improved, Applicant may use its
`
`mark with goods grown in "Cuba in addition to those that originate
`
`from Cuban seeds. Applicant has not foreclosed this possibility in its
`
`application.
`
`
`
`Assuming that
`
`the above-mentioned hurdles are somehow
`
`overcome, Applicant has diligently prosecuted its application and it is
`
`entitled to the registration of its mark. Applicant has not deceived the
`
`Office, or anyone, and the goods are not primarily deceptively
`
`geographically misdescriptive under Sections 2(a) or 2(e)(3). From at
`
`least as early as the date when the application was filed, Applicant has
`
`had a bona fide intention to use its mark on tobacco products grown
`
`from Cuban seeds. This, and other equivalent terms, are widely used
`
`in the industry. Applicant is merely using a widely accepted term to
`
`identify the goods it intends to purchase and sell with its mark. There
`
`are no other terms to describe the product in the industry. Just like
`
`Swiss cheese and French fries can be used to describe branded
`
`products without deceiving the consumer. The terms Havana or
`
`Habana or I-labanos today, and for many years, have functioned to
`
`_ denote tobacco products with certain flavor characteristics, much like
`
`Connecticut or Cameroon tobacco, which are also used in the industry.
`
`These goods do not necessarily have to come from those regions}
`
`1 Applicant withdrew its affirmative defense asserting that there were no manufacturers of
`cigars in Havana since it was a typographical error. Applicant traverses Opposer’s
`position that the affirmative defense was a frivolous undertaking. Applicant
`withdrew it because the language contained an error since it meant to use the word
`
`
`
`11.
`
`STATEMENT or FACTS
`
`Applicant, and its principal, has been in the cigar business for
`many years. See Bock Test. Depo. Tr? pp. 4-5. Atnpresent, Applicant
`
`has not sold any cigars bearing the mark HAVANA CLUB. Bock Test.
`
`Depo. Tr. p. 6. Applicant intends to use tobacco grown from Cuban
`
`seeds for its HAVANA CLUB cigars. Bock Test. Depo. Tr. p. 7.
`Several of its brands also use Cuban seed tobacco and this designation
`
`has been used for many years in the industry. Bock Test. Depo. Tr. p.
`
`8—9, Gomez Test. Depo. Tr. p. 23. Applicant has not decided-from
`
`which country it will buy the tobacco sinceit may be grown either in
`
`Nicaragua, Honduras or Dominican Republic. Bock Test. Depo. Tr. p.
`
`7. There are no restrictions to the importation of Cuban products,
`
`including tobacco seeds,
`
`in any of those countries. See Bock Test.
`
`Depo. Tr. p. 77, Gomez Test. Depo. Tr. Cross.Exam. p. 24 and
`
`Perelman Test. Depo. Cross Exam. p. 76. Other terms, such as
`
`”Connecticut” and ”Cameroon” have been used to denote specific
`
`types of tobacco products even though they are not grown only in
`
`
`“growers” and not “manufacturers” and Applicant still maintains there are no growers in
`the city of Havana. Bock Test. Depo. Tr. p. 16
`_
`2 The excerpts of Mr. William Bock’s testimonial deposition transcript will be referred to
`as “Bock Test. Depo. Tr. Cross Exam. p. XX”.
`
`
`
`thosegeographical areas. ‘See Bock Test. Depo. Tr, p. 82-83, Gomez
`
`Test. Depo. Tr. Cross Exam. p. 7 and Perelman Test. Depo. Cross
`
`Exam. Pp. 69—70.3
`
`The Office has acceptedthis identification for the goods when
`
`describing a particular type of tobacco to be used, namely Cuban seed
`
`tobacco. See Oppo_ser’s Brief pp. 3 through 6. The description of the
`
`goods-as ”tobacco from Cuban seed”, or “Havana seed”, or equivalent
`
`wording, is needed to identify a type of tobacco. Gomez Test. Depo."
`
`Tr. p. 8. There is no substitute language to describe this type of
`
`tobacco. Bock Test. Depo. Tr. p. 10; Gomez Test. Depo. Tr. pp 89. For
`
`many years the trade has used this wording to identify tobacco having
`specific characteristics. Bock Test. Depo. Tr. p. 10.
`
`There are at least sixty one (61) records in the Offices databases
`
`for applications or registrations that use the word "I-Iabana” or
`
`”I-Iavana”- Applicant's NOR Exhibits 1 — 61. Forty-nine of the 61,
`
`correspond to registrations that are either active or were active.
