Caribbean Cigar Holdings Group Co., S.A.

Trademark Trial and Appeal Board

Aug 28, 2012

No. 85255304 (T.T.A.B. Aug. 28, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: August 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Caribbean Cigar Holdings Group Co., S.A.
________

Serial No. 85255304
_______

Stewart L. Gitler of Welsh Flaxman & Gitler LLC for
Caribbean Cigar Holdings Group Co., S.A.

Laurie R. Kaufman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Cataldo, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Cigar Holdings Group Co., S.A., filed an
application to register the mark HUMO JAGUAR in standard
characters on the Principal Register for “cigars” in
International Class 34.1

1 Application Serial No. 85255304 was filed on March 2, 2011,
based upon applicant’s allegation of its bona fide intent to use
the mark in commerce in connection with the goods. “HUMO” is
disclaimed apart from the mark as shown. The English translation
of HUMO is “SMOKE.”

Ser. No. 85255304
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark so resembles the following marks,
previously registered on the Principal Register as to be
likely to cause confusion, mistake or deception:

for “cigarette lighters not of precious metal; and ashtrays
not of precious metal”2 in International Class 34; and
JAGUAR
in typed or standard characters for “cigarette lighters of
precious and semi-precious metals; watches; clocks;
jewelry; parts and fittings for all of the aforesaid goods”
in International Class 14.3
When the refusal was made final, applicant appealed.
Applicant and the examining attorney submitted main briefs
on the issue under appeal.

2 Registration No. 2175105 issued on July 21, 1998. The mark
consists of a leaping jaguar above the term “JAGUAR.” Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
3 Registration No. 2768534 issued on September 30, 2003. Section
8 affidavit accepted; Section 15 affidavit acknowledged.

Ser. No. 85255304
3
Materials Submitted With Brief
Before considering the merits of this appeal, we
address an evidentiary matter. Applicant submitted with
its July 27, 2001 response to the examining attorney’s
Office action a search summary from a USPTO database
indicating “that there exist 132 registrations and pending
applications that incorporate the term JAGUAR alone or in
combination with other terms ….”4 In her August 19, 2011
final Office action, the examining attorney advised
applicant that the mere submission of a summary of a search
for such registrations does not make them of record and,
further, instructed applicant in how to make the third-
party registrations properly of record.
As the examining attorney made clear, to make a third-
party registration of record, a copy of the registration,
either a copy of the paper USPTO record, or a copy taken
from the electronic records of the Office, should be
submitted. See generally TBMP § 1208.02 (3d ed. rev.
2012). See also In re Duofold Inc., 184 USPQ 638 (TTAB
1974). In addition and as often stated, the record in the
application should be complete prior to the filing of an
appeal. See Trademark Rule 2.142(d).

4 Applicant’s July 27, 2011 communication, unnumbered pages 4-5.
Ser. No. 85255304
4
With its brief on appeal, applicant submitted, for the
first time, copies of approximately 120 third-party
registrations, presumably from the earlier-submitted
summary. The examining attorney objected to these third-
party registrations as being untimely filed. We agree.
The exhibits attached to applicant’s brief were not
made of record during examination, notwithstanding that the
examining attorney provided instructions to applicant
regarding the proper procedure for their introduction.
Accordingly, their submission with applicant’s brief is
manifestly untimely. Moreover, it is the well-established
practice of this tribunal not to take judicial notice of a
third-party’s registrations. See TBMP § 1208.02. The
proper procedure, not followed by applicant, is to request
a suspension of the appeal and remand for consideration of
the evidence.5 As such, we have not considered such
evidence in reaching our decision. See TBMP § 1203.02(e)
and authorities cited therein.
Likelihood of Confusion
Our determination of the issue of likelihood of

5 Even construing applicant’s submission as a request for remand,
we would deny inasmuch as applicant has not shown good cause
therefor. See TBMP § 1207.02 (3d ed. rev. 2012) and authorities
cited therein.

Ser. No. 85255304
5
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
For purposes of our likelihood of confusion
determination, we will concentrate our discussion on cited
Registration No. 2175105 for the mark shown below

