Compania de Licores Internacionales S.A.

Trademark Trial and Appeal Board

Mar 20, 2012

No. 75010230 (T.T.A.B. Mar. 20, 2012)

Mailed: 3/20/12

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Compania de Licores Internacionales S.A.
________

Serial No. 75010230
_______

Jennifer P. Rabin of Akerman Senterfitt for Compania de
Licores Internacionales S.A.

Karen M. Strzyz, Managing Attorney, Law Office 102.1
_______

Before Quinn, Holtzman and Kuhlke,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Compania de Licores Internacionales S.A. filed an
application to register the mark OLD HAVANA (in typed form)
for “rum” in International Class 33.2 Applicant claimed the
benefits of acquired distinctiveness under Section 2(f) of
the Trademark Act, 15 U.S.C. §1052(f).

1 We recognize that Ms. Strzyz is a Managing Attorney, but
because she assumed responsibility for examination of the
application from the original examining attorney, and for ease of
reference, we will use the term “examining attorney” in
references to Ms. Strzyz or the original examining attorney.
2 Application Serial No. 75010230, filed October 25, 1995,
alleging first use anywhere and first use in commerce on October
5, 1995.
THIS OPINION
IS A PRECEDENT OF THE
TTAB
Ser No. 75010230
2
The Examining Attorney refused registration under
Section 2(e)(3) of the Trademark Act, 15 U.S.C.
§1052(e)(3), on the ground that applicant’s proposed mark
is primarily geographically deceptively misdescriptive.3
The Examining Attorney also found that the Section 2(f)
claim is insufficient.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.
The application’s filing date of “1995” is not a typo;
the application has been pending for over sixteen years. A
detailed chronology of the prosecution history is not
warranted. Suffice it to say that the length of pendency
is due to a string of events, including a suspension based
on prior-filed applications; an abandonment of the
application due to a failure to timely respond to an Office
action, followed by the grant of a petition to revive; a
final refusal, followed by an appeal and briefing; a
suspension pending a decision by the Federal Circuit in a
third-party’s appeal involving a similar issue, and a
subsequent delay by the Board in taking further action in
this case after the decision; a remand of this application,

3 Registration also was refused on the ground that the mark is
geographically deceptive under Section 2(a) of the Trademark Act,
15 U.S. C. §1052(a). The Section 2(a) refusal subsequently was
withdrawn.

Ser No. 75010230
3
approval of the application for publication, publication in
the Official Gazette, and extensions of time to oppose
granted to no less than four potential opposers, all
followed by the Office’s request for a remand to revisit
the registrability of applicant’s mark; the issuance of a
new final refusal, followed by a request for
reconsideration and a denial thereof; and the filing of
supplemental appeal briefs which, at long last, brings us
to this decision.4
Both applicant and the Examining Attorney introduced
evidence during prosecution. We first address the
Examining Attorney’s objection to certain exhibits attached
to applicant’s supplemental brief; because applicant did
not file a supplemental reply brief, there is no response
to the objection. The following exhibits are attached to
the brief: a Wikipedia entry (Exhibit A); a copy of
applicant’s product label (Exhibit B); a TARR5 printout of
one third-party registration (Exhibit C); one page
retrieved from a third-party website covering a particular

4 Applicant set forth a detailed account of the prosecution
history in its supplemental appeal brief filed on April 1, 2011;
the Examining Attorney, in her brief, agreed with applicant’s
account.
5 The “Trademark Applications and Registrations Retrieval”
system, existing when applicant submitted this evidence, is an
official database of the USPTO. The current system, “Trademark
Status and Document Retrieval” (TSDR), integrates “old” TARR and
TDR (“Trademark Document Retrieval”) into one database.
Ser No. 75010230
4
brand of rum (Exhibit D); a TARR printout of one third-
party registration (Exhibit E); excerpts of a third-party
website covering the technology of rum-making (Exhibit F);
and excerpts of a third-party website about rum
classifications (Exhibit G). The Examining Attorney also
points out that applicant, in its supplemental appeal
brief, merely listed three third-party registrations at
pages 12-13, without providing copies thereof.
The Examining Attorney objected to the introduction of
Exhibits C through G, and the list of three third-party
registrations. The objections are well taken.
The record in an application should be complete prior
to the filing of an appeal. Trademark Rule 2.142(d).
Exhibits attached to a brief that were not made of record
during examination are untimely, and generally will not be
considered. See, e.g., In re Brouwerji Bosteels, 96 USPQ2d
1414 (TTAB 2010); In re Herbal Science Group LLC, 96 USPQ2d
1321 (TTAB 2010); see also TBMP §1203.02(e) (3d ed. 2011).
So as to be clear, in the present case, there was further
examination after remand of the application when evidence
could have been submitted even though the appeal had been
filed. Inasmuch as Exhibits C-G were not timely made of
record during examination, they are stricken and have not
been considered in making our decision.
Ser No. 75010230
5
As for the mere listing of the three third-party
registrations at pages 12-13 of the brief, the
registrations do not form part of the record on appeal.
Firstly, applicant did not submit copies of the
registrations; merely listing third-party registrations is
insufficient to properly make them of record. In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998).
Secondly, even if copies were submitted with the brief,
they would be untimely and, thus, not proper for
consideration. Trademark Rule 2.142(d). See TBMP
§1208.02. Accordingly, we have not considered these three
third-party registrations.
Geographically Deceptive Misdescriptiveness
The elements of a refusal under Section 2(e)(3) are as
follows:
1) The primary significance of the mark is a
generally known geographic place;

2) The goods or services do not originate in the
place identified in the mark;

3) Purchasers would be likely to believe that the
goods or services originate in the geographic
place identified in the mark; and

4) The misrepresentation would be a material
factor in a substantial portion of the
relevant consumers’ decision to buy the goods
or use the services.