`
`3 Opposer’s own expert testified that the use by the industry of “Connecticut seed
`tobacco” is acceptable but that “Connecticut wrapper” may not be true since the tobacco
`was not grown in Connecticut.
`
`
`
`Applicant's NOR Exhibits 1; 2; 4; 5; 6; 8 — 19; 24 -34; 41; 42; 44 — 61.
`
`Forty-three (43) of the 61 records,
`
`include the word ”Cuban seed
`
`tobacco.” or equivalent, as part of the identification for the goods.
`
`Applicant's NOR Exhibits 1; 3-4; 8 -14; 20; 24 — 33; 35; 38 — 42; 44 53; 55
`
`-— 60. Thirty-seven (37) of the 43, correspond to registrations (active or
`
`not)
`
`that have ”Cuban seed tobacco” as part of
`
`their goods
`
`identification. Applicant's NOR Exhibits 1; 4; 8 -14; 20; 24 —- 33; 35; 41 —
`
`42,- 44- 53,- 55 ~— 60.
`
`On February_5, 2004, Applicant filed its application for the
`
`registration of the mark HAVANA CLUB, based on its bona fide intent
`
`to use the mark in commerce. Bock Test. Depo. Tr. p. 6. At the time
`
`the application was filed, Applicant did notspecify the type of tobacco
`
`that it intended to use and merely identified the goods as ”cigars”. See
`
`application filed in this case. This limitation was not required before.
`
`Bock Test. Depo. Tr. Cr. Exam. p. 85. See also Applicant's NOR
`
`Exhibits'21—23; 28; 36; 37 and 43, corresponding to records of the
`Office's databases,
`showing mark. registrations" (for non Cuban
`
`registrants) having the word HAVANA, or equivalent, with merely
`
`”cigars” for
`
`the identification of the goods. Opposer does not
`
`
`
`disagree with the fact that this is, and has been the standard Office
`
`practice for many years prior
`
`to Applicant’s application.
`
`See
`
`Opposer’s Rebuttal NOR Exhibits 1 through 3 and 5 through 25. After
`
`the Examiner
`
`issued an Office Action, Applicant narrowed the
`
`identification of its goods to ”cigars made from Cuban seed tobacco”.
`
`See Examiner's Amendment in Applicant's application, Opposer’s
`
`NOR 15. There was no intent to deceive the Examiner with the
`
`representations made regarding the goods that Applicant intended
`
`and intends to usei‘. Bock Test. Depo. Tr. p. 81. Applicant intends to
`use strong flavor tobacco products that are commonly referred to as
`
`”Cuban seed tobacco”. Id. And similarly, Connecticut wrapper can be
`
`grown in Dominican Republic, Ecuador and Honduras. Bock Test.
`
`Depo. Tr. p. 82.
`
`Opposer has reached at least one agreement where it has agreed
`
`not to pursue any legal claims if the tobacco comes from Cuba. See
`
`Settlement Agreement between Corporacion I-labanos, S.A. and
`
`4 In paragraph 32 of the notice of opposition, Opposer has used the word “or” six times
`refe1'r'111g to O_pposer’s speculation on different possibilities that Opposer has planned for
`Applicant’s future goods and its sources. None of those include the use of tobacco grown
`in Cuba. However, nothing in the application prevents Applicant from filing a declaration
`of use within the next three years subsequent to the issuance of the notice of allowance,
`using tobacco grown in Cuba, if the embargo is lifted and/or a special license to
`commercialize those goods is obtained.
`
`
`
`Superior Cigars, U.S.A.,
`
`‘ll 8, Opposer’s Rebuttal. NOR, Exhibit 26.
`
`Therefore, the possibility of Applicant using Cuban‘ grown tobacco in
`
`its products cannot be dismissed until Applicant's declaration of use is
`
`filed. If Opposer is willing to agree with at least one other party that it
`
`will not pursue any claims if the tobacco used comes from Cuba, then
`
`it is clear that under those circumstances it will not be damaged.