for “cigarette lighters not of precious metal; and ashtrays
not of precious metal.” If likelihood of confusion is
Ser. No. 85255304
6
found with the mark and goods in this registration, there
is no need to consider the other cited registration.
Conversely, if likelihood of confusion is not found, we
would not find likelihood of confusion with the mark and
goods in the other cited registration.
The Marks
We begin our analysis by looking at the similarities
and dissimilarities of the marks in the application and
registration when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result.
Because the similarity or dissimilarity of the marks
is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
Ser. No. 85255304
7
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. V. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion”). On the
other hand, different features may be analyzed to determine
whether the marks are similar. Price Candy Company v. Gold
Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 224 USPQ
at 751.
In comparing the two marks, we note that applicant’s
mark, HUMO JAGUAR, incorporates the entirety of the wording
in registrant’s JAGUAR and design mark. Thus, the marks
are similar in that they both contain the identical term
JAGUAR. We find that the term JAGUAR is the dominant
portion of both marks. The descriptive, disclaimed term
HUMO – meaning “smoke” - in applicant’s mark possesses less
source identifying significance than the term JAGUAR, which
appears to be arbitrary as applied to the goods of both
Ser. No. 85255304
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parties. Further, the design of a leaping jaguar in
registrant’s mark reinforces the term JAGUAR and draws
additional attention thereto. It is settled that when a
mark comprises both a word and a design, the word is
normally accorded greater weight because it would be used
by purchasers to request the goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For
these reasons, we find that JAGUAR, the term shared by
applicant’s mark and that of registrant, is the dominant
term in both and accordingly it is entitled to more weight
in our analysis.
Based upon the foregoing, we find that, when viewed in
their entireties, the marks HUMO JAGUAR and JAGUAR and
design are more similar than they are different. Applicant
has taken the wording in registrant’s mark, which term is
reinforced by the design therein, and added a descriptive
term to it. Thus, it is likely that the marks would be
viewed as variations of each other, but still pointing to
the same source.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
The Goods
We turn now to our consideration of the identified
goods, noting that it is not necessary that the goods at
Ser. No. 85255304
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issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, we find that applicant’s cigars are
related to registrant’s cigarette lighters and ashtrays,
not of precious metal inasmuch as such goods are commonly
understood to be used together. To state the obvious,
registrant’s goods may be used to light and collect ash
from applicant’s goods. Thus, the goods appear to be
related on the face of their respective identifications
thereof.
In further support of the refusal to register, the
examining attorney made of record copies of 8 use-based,
third-party registrations reciting the goods identified in
the involved application and cited registration. The
following examples are illustrative:
Ser. No. 85255304
10
Registration No. 3482281 for “cigars, tobacco,
and related products, namely, cigarettes, cigar
boxes, lighters and holders not of precious
metal, ashtrays, cigar bands, cigar cutters,
humidors, and cigar tubes;”

Registration No. 3786317 for “Cigar tubes;
Cigarillos; Cigars; Hand-rolling tobacco;
Lighters for smokers; Non-electric cigar lighters
not of precious metal; Roll your own tobacco;
Rolling tobacco; Smoking tobacco; Tobacco;”

Registration No. 3624815 for “Cigars; cigarette
lighters not of precious metal, cigar and
cigarette boxes not of precious metal; humidors;”
and

Registration No. 3971896 for “Cigars, tobacco,
cigarettes, roll your own tobacco; articles for
smokers not of precious metal, namely, cigar
lighters, cigarette lighters, cigar cases,
cigarette cases, cigar cutters, cigar holders,
cigarette holders, cigar tubes, rolling papers.”

These registrations suggest, in general, that applicant’s
cigars are related to registrant’s cigarette lighters and
ashtrays. See In re Infinity Broadcasting Corp. of Dallas,
60 USPQ2d 1214, 1217-18 (TTAB 2001). Although these
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nevertheless have probative value to the extent that they
serve to suggest that the services listed therein are of a
kind which may emanate from a single source. See, e.g., In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 at n. 6 (TTAB 1988).
Ser. No. 85255304
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The examining attorney further made of record evidence
from commercial Internet websites showing that cigars and
accessories therefor, including cigarette lighters and
ashtrays, are offered under the same marks. These websites
include thompsoncigar.com, johncrouchtobacco.com, and
cigarsinternational.com. Such evidence serves to
demonstrate that third parties are using a single mark to
identify applicant’s types of goods as well as those of
registrant.
Based upon the evidence made of record by the
examining attorney and the nature of the goods themselves,
we find that registrant’s goods are related to those
provided by applicant.
As a result, this du Pont factor also favors a finding
of likelihood of confusion.
Channels of Trade
It is settled that in making our determination
regarding the relatedness of the parties’ goods, we must
look to the goods as identified in the involved application
and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
Ser. No. 85255304
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forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”).
Because there are no restrictions in either
applicant’s or registrant’s identification of goods as to
the channels of trade in which the goods may be
encountered, or type or class of customer to which the
goods are marketed, both applicant’s and registrant’s goods
must be presumed to move in all normal channels of trade
and be available to all classes of potential consumers,
including those of each other’s goods. See In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). In consequence thereof,
this du Pont factor further favors a finding of likelihood
of confusion.
Conditions of Sale
The final du Pont factor discussed by applicant is
that of the conditions of sale. Applicant asserts that its
goods and those of registrant would be purchased only by
careful and sophisticated users. However, even in
Ser. No. 85255304
13
instances of sales of the respective goods to highly
sophisticated purchasers, it is still the case that both
applicant’s and registrant’s goods are of a type which may
be used for purposes that are related. Prospective
purchasers, therefore, may mistakenly believe that these
goods emanate from the same source. In addition, even if
some degree of care may be exhibited in making the
purchasing decision, the marks HUMO JAGUAR and JAGUAR and
design are sufficiently similar that even careful and
discriminating purchasers are likely to assume that the
marks identify goods emanating from a single source.
Finally, it is settled that even sophisticated purchasers
are not necessarily knowledgeable in the field of
trademarks or immune from source confusion. See In re
Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists. Moreover, to the extent
that any of the points raised by applicant raise a doubt
about likelihood of confusion, that doubt is required to be
resolved in favor of the prior registrant. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Ser. No. 85255304
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Decision: The refusal of registration is affirmed.