Ser No. 75010230
6
In re Spirits International, N.V., 563 F.3d 1347, 90 USPQ2d
1489, 1490-95 (Fed. Cir. 2009); In re California
Innovations, 329 F.3d 1334, 66 USPQ2d 1853, 1858 (Fed. Cir.
2003).
Applicant admits that its rum does not originate in
Havana, Cuba. Applicant argues, however, that the term OLD
HAVANA engenders meanings other than that of a geographic
location; that purchasers will not make a goods/place
association because they are well aware of the Cuban
embargo and that, therefore, purchasers know that rum
cannot come from Cuba; and that the use of HAVANA in
applicant’s mark is not a misrepresentation that is a
material factor in the consumers’ decision to buy
applicant’s rum.
The Examining Attorney maintains that the primary
significance of OLD HAVANA is as a generally known
geographic location; that the goods do not come from
Havana, Cuba; that purchasers will make a goods/place
association and mistakenly believe that the rum originates
in Havana, and that the Board, in a precedential decision
(discussed infra) involving the identical mark and
identical goods, but a different applicant, endorsed this
view; and that the misrepresentation regarding the
geographic origin of the rum would materially impact a
Ser No. 75010230
7
substantial portion of the relevant consumers’ decision to
purchase the rum.
We now review the Board’s precedential decision
referenced by the Examining Attorney, In re Bacardi & Co.
Ltd., 48 USPQ2d 1031 (TTAB 1997).6 The applicant in that
case sought to register various HAVANA (or HABANA)
formative marks for rum, including OLD HAVANA. The
examining attorney refused registration under Section
2(e)(3) on the ground that the marks were primarily
geographically deceptively misdescriptive for goods that
did not come from Cuba. At the time the appeal was
decided, the test under Section 2(e)(3) did not include the
materiality requirement of the present test.7 The Board
found that the term HAVANA is the name of a major city in
Cuba, and that even if applicant had supported its argument
that the name evokes a particular lifestyle, “such
association would not contradict the primary geographic
significance of the term, as the association may be
precisely because of the primary significance of HAVANA as
a city in Cuba.” Id. at 1033-34. The Board indicated that
the presence of the additional term “OLD” in the proposed

6 Any discussion or even citation to the Board’s earlier decision
is glaringly absent from applicant’s brief.

7 As discussed infra, the Federal Circuit first enunciated the
current test in In re California Innovations, 66 USPQ2d at 1858.
Ser No. 75010230
8
mark OLD HAVANA did not detract from the primary geographic
significance. The Board stated that “the addition of the
term OLD to the geographic term [in] OLD HAVANA, simply
either describes a characteristic of the city or refers to
a section of the city. Thus, OLD reinforces the geographic
significance of the composite mark.” Id. at 1034. With
respect to a goods/place association, the Board relied upon
evidence from dictionaries, encyclopedias and gazetteers
indicating that Havana, Cuba is a major city that produces
a variety of goods, among which rum is listed as a
significant product. Thus, the Board found that purchasers
are likely to believe that the rum to be sold under the
proposed mark OLD HAVANA originated in Havana, Cuba.
Accordingly, the Board affirmed the Section 2(e)(3)
refusal. The applicant pointed out that it was legally
precluded from distributing rum originating in Cuba in
United States commerce, but the Board was not persuaded,
finding that OLD HAVANA was primarily geographically
deceptively misdescriptive of rum because purchasers’
belief that the rum to be sold under the mark originated in
Havana, Cuba was a mistaken belief. In making this
finding, the Board found no evidence “to support
applicant’s contention that, in view of the U.S. trade
sanctions against Cuba, purchasers will know that no
Ser No. 75010230
9
product on the U.S. market could originate in Cuba.” Id.
at 1035, n.13.
Since the earlier Board decision issued, there has
been a substantive change in the law by the addition of the
materiality factor as explained in In re California
Innovations. Applicant and the Examining Attorney have
presented evidence relating to the materiality factor and
we must decide this appeal based on the evidence they have
introduced into the record.8 Despite the passage of
fourteen years and the additional requirement of
materiality, we reach the same conclusion as the one in the
Board’s earlier decision, namely that OLD HAVANA is
primarily geographically deceptively misdescriptive for rum
under Section 2(e)(3).
We now turn to consider the specifics of the refusal.
Primary Significance
A mark is not primarily geographic where the
geographic meaning is obscure, minor, remote, or not likely
to be connected with the goods. In re Wada, 194 F.3d 1297,
52 USPQ2d 1539, 1540 (Fed. Cir. 1999) (NEW YORK WAYS
GALLERY held primarily geographically deceptively
misdescriptive where manufacturing listings and Nexis®