`
`Opposer’s purported damages are alleged in paragraphs 48'; 49
`
`and 50 of the Notice of Opposition. However, Opposer has failed to
`
`carry its burden in proving its damages allegations because:
`
`1) There is no evidence in the record to support Opposer’s
`
`allegation that it will be damaged if Applicant registers the mark
`
`HAVANA CLUB for cigars because the reputation of its cigars from
`
`Cuban grown tobacco, will be less likely to make lawful purchases (in
`
`Cuba) of Opposer’s cigars. See Notice of Opposition, ‘_[[ 48. There is no
`
`evidence in the record tending to show that those U.S. persons who
`
`lawfully reside in "Cuba will stop purchasing Opposer’ cigars in Cuba
`
`(Opposer’s cigar cannot be legally sold in the U.S.)
`
`if Applicant
`
`registers its mark.
`
`
`
`2) There is no evidence in the record to support Opposer’s
`
`allegation that its ” marketing success” will be damaged when, and if,
`
`the embargo is lifted and Applicant registers its mark HAVANA
`
`CLUB. See Notice of Opposition, ‘ll 49. -
`
`3) There is no evidence in the record to support Opposer’s
`
`allegation that its ability to use the mark HABANOS UNICOS DESDE
`
`1942 & Design will be damaged and-diminish if Applicant registers its
`
`mark HAVANA CLUB. See Notice of Opposition, ‘ll 50. There is no
`
`evidence on record that Opposer cannot sell products with tobacco
`
`grown in other parts of the world. Nor, does the registration for
`
`I-IABANOS UNICOS DESDE 1492 and Design, U.S'. Reg. No. 2,177,837,
`
`have any limitations as to the type of products the mark identifies. See
`Applicant’s NOR Exhibit 5.45, corresponding to a copy of- registration
`No. 2,177,837.
`It Opposer decides to use its mark on tobacco not
`grown in Cuba, or even from Cuban seeds,
`its registration will
`
`conceivably be still support by said use since it does not have
`
`5 The same is true for all Cuban registrations for cigars that use the word HABANA,
`namely, the ideiitifieation of the goods merely states “cigars”. Applica.nt’s NOR Exhibits
`2; 15; 16; 18; 19 and 61.
`
`
`
`Applicant's limitations. Thus, requiring this limitation in Applicant’s
`
`application will not affect Opposer’s rights in any way as the Office
`
`has not made this requirement retroactive.
`
`Opposer does not sell any goods in the U.S. market, and has
`
`never sold any goods in the U.S. market. See Opposer’s Brief, p. 6, ‘H 2.
`
`On the other hand, Applicant sells itslcigars in the U.S. market. Bock
`
`Test. Depo. Tr. p. 4. Thus, it is clear that the parties do not compete in
`
`the same market. Opposer will not suffer any damages if Applicant
`
`sells its cigars bearing the mark HAVANA CLUB in the _U.S. and
`
`avails itself of the Lanham Act benefits of the registration of its mark.
`
`Opposer cannot sell cigars legally in the United States since
`
`current embargo laws prohibit it. Opposer’s Brief, p. 6,
`‘]I 2. Opposer
`claims to control the commercialization of 100% of the Cuban cigars
`
`produced in the country.
`
`10
`
`
`
`III.
`
`ISSUES
`
`The following issues are identified in this case:
`
`1. WHETHER OPPOSER LACKS STANDING TO OPPOSE
`APPLICANT’S APPLICATION FOR REGISTRATION?
`
`2. WHETHER OPPOSER IS BARRED UNDER'SECTION-
`211(3) OF THE OMNIBUS CONSOLIDATED AND
`EMERGENCY SUPPLEMENT APPROPRIATIONS ACT OF
`. 1999 FROM BRINGING THIS OPPOSITION?
`
`3. WHETHER REGISTRATION OF THE MARK HAVANA
`"CLUB FOR CIGARS MADE FROM CUBAN SEED
`TOBACCO IS NOT BARRED BY SECTION 2(e)(3) AS
`CONSTITUTING A DECEPTIVELY GEOGRAPHICALLY
`MISDESCRIPTIVE DESIGNATION?
`
`4. WHETHER OPPOSER’ S ALLEGATION S OF
`APPLICANT’S INTENDED FUTURE USE OF PRODUCTS
`.IS PREMATURE AND/OR SPECULATIVE?
`A
`
`5. WHETHER APPLICANT COMMITTED FRAUD DURING
`' THE PROSECUTION OF THE PRESENT APPLICATION?
`
`IV.
`
`ARGUMENT
`
`1. OPPOSER LACKS STANDING TO OPPOSE APPLICANT’S
`APPLICATION.
