Compania Tabacalera Santiaguense, S.A.

Trademark Trial and Appeal Board

Jul 21, 1999

No. 74719339 (T.T.A.B. Jul. 21, 1999)

Paper No. 12
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 21, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Compania Tabacalera Santiaguense, S.A.
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Serial No. 74/719,339
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Stewart J. Bellus of Collard & Roe, P.C.
for Compania Tabacalera Santiaguense, S.A.
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Sams, Simms and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Compania Tabacalera Santiaguense, S.A. (a corporation
of the Dominican Republic) has filed an application to
register the mark LA HABANERA for cigars.1
Registration has been finally refused on the grounds
that the mark is primarily geographically deceptively

1 Serial No. 74/719,339, filed August 23, 1995, claiming a date
of first use of April 21, 1922 and a date of first use in
commerce of October 9, 1980. The statement is set forth in the
application that “La Habanera is a Cuban dance.”
Ser No. 74/719,339
2
misdescriptive under Section 2(e)(3) and geographically
deceptive under Section 2(a). Applicant and the Examining
Attorney have filed briefs, but an oral hearing was not
requested.
The determination of whether a mark is primarily
geographically deceptively misdescriptive under Section
2(e)(3) requires analysis under the following two-prong
test:
(1) whether the primary significance of the mark
as it is used is a generally known geographic
place; and
(2) whether the public would make a goods/place
association, i.e., believe the goods for which
the mark is sought to be registered originate
in that place.
Institut National des Appellations D’Origine v. Vintners
International Co. Inc., 958 F.2d 1574, 22 USPQ22d 1190,
1195 (Fed. Cir. 1992), citing In re Societe Generale des
Eaux Minerales de Vittel, S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987); In re Loew’s Theatres, Inc., 769 F.2d
764, 226 USPQ 865 (Fed. Cir. 1985); In re Nantucket, Inc.,
677 F.2d 95, 213 USPQ 889 (CCPA 1982); In re Bacardi & Co.,
48 USPQ2d 1031 (TTAB 1997). In order for a mark to be
geographically deceptive under Section 2(a), it must be
shown that the mark is primarily geographically deceptively

Ser No. 74/719,339
3
misdescriptive under Section 2(e)(3) and additionally that
the geographic misrepresentation is material to the
decision of the purchaser to buy the goods bearing this
mark. Institut National v. Vintners International, supra;
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB
1992).2
Here the major issues arise under the first prong of
the test. Applicant has set forth in its application the
statement that “La Habanera” is the name of a Cuban dance
and maintains that this is the meaning or primary
significance of its mark. The Examining Attorney, on the
other hand, has introduced definitions from Spanish-
English dictionaries of the term “habanera” as meaning “of
Havana” or “native of Havana.” On this basis, the
Examining Attorney argues that the primary significance of
LA HABANERA, as used by applicant, is as a reference to
something that originates from Havana.

2 Section 2 of the Trademark Act was amended by Public Law 103-
183, 107 Stat. 2057, The North Amercian Free Trade Enactment Act,
effective for applications filed on or after December 8, 1993.
As a result, the prohibition against registration on the basis of
being primarily geographically deceptively misdescriptive was
moved from Section 2(e)(2) to Section 2(e)(3) and the
availability of Section 2(f) for marks of this nature was
eliminated. Thus, the major distinction between being refused
registration as primarily geographically deceptively
misdescriptive and geographically deceptive under Section 2(a) no
longer exists, in that registration under the provisions of
Section 2(f) is not an option in either case.
Ser No. 74/719,339
4
Looking to the dictionary definitions of record, we
see that the definition that has been submitted by
applicant from an English language dictionary for
“habanera” is:
1. A Cuban dance in slow duple time
2. the music for the habenera.
Webster’s Ninth New Collegiate
Dictionary 3
The definitions relied upon by the Examining Attorney, as
found in Spanish-English dictionaries, are:
habanero/a 1. adj., of or from Havana
2. nm/f., native or inhabitant of Havana.
Collins Spanish-English, English-Spanish
Dictionary (1993)

habanero, -ra, a., n.m.f. (native) of Havana
Cassell’s Spanish-English, English-Spanish
Dictionary (1978).
In each of the latter dictionaries, there is also a listing
for “habanera,” without any translation, as a musical term.
Applicant makes two arguments with respect to the
meaning of its mark LA HABANERA. First, applicant insists
that the mark should not be translated at all, since it is
a recognized word in the English language. To demonstrate
this recognition of the term “habanera” in its musical
sense in the English language, applicant has made of record