8 The Examining Attorney does not contend that the earlier Board
decision has a preclusive effect on the present appeal.
Ser No. 75010230
10
excerpts showed that handbags and luggage are designed and
manufactured in New York); In re Jacques Bernier, Inc., 894
F.2d 389, 13 USPQ2d 1725, 1726 (Fed. Cir. 1990). Because
the applied-for mark is a composite mark, OLD HAVANA must
be evaluated as a whole. In re Save Venice New York, Inc.,
259 F.3d 1346, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001) (THE
VENICE COLLECTION and SAVE VENICE INC. composite marks
featuring an image of the winged Lion of St. Mark held
primarily geographically deceptively misdescriptive of
products that do not originate in Venice, Italy, where an
encyclopedia and a gazetteer showed that Venice was a large
metropolitan area where fine art objects, glassware, and
decorative items had been made and sold for centuries, and
a popular tourist destination). It is not improper,
however, to give greater weight to the dominant feature of
a composite mark in the course of evaluating the mark as a
whole. In re Wada, 52 USPQ2d at 1541.
To support a refusal to register geographic matter,
the Trademark Act requires that the mark be primarily
geographic, that is, that its primary significance be that
of a geographic location. The fact that the proposed mark
has meaning or usage other than as a geographic term does
not necessarily alter its primary geographic significance.
Thus, if a geographic term has another meaning, we must
Ser No. 75010230
11
determine whether the primary significance is geographic.
See, e.g., In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB
1986) (THE NASHVILLE NETWORK held primarily geographically
descriptive of television program production and
distribution services, the Board finding that the primary
significance of the term was Nashville, Tennessee, and not
that of a style of music); In re Cookie Kitchen, Inc., 228
USPQ 873, 874 (TTAB 1986) (the fact that MANHATTAN
identifies an alcoholic cocktail does not alter the primary
significance of that term as a borough of New York City);
In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028, 1029
(TTAB 1985) (finding that the fact that NEAPOLITAN
identifies, among other things, a type of ice cream, does
not alter the primary significance of that term as meaning
“of or pertaining to Naples in Italy”); see also TMEP
§1210.02(b)(i) (8th ed. 2011).
Applicant argues that the term “Havana” has two non-
geographic meanings, thereby rendering the term not
primarily geographic in meaning. Applicant contends that
the term suggests a certain special method of production
used by rum distillers; and that the term possesses a
certain prestige, evoking a place in time or a historical
era, rather than a geographic city.
Ser No. 75010230
12
More specifically, applicant points to Cuban expertise
and “world class know how” in the distillation of rum.
Applicant states that there is a traditional “Havanese”
method of distilling rum, resulting in a particular amber
color. According to applicant, this method of distillation
or style of rum making is used in the production of
applicant’s rum.
Applicant also contends that the term “Old Havana” is
not the name of a city and is not synonymous with Havana,
Cuba. Rather, according to applicant, the term conjures up
nostalgia for the social and cultural scene of a long ago,
pre-Castro Cuba. Applicant goes on to state that evoking
the modern-day actual geographic location of Havana, Cuba
is entirely counter to applicant’s choice of the mark, and
its attendant labeling and branding strategy, which are all
intended to reference an “era” and “a place in time,”
rather than a geographic location. Thus, applicant
concludes, it would be “impossible” for rum to emanate from
“Old Havana,” which is not a specific geographic location,
but rather a reference to the culture, atmosphere and
social climate of the city’s yesteryear that no longer
exists in present-day Communist Cuba. In this connection,
applicant argues that certain places named in third-party
registered marks, such as Beverly Hills, California (CAMP
Ser No. 75010230
13
BEVERLY HILLS), New York City (ESSEX/NYC), and Switzerland
(SWISS MISS) “are known as prestige locations.” (Brief,
pp. 7-9). Applicant posits that Havana, Cuba is similar,
stating that companies commonly select trademarks
containing these types of city names “to impart
connotations of prestige, quality, glamour and expertise
that these city names possess.” Specifically, applicant
asserts that OLD HAVANA “conjures up images of things
reminiscent of long ago Cuba and Havana, namely, cigars,
music, cocktails, beaches and nightlife...[and] [r]um, of
course, was one of the many products associated with ‘Old
Havana.’” (Brief, p. 9).
It is beyond dispute that Havana, Cuba is a generally
known geographic location. As shown by an encyclopedia
entry, Havana is a city, capital, major port and the
leading commercial center of Cuba. It also constitutes one
of Cuba’s fourteen provinces. Havana is the largest city
in the Caribbean region and has one of the greatest
treasuries of historic colonial preserves in the Western
hemisphere.9 Havana’s industries include rum
distilleries.10 “As the principal city and national

9 See pages from website www.britannica.com, attached to the
September 3, 2008 Office action.

10 See pages from website www.encyclopedia.com, attached to the
September 3, 2008 Office action.
Ser No. 75010230
14
capital, Havana’s economy dominates much of the
nation...Prior to the revolution the city supported
comparatively little manufacturing activity, although rum
production, cigar making, and shipbuilding have been
mainstays of the city’s economy since the colonial
period.”11 In sum, Havana is the focal point of Cuban
commerce, with rum distilleries among its principal
industries.12
Accordingly, we find that the primary significance of
the term “Havana” is a well known geographic place.
The addition of “OLD” to “HAVANA” does not diminish
the primary geographic significance when the mark OLD
HAVANA is considered as a whole. As the earlier Board
panel found, “the addition of the term OLD to the
geographic term [in] OLD HAVANA, simply either describes a
characteristic of the city or refers to a section of the
city. Thus, OLD reinforces the geographic significance of
the composite mark.” In re Bacardi & Co., 48 USPQ2d at
1034. Indeed, contrary to applicant’s contention that “Old
Havana” “is not a specific geographic location”
(Supplemental Brief, p. 6), some evidence indicates that

11 See pages from website www.encarta.com, attached to the
September 3, 2008 Office action.

12 See pages from website www.reference.com, attached to the
February 2, 2010 Office action.
Ser No. 75010230
15
there is a section of the city referred to by the name:
“Commercial Manager Martha Hernandez [of the Havana Club
Rum Museum] said enhancements gathered in Old Havana
include this museum dedicated to the explanation of methods
on how to prepare rum and its history, besides other
recreational offers found here.”13 And “If you travel to
Cuba to party it up, then Old Havana will probably suit
you.”14
The record does not support applicant’s assertion that
OLD HAVANA evokes the primary significance of a particular
lifestyle of a bygone era. Even if the record showed this
connection, it would not overcome the evidence establishing
the primary geographic significance of OLD HAVANA as the
connection may be made precisely because of the primary
significance of Havana as a city in Cuba. See In re Wada,
52 USPQ2d at 1540 (the primary geographic significance of
NEW YORK is not lost by the addition of the words WAYS
GALLERY).
We also are not persuaded by applicant’s contention
that the applied-for mark suggests a certain style or
method of production used by rum distillers. Although we