`‘
`
`To have standing a party needs to satisfy three factors:
`
`11
`
`
`
`a) injury in fact, which requires the infringement of a legally
`
`protected interest that is ”concrete and particularized” as well as
`
`”actual or imminent, not ‘conjectural’ or ’ hypothetical”;
`
`b)
`
`a casual connection between the injury and the offending
`
`conduct; and
`
`_
`
`c)
`
`redressability. Lujqn U. Defenders of Wildlife, 504 U.S. 555,
`
`560, 119 L. Ed. 2d 351, 112 5. Ct. 2130 (1992).
`
`In this case, Opposer attempts to participate in an administrative
`
`proceeding to prevent Applicant from availing itself of the benefits of
`
`'
`
`the Lanham Act even -though it cannot ‘claim a concrete and
`
`particularized injury. Additionally,
`
`the injury Opposer complains
`
`about does not fall under the ’zone of interests’ sought to be protected
`
`by the Lanham Act,
`
`since Opposer does not. usenthe mark in
`
`CO11’11TlE‘1"CE!.
`
`Opposer’s interest
`
`is marginally related,
`
`.at best. Opposer
`
`speculates as to the success it will have with its marketing plan if and
`
`when the U.S. embargo laws are lifted. A similar factual pattern was
`
`found not to be causally connected in this Supreme court decision:
`
`12
`
`
`
`Affidavits of members claiming an intent to
`
`-revisit project sites at some indefinite future
`
`time, at which time they will presumably be
`
`denied the opportunity to observe endangered
`animals, do not
`suffice,
`for they do not
`
`demonstrate an "imminent" injury. Id at 556.
`
`While Applicant is mindful of Opposer’s preoccupation with the
`
`American consumer, it is difficult for the latter to show standing on
`
`the
`In this case,
`Id.
`behalf of the members of this third party.
`convoluted association between Opposer and the American consumer
`
`is too remote to show standing.
`
`To establish standing, Opposer must show that is has a
`
`”real
`
`interest” in the outcome of the proceeding (direct and personal).
`
`Corpomcion Habcmos 5.14.. U. Gucmtanamera Cigars, Opp. No. 91152248
`
`(Feb. 29, 2008 TTAB). _
`
`In Gurmtmiamera,
`
`the Opposer (the same
`
`opposer as in the present case) had a suspended application that had
`
`been blocked by the applicant in that case. But, that is not the case
`
`here. Other than Opposer’s speculative allegations in the notice of
`
`13
`
`
`
`opposition ‘M 48-50,
`
`there is nothing else to show a direct and
`
`personal injury.
`
`With respect to Lujan’s second factor, again, no evidence exists
`
`in the record that there will be diversion of sales connected to
`
`Applicant’s HAVANA CLUB cigars that would otherwise be enjoyed
`by Opposer. The undefined inarketing strategy that will accomplish
`
`this feat gives no credit to Applicant for its own marketing efforts,
`independently from the marklitself. There will be no ascertainable
`causal connection betweenthe registration of Applicant’s mark and
`
`Opposer’s marketing performance.
`
`As far as the redressability of Opposer’s claims, it is clear that
`
`the action of the Office (its policy of accepting the ”Cuban seed
`
`tobacco” language as the identification of the particular type of cigars)
`
`does not affect Opposer directly.
`
`Thus, when the plaintiff is not himself the
`object of the government action or inaction he
`-challenges, standing is not precluded, but it is
`ordinarily "substantially more difficult" to
`establish. Id at 562.
`
`14
`
`
`
`While Opposer appears to argue on behalf of the American
`
`consumers’ interest,
`
`this is not a legally protected interest that is
`
`”concrete and particularized” as well as ”actual” or imminent”. The
`
`injury that Opposer alleges in paragraph 49 of the notice of opposition,
`
`is not a legally protected interest in the US. For an entity to control
`
`100% of the production of a product in a country is an anomaly in our
`
`legal and economic system. This is legal in Cuba where the economy
`is centralized‘? Opposer’_s argument appears to be that it will be
`injured for each cigar bought by U.S. consumers from App1icant’s
`
`HAVANA CLUB cigar made with'Cuban seed tobacco that was not
`
`actually grown in Cuba7. Opposer would like to convince the Board
`
`that any use of the words "Cuban seed tobacco” belongs to Opposer in
`a perpetual monopoly. Assuming arguendo that this is the case and
`
`Opposer controls 100% of the business, this totalitarian practice will
`prevent the lifting of the embargo laws. And therefore, there will not
`
`be any sales in the U.S. unless these changes-come about. The US.