3 The definitions in The Random House Dictionary (2d ed.) are
nearly identical.
Ser No. 74/719,339
5
various Internet excerpts and copies of programs and
brochures showing use of the term to refer to either the
dance form or music for the dance. Second, applicant
argues that, even if the mark is translated, it refers to a
female person from Havana, not an object from this
location. Applicant argues that the addition of the
article “La” requires that the mark be considered as a
noun, and not as an adjective, as would be the appropriate
form, if descriptive of the geographic origin of goods.
We do not agree with applicant’s initial argument that
the mark should not be translated at all, but taken solely
for its meaning in the English language. While “habanera”
may be recognized as a musical term in the English language
by some purchasers of cigars, we believe that most would be
likely to view applicant’s mark as a Spanish term. Thus,
the translations must be taken into consideration. In
doing so, we simply are following the well established
rule that no distinction will be made between an English
term and its foreign equivalent, so that if the translation
of LA HABANERA is geographically descriptive, the mark is
equally so, even though the Spanish term may not be readily
known to the United States public. See In re Atavio Inc.,
25 USPQ2d 1360 (TTAB 1992) and the cases cited therein.
Ser No. 74/719,339
6
Furthermore, and as pointed out by the Examining
Attorney, we must determine the most appropriate or
relevant meaning for LA HABANERA as applied to applicant’s
goods, namely, cigars. See In re Jack’s Hi-Grade Foods,
Inc., 226 USPQ 1028 (TTAB 1985)[while term “Neapolitan” has
several dictionary definitions, only its meaning as a
geographic term is logical when used in connection with
sausage]. Although in Spanish “habanera” is also the name
given to a Cuban dance, we do not believe most purchasers
of applicant’s goods would be likely to make any
association between a Cuban dance and cigars. On the other
hand, even when strictly translated from the Spanish
language, and with attention being given to the presence of
the article “La”, applicant’s mark refers to a female
inhabitant of Havana or a female Havanan. Given this
meaning, we believe that the mark possesses a geographic
connotation, just as the term “the American,” even when
used as a noun, has a geographic connotation. Although the
reference is gender specific in Spanish, whereas in English
“the American” could be either masculine or feminine, the
geographic significance is not lost. In view of the well-
known association of cigars with Havana, we find that the
reference to geographic origin would be the most logical
interpretation of LA HABANERA, as used on applicant’s
Ser No. 74/719,339
7
goods. Even if potential purchasers were not familiar with
Spanish, we find it highly likely that at least a general
connection would be made between the mark LA HABANERA and
the geographic location Havana. We find no need to take
the further step of determining the propriety of
translating applicant’s mark in the adjectival form
advanced by the Examining Attorney, namely, “of or from
Havana.”
Insofar as the second prong of the test is concerned,
applicant has conceded that there is a goods/place
association between Havana and cigars. (Brief, p.2). Thus,
it is not necessary for us to review the evidence submitted
by the Examining Attorney to establish this relationship.
Nor must we consider any effect that the U. S. trade
embargo with Cuba might have on the availability of cigars
from Havana, this issue not having been raised by
applicant. For a general discussion of this matter, see In
re Bacardi & Co., Ltd., supra at 1035-37.
Accordingly, since applicant is a corporation of the
Dominican Republic and has made no contention that its
cigars originate from other than the Dominican Republic, we
find the mark LA HABANERA primarily geographically
deceptively misdescriptive of applicant’s goods. Likewise,
since applicant has failed to contest the refusal under
Ser No. 74/719,339
8
Section 2(a) on any other basis than the primary
significance of its mark, we find the mark geographically
deceptive under Section 2(a).
Applicant has raised the additional argument that
there is a viable presumption that its mark is registrable,
because of the issuance of a prior registration to
applicant for the same mark and the same goods in 1984,4
which registration was inadvertently allowed to lapse for
failure to file a Section 8 affidavit. Applicant points
out that the statement made in that registration that “La
Habanera refers to a Cuban dance or a female person” was
accepted by the Office and the registration was allowed to
issue.
Once a registration has been cancelled under the
provisions of Section 8 of the Trademark Act, however, it
cannot serve as evidence of any existing rights in the
mark. In re Grey Hosiery Mills, 137 USPQ 455 (TTAB 1963).
The decision of a prior Examining Attorney to register the
mark in 1984, based on a record which is not before us, can
have no bearing upon our present determination. By failing
to timely file a Section 8 affidavit, applicant has opened
up its mark to reexamination under present standards.

4 Reg, No, 1,297,961, issued Sept., 25, 1984, cancelled under
Section 8 Feb. 12, 1991.
Ser No. 74/719,339
9
Decision: The refusals to register under Section
2(e)(3) and 2(a) are affirmed.
J. D. Sams
R. L. Simms
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board