13 See pages from website www.cubaheadlines.com, attached to the
February 2, 2010 Office action.

14 See pages from website www.travel.aol.com, attached to the
January 27, 2011 Office action.
Ser No. 75010230
16
acknowledge that the evidence shows Cuban expertise in
making rum, the high quality of Cuban rum is also
attributed to Cuba’s climate, fertile soil and a sugarcane
crop that is world renowned.15 That is to say, we recognize
that a certain style or method of distillation of rum may
be referenced as “Cuban style”; the evidence fails,
however, to show that there exists a method for distilling
rum that is specifically referred to as “Havanese.” What
the evidence does show, however, is that rum production is
a major industry in Havana. The Wikipedia excerpt reads,
in pertinent part, as follows:
Havana’s economy first developed on the
basis of its location, which made it
one of the early great trade centres in
the New World. Sugar and a flourishing
slave trade first brought riches to the
city....Despite efforts by Fidel
Castro’s government to spread Cuba’s
industrial activity to all parts of the
island, Havana remains the centre of
much of the nation’s industry...The
traditional sugar industry, upon which
the island’s economy has been based for
three centuries...controls some three-
fourths of the export economy....Other
food-processing industries are also
important...[including] production of
alcoholic beverages (particularly rum).

Applicant’s reliance on third-party registrations of
marks comprising, in part, “prestige locations” (e.g., New

15 See pages from website www.wineandalcohol.com, attached to the
September 3, 2008 Office action.
Ser No. 75010230
17
York City and Beverly Hills) is not persuasive. We are not
privy to the files and evidence therein. In any event, the
registered marks are all distinguishable from the
applicant’s mark. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)(“Even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the board or this
court.”). Further, “[e]ven if all of the third-party
registrations should have been refused registration...such
errors do not bind the USPTO to improperly register
Applicant’s marks.” In re Shinnecock Smoke Shop, 571 F.3d
1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009), citing In re
Boulevard Entertainment, 334 F.3d 1336, 67 USPQ2d 1475,
1480 (Fed. Cir. 2003).
The first element of the section 2(e)(3) test is
satisfied.
Origin
It is undisputed that applicant’s rum does not
originate in Havana, Cuba. The second element of the test
is satisfied.
Goods/Place Association
The third element of the test does not assess whether
the geographic term is the name of a place known generally
Ser No. 75010230
18
by the relevant public. Rather, the inquiry is whether the
mark is used in connection with goods that purchasers are
likely to believe are connected with the location in
question, when they are not. In re Loew’s Theaters, Inc.,
769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). The examining
attorney’s burden “is simply to establish a reasonable
predicate for [the] conclusion that the public would be
likely to make the particular goods/place association.” Id.
at 868. To establish a goods/place association, the
examining attorney may provide such evidence as excerpts
from telephone directories, gazetteers, encyclopedias,
geographic dictionaries, the LexisNexis® database, or the
results of an Internet search. Id. (finding evidence from
a gazetteer and dictionary showing that tobacco is a crop
produced and marketed in Durango, Mexico sufficient to
establish a prima facie goods/place association). The
examining attorney should also examine the specimen and any
other evidence in the record that shows the context in
which the mark is used. See TMEP §1210.04; In re Les
Halles de Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1541
(Fed. Cir. 2003) (“[T]he goods-place association often
requires little more than a showing that the consumer
identifies the place as a known source of the product.”);
see also In re Save Venice New York Inc., 59 USPQ2d at
Ser No. 75010230
19
1783-84; In re Wada, 52 USPQ2d at 1541; In re Loew’s
Theatres, Inc., 226 USPQ at 868; In re Joint-Stock Co.
“Baik,” 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA held
primarily geographically descriptive of vodka where the
record showed that applicant is located in Irkutsk, Russia,
a city near Lake Baikal and one of the main export regions
of Russian vodka, applicant’s vodka is made from water
piped directly from Lake Baikal, Lake Baikal is the world’s
largest fresh water lake, and there are numerous references
to “Baikal” in publications from various cities throughout
the United States and in national publications); In re
Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1516-17
(TTAB 2001) (finding evidence that Tuscany, Italy is an
important industrial center that produces a variety of
products including furniture, and that several businesses
advertise the sale of furniture from Tuscany on the
Internet, was sufficient to establish a goods/place
association between Tuscany and furniture, even though
Tuscany is not famous for its furniture); In re Boyd Gaming
Corp., 57 USPQ2d 1944 (TTAB 2000) (HAVANA RESORT & CASINO
and ROYAL HAVANA RESORT & CASINO held primarily
geographically deceptively misdescriptive of wearing
apparel, beauty products and perfume that do not come from
Havana, Cuba; goods/place association established where the
Ser No. 75010230
20
record showed that Havana produces a variety of goods,
including clothing and cosmetic items); In re Bacardi & Co.
Ltd., 48 USPQ2d at 1035, (OLD HAVANA, HAVANA SELECT, HABANA
CLASICO, HAVANA PRIMO, and HAVANA CLIPPER all held
primarily geographically deceptively misdescriptive of rum
that does not originate in Havana, Cuba; goods/place
association established by evidence showing that Havana is
a major city and rum is a significant product).
The record is replete with evidence establishing a
connection between rum and Cuba and, in particular, Havana,
Cuba. As noted earlier, Cuba enjoys an excellent sugar
crop, and sugar is an important ingredient in the
production of rum. It then is no surprise that rum is the
most famous alcoholic product of Cuba.16 Cuba has been
called the “Isle (or Island) of Rum,” owing to its “world
famous sugar cane, a favorable Caribbean climate, fertile
soil and the unique know-how of Cuban ‘Maestro Roneros’
(master rum-makers).”17 “Cuba has several names. Among
them, the Island of Rum. The Cuban rum is distinguished in

16 See, e.g., pages from websites www.encyclopedia.com, attached
to the September 3, 2008 Office action; www.encarta.msn.com,
attached to the September 3, 2008 Office action; www.havana-
guide.com, attached to the September 3, 2008 Office action; and
www.blackcuba.com, attached to the February 2, 2010 Office
action.