`
`embargo laws will not be lifted (by Congress) until the political and
`
`economic system in Cuba is changed. See Section 205 of the ‘Helms-
`
`6 Art. 14 ofthe Cuban Constitution, as amended, provides that the economic
`system in Cuba is based on the socialized property of the people over the
`fiindarnental means of production.
`7 Or conceivably comes from a closer generation, regardless of its taste.
`
`15
`
`
`
`Burton Act, 22 USC 6065(b)(2)(c). And if
`
`this takes place,
`
`the
`
`assumption of Opposer controlling 100% of the Cuban cigars. will no
`
`longer be viable.
`
`In other words, the alleged injury is beyond being
`
`conjectural or speculative, it is impossible.
`
`Further,
`
`the federal circuit has held that,
`
`in order to have
`
`standing,
`
`”...an
`
`opposer must meet
`
`two
`
`judicially—created
`
`requirements in order to have standing--the opposer must have a ‘real
`
`' interest’ in the proceedings and must have a “reasonable” basis for his
`
`belief of damage.” Ritchie '0. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d
`
`1023, 1025 (Fed. Cir. 1999).
`
`The court went on to state: ”this ‘real interest’ requirement stems
`from a policy of preventing ‘mere intermeddlers’. who do not raise a
`
`real
`controversy
`from ' bringing
`oppositions
`or
`cancellation
`proceedings in the PTO.” Ritchie, at 1025 _(citing.Lipt0n Indus., Inc.
`:0.
`
`Ralston Purimz Co., 670 F.2d 1024, 1028, 213 USPQ. The court added,
`
`"in other words, the opposer must have a direct and personal stake in
`
`the outcome of the opposition.” Id. at 1026.
`
`In the case at bar, Opposer‘ cannot make the claim that it has any
`
`stake in the outcome of this opposition. Opposer does not and cannot
`
`16
`
`
`
`engage in any business in the United States, such that the registration
`
`of Applicant's mark would affect Opposer in any way in the U.S.
`
`few
`(very
`personnel‘
`allegation that U.S.
`market. Opposer’s
`individuals) residing in Cuba would be induced not to purchase
`
`Opposer’s products is speculative and remote, at best. While no
`
`figures have been introduced to support this argument, the current
`
`political situation dictates that this US. population in the island is
`
`minimal and Opposer did not even attempt to introduce any evidence
`of any effect that App1icant’s registration would have in those few
`
`individuals.
`
`Turning now to the ”reasonableness” of Opposer’s belief that it
`
`will be damaged by the registration of Applicant's mark, the Court in
`
`Rz'tchz'e held that the "belief of damage" required by § 13 of the Lanhem
`
`Act is more than a subjective belief. The belief must have a "reasonable
`
`basis in'fact.." Id. at 1027 (citing Llmbersal Oil Prod. Co. v. Rexhll Drug 6:’
`
`Chem. .Co., 463 F.2d 1122, 1123, 174 USPQ 458, 459 (CCPA 1972). The
`
`facts in this case show that Opposer cannot and will not be damaged
`
`by the registration of Applicant's mark.
`
`In addition to failing to meet
`
`the general requirements for
`
`standing in an opposition under § 13 of the Lanham Act, Opposer also
`
`17
`
`
`
`fails with respect to standing in an Opposition involving §2(e)(2) of the I
`
`Act.
`
`In The Singer Mfg. C0. 7). Birgi1ml~BisI9y Corp, 319 F2d 273, 138
`
`USPQ 63 (CCPA 1963) the Court held that the Opposer, an American
`
`company, had standing to oppose -the registration of
`
`the mark
`
`AMERICAN BEAUTY for sewing machines that were made in Japan I
`
`because the Opposer was a direct competitor of the Applicant and it
`
`had directed its advertising towards customers who preferred their
`
`sewin machines to be ”American-made.” See Sin er at 276.
`
`8 U
`
`nlike the "opposer in Singer, Opposer in the present case, is not
`
`a competitor of App1ic'ant’s nor does Opposer target Al\lY'consumers
`
`in the US with messages that its products are better because they come
`
`from Havana or Cuba.