17 See pages from website www.therumelier.com, attached to the
January 27, 2011 Office action.
Ser No. 75010230
21
the world as one of the best, thanks to the fertile lands,
rain, sun and the climate of this prodigious island.”18
“This little island in the Caribbean, this beautiful,
historical island of Cuba means sun, salt, and some of the
best rum in the world. Once you’ve tried Cuban rum, life
will never be quite the same....First stop in Cuba is the
capital city of Havana....I’m here for the rum. Cuba is
home to some of the best rum in the world.”19 “While you’re
there, be sure to visit the Havana Rum factory to see how
they make the best rum in the world.”20 “In truth, there
never has been and never will be rum as good as ours.
Those made outside Cuba lack the best raw material that
exists, molasses made from Cuban sugarcane.”21 As noted
above, the Cuban Havana Club Rum Museum, a tourist
attraction in the capital city, has been described as being
located in a part of the city called “Old Havana.”22

18 See pages from website www.cubaluxuryhotels.com, attached to
the January 27, 2011 Office action.

19 See pages from website www.thirstytraveler.com, attached to the
January 27, 2011 Office action.

20 See pages from website www.travel.aol.com, attached to the
January 27, 2011 Office action.

21 See pages from website www.cigaraficionado.com, attached to the
September 3, 2008 Office action.

22 See pages from website www.cubaheadlines.com, attached to the
February 2, 2010 Office action.
Ser No. 75010230
22
Despite this evidence, applicant maintains that there
is no reasonable basis to believe that the public would be
deceived as to the origin of applicant’s rum because there
is no evidence that consumers are likely to believe that
the products derive directly from Havana, Cuba. In this
connection, applicant’s main point is that American
consumers have long grown accustomed to the fact that they
cannot buy “real” Cuban rum due to embargo restrictions.
Applicant introduced a Wikipedia entry showing that the
Cuban embargo began in 1963, making it the most enduring
trade embargo in modern history. Thus, applicant contends,
when consumers encounter applicant’s brand of rum, they
will not believe that the rum comes from Cuba; consumers
will instead understand applicant’s mark in its primary,
non-geographic sense: that OLD HAVANA rum is produced
using traditional “Havanese” distillation and production
methods and formulas, and that the rum possesses the
quality and character associated with old-time, pre-Castro
Cuba.
In several cases, the Board has been presented with
similar arguments based on the Cuban embargo. But in each
such previous case, the Board found the evidence for that
assertion lacking. See In re Jonathan Drew, Inc., 97
USPQ2d 1640 (TTAB 2011) (KUBA KUBA for cigars is primarily
Ser No. 75010230
23
geographically deceptively misdescriptive; no evidence that
the embargo on Cuban products would have any effect on the
perception of the term as geographically deceptive); In re
Boyd Gaming Corp., 57 USPQ2d at 1945-46; In re Bacardi &
Co. Ltd., 48 USPQ2d at 1035-36. Similarly, in this case,
the Examining Attorney has presented evidence that is more
than sufficient to establish a reasonable predicate of a
goods/place association between rum and Havana, Cuba. A
Wikipedia entry noting the longevity of the Cuban embargo
is far too attenuated to overcome that ample showing.
Applicant also points to its product labeling (shown
below) which, applicant claims, prevents any possibility
that a consumer would believe that the rum is actually
distilled in or shipped from Cuba.

Ser No. 75010230
24
Applicant makes three specific points: the use of the word
“brand” immediately below OLD HAVANA informs consumers that
OLD HAVANA is functioning as a trademark and not as an
indicator of geographic origin; the “Cuban Style Rum”
statement makes it clear to the consumer that the rum is
made in the “Cuban/Havanese” style and that it is not from
Cuba; and the statement “Product of USA” ensures that a
consumer will not mistakenly believe that the rum is
actually made in Cuba.
In connection with this argument, applicant has relied
on the Court’s opinion in Pernod Ricard USA, LLC v. Bacardi
U.S.A., Inc., 702 F.Supp.2d 238, 95 USPQ2d 1966 (D.Del.
2010). This false advertising case was based on the
plaintiff’s claim that the defendant was engaged in false
and misleading statements regarding the geographic origin
of its rum produced in Puerto Rico under the mark HAVANA
CLUB. Applicant contends that the rationale in the false
advertising case is directly on point in this appeal, and
is supportive of registration of applicant’s mark OLD
HAVANA. The Court found that the term “geographical
origin” in the Trademark Act is not limited strictly to the
place of manufacture, but rather is “broad enough to
encompass some aspect of a good’s history.” Applicant
urges, therefore, that geographical origin in the context
Ser No. 75010230
25
of a Section 2(e)(3) registrability issue should be subject
to the same interpretation. Applicant points out that the
Court relied upon the Board’s decision in the case of
Corporacion Habanos, S.A. v. Anncas Inc., 88 USPQ2d 1785
(TTAB 2008), to support the proposition that “a product may
be found to originate from a place, even though the product
is manufactured elsewhere.” Drawing on this language,
applicant submits that where “geographical origin”
encompasses not just the place of manufacture, but rather
aspects of a product’s history, then the mark is not
primarily geographically deceptively misdescriptive. This
explains, according to applicant, why the Office has issued
registrations for marks that include CUBA or HAVANA, based
on ingredients or historic formulas used for production,
for items not manufactured in Cuba, but which may have had
an historical association with such country. The Court
found that Bacardi’s HAVANA CLUB product had a Cuban
heritage, and that depicting such heritage was not
deceptive.
We concur with the Examining Attorney’s assessment
that the Court’s decision is distinguishable from the issue
to be decided herein. The Court case involved a false
advertising claim, readily distinguishable from the
registrability of a trademark. The Court alluded to this
Ser No. 75010230
26
in indicating that “a statement concerning trademark
rights, which are not a good or service and do not confer
information regarding the nature, characteristics or
qualities of its rum, cannot be the basis for a false
advertising claim under 15 U.S.C. §1125(a)(1)(B).” Id. at
1971, n.12. The Court was clear in its statement that it
was not required to analyze “actual (or likely) consumer
deception.” Id. at 1975. The Court looked strictly to the
product labels, concluding that the labeling was neither
false nor misleading.
As pointed out by the Examining Attorney, when making
a Section 2(e)(3) determination, evidence other than the
mark on the label or matter found on a specimen providing
further information as to source cannot negate the
geographic deceptive misdescriptiveness that may be
conveyed by the mark itself. We agree. The points made by
applicant relative to its product label are based on
statements separate and apart from any trademark
significance in the mark OLD HAVANA in and of itself.
While we acknowledge, as noted by applicant, that the case
of In re Budge Mfg. Co. Inc., 857 F.2d 773, 8 USPQ2d 1259
(Fed. Cir. 1988), involved an issue of deceptiveness under
Section 2(a) (LOVEE LAMB for automobile seat covers), we
believe that the Federal Circuit’s language in that case is
Ser No. 75010230
27
equally applicable to the Section 2(e)(3) issue we face in
the present case; that is, we must discount “explanatory
statements in advertising or on labels which purchasers may
or may not note and which may or may not always be
provided. The statutory provision bars registration of a
mark comprising deceptive matter. Congress has said that
the advantages of registration may not be extended to a
mark which deceives the public. Thus, the mark standing
alone must pass muster, for that is what the applicant
seeks to register, not extraneous explanatory statements.”
Id. at 1261 (emphasis in original).23
Accordingly, the statements on applicant’s bottle
labels do not negate the primary geographically deceptive
misdescriptiveness of the mark sought to be registered.
Applicant also argues that applicant’s rum actually
has a connection with Havana, thereby negating any
deceptive misdescriptiveness. In this connection,

23 We note that the Federal Circuit has held that with the NAFTA
amendments, §2 of the Act “no longer treats geographically
deceptively misdescriptive marks differently from geographically
deceptive marks,” and anticipated that the “PTO will usually
address geographically deceptive marks under subsection 2(e)(3)
of the amended Lanham Act rather than subsection 2(a).”
California Innovations, 66 USPQ2d at 1856-57. Thus, the legal
standards for determining whether, post-NAFTA, a mark is
primarily geographically deceptively misdescriptive under
§2(e)(3) are the same as those applied in determining
deceptiveness under §2(a). Id. at 1857; see also TMEP
§ 1210.01(c).