`
`One method of establishing the reasonableness of belief of .
`
`damage for purposes of" standing is for thenopposer to allege he
`
`possesses a trait or characteristic that is clearly and directly implicated
`in the_proposed mark.‘ McDerm0tt v. Sam Fnmcisco Womeri’s Motorcycle
`Contingent,
`240 Fed. Appx. 868, (Fed. Cir. 2007)(quoting Ritchie at
`1028).
`In McDerm0tt,
`the Opposer attempted to prevent
`the
`
`registration of the mark ”DYI<ES ON BIKES” citing the Lanham Act's
`
`prohibition against the registration of an ”immoral” or ”scanda1ous”
`
`18
`
`
`
`matter; The Court affirmed the granting of Applicant’s motion to
`
`dismiss for lack of standing, holding that ”the registration of the
`
`proposed mark would have no ‘implications’ for a man.” McDerm0tt
`
`at 867. Essentially, the court held that it was unreasonable for a man
`
`to believe he would be damaged by the registration of a mark that was
`
`derogatory to lesbians. Just as it is unreasonable for Opposer (who is
`prohibited, by law, to engage in commerce in the U.S.) to claim it
`
`would be damaged by the registration of Applicant’s mark.
`
`This is certainly not a case of first impression. See Havana Club
`Holding, S./l.
`'0. Buffet, 2003 TTAB Lexis 129 (TTAB 2003).
`In Havana
`
`Club Holdings, the Applicant (jimmy Buffet) sought to register the
`mark ”HA\/ANAS AND BANANAS” for ”menu items, namely,
`
`prepared alcoholic cocktails.” Havana Club Holdings (just as Opposer
`has here) challenged the registration on the ground that the mark was
`primarily geographically deceptively misdescriptive under section
`
`2(e)(3) of the Lanham Act. There, the Board noted, "...it is clear that
`
`opposer has no standing to pursue this claim just as it had no standing
`to pursue its false designation of origin claim under Section _43(a) in
`
`[Havana Club Holding, S.A. v. Galleon, S.A., 53 USPQ2d 1609].” Id at
`
`18.
`
`19
`
`
`
`In Galleon, the Second Circuit affirmed the lower court’s holding
`the plaintiff (also Havana Club Holdings) .had no standing
`
`that
`
`because the Cuban embargo prevented the plaintiff fromlselling its
`
`goods in the US and, as such,
`
`the plaintiff could not suffer any
`
`cognizable injury due to defendant's actions. The Second Circuit
`
`quoted the. lower court as saying: ”Any competitive injury plaintiffs
`
`will suffer based upon their intent to enter the US market once the
`
`embargo is lifted is simply too remote and imcerteiin to provide them with
`
`Si'Q?’1dtI1g." Galleon at 203 F.3d 122 (emphasis added). See also, joint
`
`Stock Society 7). LIDV North America, 266 F.3d 164, 60 US_PQ2d 1258 (3d
`
`Cir. 2001).
`
`It is clear that, Opposer, prohibited by the Cuban embargo
`
`from entering the US market,‘ has no standing in this case.
`
`Finally, Opposer is not the real party in interest to bring this
`
`action. Another entity, Empresa Cubana.del Tabaco, or
`
`CUBATABACO8, claims superior rights over the disclaimed
`
`denomination HABANA. CUBATABACO has registered the word
`
`HABANA in an international (WIPO) registration. See exhibit 69 in
`
`_Boc1<’s Test. Depo. Tr. p. 69. Therefore, it is clear that CUBATABACO,
`
`8 Opposer’s expert testified that he had. worked for CUBATABACO but not for Habanos
`S.A., Opposer, herein, establishing that these are two distinct entities. Marrero Test. Depo.
`Tr. p 8.
`
`20
`
`
`
`rather than Opposer, is the proper party tobring the damages claims
`
`in this controversy.
`
`2.
`
`OPPOSER IS BARRED UNDER SECTION 211(3)
`9 OF THE OMNIBUSCONSOLIDATED AND
`EMERGENCY SUPPLEMENT APPROPRIATIONS
`
`ACT OF 1999 FROM BRINGING THIS
`
`-
`
`OPPOSITION.
`
`Opposer is a Cuban entity and Applicant's purported trademark
`
`rights fall under and the terms of Section 211 (la) of the Omnibus
`
`Consolidated and Emergency Supplement Appropriations Act on 1999.