Ser No. 75010230
28
applicant introduced the declaration of its president,
Gerardo Abascal, who claims to have more than 30 years of
experience in making “Cuban-style” rums. Mr. Abascal was
born in Cuba, and trained in the art of rum distillation by
his Cuban family, who ran a rum distillation business in
Cuba beginning in the nineteenth century. The “Havanese”
method of “my family’s secret formulation and distillation”
taught to Mr. Abascal in Cuba is used in the production of
applicant’s rum.
We are not persuaded by this argument based on
applicant’s use of a Cuban or “Havanese” style distillation
technique to produce its rum. See Corporacion Habanos S.A.
v. Anncas Inc., 88 USPQ2d at 1792-93. Applicant does not
dispute that its rum is not produced in Havana. The
evidence also shows that applicant is currently located in
Florida. By its argument, applicant attempts to compensate
for these facts by changing the inquiry from one focused on
the geographic origin of the goods to one focused on a
purported geographic style or method of producing the rum
originating in Havana, Cuba. The problem with this
argument is that the case law contemplates substantial
current connections to show that the goods originate in the
place named in the mark. The evidence of record herein is
simply too tenuous to support a finding that the goods in
Ser No. 75010230
29
fact come from Havana because there is no evidence of a
sufficiently substantial current connection between
applicant’s rum and Havana.
Although the case law recognizes that goods need not
be manufactured in the named place to be deemed to
“originate” there, the case law also recognizes that the
concept of “originate” is not so broad as to encompass any
connection that the goods have with the named place.
Rather, the connection with the geographic place must be
sufficiently substantial so that consumers would consider
the goods to come from there. For example, if the goods
contain a main ingredient or component from the geographic
place named in the mark, such a connection can be
sufficient to find the goods originate there. See In re
Loew’s Theatres, Inc. 226 USPQ at 868 (evidence that
tobacco is one in a short list of crops produced and
marketed in Durango, Mexico sufficient to establish the
public would expect applicant’s chewing tobacco to
originate there); see also In re Joint Stock Company
“Baik”, 80 USPQ2d at 1310-11. The mere fact that applicant
produces its rum in a “Cuban” or “Havanese” style under the
direction of Mr. Abascal, who trained in the art of rum
distillation in Cuba, is not a sufficient connection to
deem the rum to originate there.
Ser No. 75010230
30
Based on the evidence of record, we find that the
Examining Attorney has established a goods/place
association between rum and Havana, Cuba.
Materiality
The materiality element reflects the deceptiveness
requirement of section 2(e)(3).California Innovations, 66
USPQ2d 1853. The Office must establish a reasonable
predicate that the misrepresentation of the geographic
origin of the goods would be a material factor in a
significant portion of the relevant consumers’ decision to
purchase the goods. See TMEP § 1210.05(b); Spirits Int’l,
90 USPQ2d at 1490-95 (adding requirement that a substantial
portion of the relevant consuming public be deceived);
California Innovations, 66 USPQ2d 1853 (adding materiality
requirement). In determining “materiality,” the Board
looks to evidence regarding the probable reaction of
purchasers to a particular geographic term when it is used
in connection with the goods. If there is evidence that
the relevant goods, or related goods, are a principal
product of the geographic area named by the mark, then the
deception will most likely be found to be material. See
TMEP §1210.05(c)(i).
Evidence that a place is famous as a source of the
goods raises an inference in favor of materiality. See In
Ser No. 75010230
31
re Les Halles de Paris J.V., 67 USPQ2d at 1542. Such
evidence supports a presumption that a substantial portion
of the relevant consumers is likely to be deceived. See
also In re Loew's Theatres, Inc., 226 USPQ at 868 n.6
(“[I]f the place is noted for the particular goods, a mark
for such goods which do not originate there is likely to be
deceptive under §2(a) and not registrable under any
circumstances.”); In re Beaverton Foods Inc., 84 USPQ2d
1253 (TTAB 2007) (NAPA VALLEY MUSTARD CO. for mustard not
from the Napa Valley was deceptive under Section 2(a)
because it was a material deception; the Napa Valley is
known for its mustard and is the venue for a widely
advertised annual mustard festival).
Thus, the materiality element in cases involving goods
generally will be satisfied if there is evidence showing
that the place named in the mark is well known for the
goods; or the goods are a principal product of the place
named in the mark; or the goods are, or are related to, the
traditional products of the place named in the mark, or are
an expansion of the traditional products of the place named
in the mark. See In re California Innovations Inc., 66
USPQ2d at 1857; In re Save Venice N.Y., Inc., 59 USPQ2d at
1784; In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB
1983), recon. denied, 223 USPQ 191 (TTAB 1984); and TMEP
Ser No. 75010230
32
§1210.05(c)(i). In support of the refusal, the Office
should submit evidence showing that the association between
the goods and the geographic place would be a material
consideration in a consumer’s decision to purchase the
goods. Searches that combine the place name with the name
of the goods and terms such as “famous,” “renowned,” “well
known,” “noted for,” “principal or traditional” may be
useful to establish materiality. The stronger the
connection between the geographic place and the goods, the
more likely the misrepresentation will be a material one.
In re California Innovations, Inc., 66 USPQ2d at 1857
(“[I]f there is evidence that goods like applicant’s or
goods related to applicant’s are a principal product of the
geographical area named by the mark, then the deception
will most likely be found material and the mark, therefore,
deceptive.” (quoting In re House of Windsor, 221 USPQ at
57)).
Applicant would have us conclude that American
consumers are not particular when it comes to the origin of
rum, readily purchasing rum that comes from Puerto Rico and
other Caribbean locations, such as the Virgin Islands.
Contrary to applicant’s statement, the record
establishes that Cuba, and in particular, its capital city,
Havana is famous for rum, and thus we find that the
Ser No. 75010230
33
misdescription about the rum’s origin conveyed by OLD
HAVANA would be material to a consumer in making a
purchasing decision. As discussed above, Cuba is known for
its rum, even being called “The Island of Rum,” and Havana
in particular is a leading production center for rum. The
following examples support this point: “And what can one
say about Havana’s famous rum, savoured straight or on the
rocks, or mixed in fabulous cocktails, renowned as the best
in the world.”24 “Cuban rum has a worldwide reputation.”25
“The excellence of Cuban rum, a product of its unique aging
process, has made Cuban cocktails a perennial favorite the
world over.”26 “While you’re there [Havana, Cuba], be sure
to visit the Havana Rum factory to see how they make the
best rum in the world.”27 “Rum is the most famous alcohol
product of Cuba.”28 “Official sources reported the Cuban
Havana Club Rum Museum is one of the main tourist

24 See pages from website www.usacubatravel.com, attached to the
February 2, 2010 Office action.

25 See pages from website www.havana-guide.com, attached to the
September 3, 2008 Office action.

26 See pages from website www.cuba.com, attached to the February
2, 2010 Office action.

27 See pages from website www.travel.aol.com, attached to the
January 27, 2011 Office action.

28 See pages from website www.blackcuba.com, attached to the
February 2, 2010 Office action.

Ser No. 75010230
34
attractions in Havana, since it has already welcomed one
million visitors from the whole world throughout its nine
years.”29
In deciding In re Jonathan Drew, the Board did not
require direct evidence of materiality. In discussing the
examining attorney’s evidentiary burden in light of Spirits
Int’l and California Innovations, the Board stated:
[T]o the extent that applicant is arguing that
evidence allowing the Board to draw an inference
of materiality is not sufficient and that direct
evidence of public deception is required, we do
not agree. It is well settled that evidence of
what the relevant public understands a term to
mean may be shown not only by direct evidence,
such as consumer testimony and surveys, but it
may also be inferred from indirect or
circumstantial evidence, such as gazetteer
entries and third-party websites, as we have in
this case. See In re Merrill Lynch, Pierce,
Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). See also Bayer,
[488 F.3d 960, 82 USPQ2d 1828, 1832 (Fed. Cir.
2007)](online sources are probative of how a term
would be perceived); In re Reed Elsevier
Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378,
1381 (Fed. Cir. 2007) (“third-party websites are
competent sources to show what the relevant
public would understand a term to mean”).

Further, we do not read the Court's decision in
Spirits as departing from the Court's
longstanding precedent which has permitted
inferences of materiality to be drawn from the
evidence, and serving as proof that a substantial
portion of the relevant public will be deceived.