`
`Havana Club Holdings, S.A. v. Galleon, SA. 203 F.3d 116, 53 U.S.P.Q 2D
`
`1609, 1618 (2nd Cir. 2000). I The designation HAVANA CLUB was
`hotly ' litigated by the Republic of Cuba‘,
`through another state
`
`I
`
`instrumentality. Id. The common owner of the mark is the Republic of
`
`1 Cuba. The real motivation in opposing Applicant's mark registration,
`
`among dozens of other marks registered and/ or pending is the
`ulterior motivation to protect a confiscated mark. Opposer’s own
`purported expert witness candidly admitted this Opposer’s purpose
`
`in bringing,
`
`through a back door,
`
`this - action and belying any
`
`purported philanthropic desire to protect the U.S. consumer.
`
`
`
`Q What would be the damages for Habanos, S.A. if the
`applicant registered its mark?
`
`MR. GOLDSTEIN: Objection to the question. Irrelevant.
`There is no claim for damages and the TTAB (sic) can’t
`award them.
`
`THE WITNESS: Should I answer?
`
`MR. GOLDSTEIN: .Yes. And it calls for a legal conclusion.
`But you can answer.
`
`THE WITNESS: As I understand it, the applicant is trying
`to register the name "Havana Club”?
`
`BY MR. SANCHELIMA:
`Q. I don't know. You were hired as an expert. You tell me.
`A.- Well,'my understanding is, based on the information
`that's been provided to me, that the applicant is trying
`to register the name ”Havana Club ”' which is a very,
`very famous, currently produced rum that is made in
`Cuba. And in my view, the registration of this name
`could be potentially confusing to consumers of cigars
`that this particular cigar, Havana Club, could have some
`more relationship to Cuba than something named
`Havana Dreams or Havana Wonder or something like
`that, because it is also the name of a very well-known
`rum, which is currently produced in Cuba and is widely
`known worldwide." Perelman Test. Depo. Cross Exam.
`Pp 63-64.
`
`It is clear that Opposer’s' intention is to bypass Section 211 and
`
`advance -the
`
`interests of
`
`a
`
`related,
`
`commonly owned Cuban
`
`instrumentality.
`
`Therefore, Opposer’s claims
`
`in question are
`
`unenforceable under Section 211 (a)(2) mid/or Section 211 (la).
`
`22
`
`
`
`3.
`
`REGISTRATION OF THE MARK HAVANA CLUB FOR
`
`CIGARS MADE FROM CUBAN SEED TOBACCO IS NOT
`BARRED BY SECTION 2(e)(3) AS CONSTITUTING A
`DECEPTIVELY GEOGRAPHICALLY MISDESCRIPTIVE
`DESIGNATION9
`
`Assuming that
`
`the above mentioned hurdles are somehow
`
`overcome, Applicant has diligently prosecuted its application and is
`
`entitled to the registration of its mark, because it has not deceived the
`
`Office or anyone, and the goods are not deceptively geographically
`
`misdescriptive under Sections 2(a) and 2(e)(3). From at least as early as
`
`the date when the application was filed_ to this date, Applicant has had
`
`a bona fide intention to use its mark on tobacco products that come
`
`from Cuban seeds. This and other equivalent terms are Widely used in
`
`the industry. See exhibit 70 in Bocl<’s Te-st. Depo. Tr. p.p. 75-76.1“
`
`Another publication, in regulatory context, describes the prohibitions
`
`of a government agency (OFAC)“ . See exhibit 2 of Bocl<’s Test. Depo.
`
`9 0pposer’s second ground in its notice of opposition is based on Section 2a. However, for
`geographical terms, this ground is subsumed within Section. 2(e)(3). In re Calqffomia
`Innovations, Inc, 329 F2d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003).
`10 Opposer’s objection as to the truthfulness of the assertions made in the article (exhibit
`70) is insufficient to overcome Applicant’s position regarding the wide use in the relevant
`industry of the terms “Cuban seed” or “Cuban Corojo seed.” or equivalent.
`H Office of Foreign Assets Control, US. Treasury.
`
`23
`
`
`
`Tr. p.12, relied upon by Applicant as legal authority for its commercial
`
`activities.
`
`In fact, if these terms (Cuban seed tobacco, Cuban Corojo,
`
`or equivalent) are not used, manufacturers are distributors will not
`have an equivalent term to describe the .ty
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