29 See pages from website www.cubaheadlines.com, attached to the
February 2, 2010 Office action.

Ser No. 75010230
35
In re Jonathan Drew Inc., 97 USPQ2d at 1645-46.
Additionally, in In re Les Halles de Paris, J.V., 67
USPQ2d at 1542, the Federal Circuit stated, “[f]or goods,
the PTO may raise an inference in favor of materiality with
evidence that the place is famous as a source of the goods
at issue.” Thus, indirect evidence of materiality is
permitted, and an inference of materiality may be made if
the place named in the proposed mark is famous for the
goods. See Daesang Corp. v. Rhee Bros. Inc., 77 USPQ2d
1753, 1763 (D. Md. 2005) (Court accepted indirect evidence
of materiality in Section 2(e)(3) litigation); Corporacion
Habanos, S.A. v. Guantanamera Cigars Co., ___USPQ2d___
(TTAB, Opp. No. 91152248, Feb. 16, 2012).
The indirect evidence in the present case is
sufficient to establish a reasonable predicate that a
substantial portion of relevant consumers would understand
that OLD HAVANA refers to Havana, Cuba, and that Cuba, and
Havana, Cuba in particular, is well known for rum; and,
thus, we may infer from the evidence that a substantial
portion of relevant consumers would be deceived. Consumers
would care about whether the rum they buy comes from
Havana, Cuba, and the misrepresentation about the rum’s
origin conveyed by the mark OLD HAVANA is likely to
materially impact the decision to purchase.
Ser No. 75010230
36
Accordingly, we find that the misrepresentation in the
proposed mark OLD HAVANA would be a material factor in a
substantial portion of the relevant consumers’ decision to
buy applicant’s rum.
Conclusion
The primary significance of Havana is the name of the
capital of Cuba, a geographic location that is generally
known to the American consumer. The presence of “OLD” in
the mark OLD HAVANA does not diminish the primary
geographic significance of the mark when considered as a
whole; “OLD” only serves to reinforce the primary
geographic significance which, in point of fact, is a
section of Havana. Because of the large and well-known rum
industry in Havana, consumers will make a good/place
association, that is, consumers will mistakenly believe
that the rum originates in Havana, Cuba when in fact it
does not. Lastly, because of the renown of rum originating
in Havana, Cuba, the geographic origin of the rum would be
a material factor for a significant portion of the relevant
consumers in their decision to buy the rum.
In view of the above, the Examining Attorney has
established that OLD HAVANA is primarily geographically
deceptively misdescriptive under Section 2(e)(3) of the
Trademark Act.
Ser No. 75010230
37
Acquired Distinctiveness
Although applicant has argued against the Section
2(e)(3) refusal, it also claimed acquired distinctiveness
under Section 2(f). Applicant claims that it has used the
mark since November 27, 1991, and that it has obtained
registrations in several foreign countries.30 In
applicant’s words, “[g]iven the amount of time the mark has
been on the market, consumers have come to recognize the
brand and associate it as a USA product. The mark Old
Havana has come to be viewed by consumers as a symbol of
quality rum, with a distinctive Caribbean taste.”
(Response to Office action, 2/4/02). This claim of
distinctiveness was made under counsel’s signature, and no
affidavit or declaration was submitted in support of it.
See TMEP 1212.07; Trademark Rule 2.41(b). Applicant
mentioned this claim in its original appeal brief, but its
supplemental brief is entirely silent on the point. The
Examining Attorney, in her brief, reiterated that the claim
is insufficient.31

30 The date set forth in the original application was 1995.

31 If an applicant, in its appeal brief, does not assert a claim
made during prosecution, it may be deemed waived by the Board.
See TBMP §1203.02(g). Because applicant mentioned the Section
2(f) claim in its original brief, and the Examining Attorney has
considered the claim on the merits in her supplemental brief, we
likewise will consider the claim.

Ser No. 75010230
38
Acquired distinctiveness may not be asserted to
contravene a refusal under Section 2(e)(3) unless the mark
became distinctive of an applicant’s goods in commerce
before December 8, 1993, the date of enactment of the NAFTA
Implementation Act. See In re Boyd Gaming Corp., 57 USPQ2d
at 1947; TMEP §§1212.02(a) and 1210.07(b). Because
applicant claims that it began using the mark in 1991, the
mark could have acquired distinctiveness by December 8,
1993, and therefore this claim of acquired distinctiveness
is not barred.32 However, the only evidence of record to
support its claim that its mark acquired distinctiveness
prior to December 8, 1993 is applicant’s attorney’s claim
of use beginning on November 27, 1991. Even if unsupported
attorney statements were evidence, two years of use,

32 As indicated earlier (footnote 2), the Section 2(a) refusal was
withdrawn. Had the Section 2(a) refusal been maintained, a
Section 2(f) claim would not have been available:
Building on the decision in South Park
Cigar [82 USPQ2d 1507 (TTAB 2007)], we hold
that where an applicant is seeking
registration for a mark with a geographic
term on the Principal Register under
Section 2(f) based on a claim that the mark
had acquired distinctiveness prior to
December 8, 1993, a geographically
deceptive mark is properly refused
registration under Section 2(a). Nothing
in the statute or legislative history
dictates otherwise. Moreover, this
analysis is consistent with the practice of
the USPTO.
In re Beaverton Foods, 84 USPQ2d at 1257; see TMEP
§1210.05(d)(i).

Ser No. 75010230
39
without more, does not show the mark acquired
distinctiveness as of December 8, 1993. Accordingly, we
agree with the Examining Attorney that the Section 2(f)
claim is insufficient.
Decision
The refusal to register under Section 2(e)(3) is
affirmed. The Section 2(f) claim is insufficient.