Corporacion Habanos, S.A. and Empressa Cubano del Tabaco, dba, Cubatabacov.Xikar, Inc.

Trademark Trial and Appeal Board

Nov 13, 2012

No. 91186534 (T.T.A.B. Nov. 13, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 13, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Corporacion Habanos, S.A. and Empressa Cubano del Tabaco, dba, Cubatabaco

v.

Xikar, Inc.
_____

Opposition No. 91186534
_____

David B. Goldstein of Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C. for
Corporacion Hababos, S.A. and Empressa Cubano del Tabaco.

J. David Wharton of Stinson Morrison Hecker LLP for Xikar, Inc.
_____

Before Bucher, Bergsman and Shaw, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Xikar, Inc. (“applicant”) filed a use based application for the mark HAVANA
COLLECTION, in standard character form, for goods ultimately identified as “cigar
cutters; non-electric cigar lighters not of precious metal; humidors; and cigar
carrying cases not of precious metal,” in Class 34. Applicant disclaimed the
exclusive right to use the word “Collection.”
Opposition No. 91186534

2

Corporacion Hababos, S.A. and Empressa Cubano del Tabaco (“opposers”)
opposed the registration of applicant’s mark under Section 2(e)(3) of the Trademark
Act of 1946, 15 U.S.C. § 1052(e), on the ground that applicant’s mark is primarily
geographically deceptively misdescriptive because, according to opposers, despite
the consumer association between Havana and cigar accessories, applicant’s goods
do not come from Havana, Cuba.1
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), applicant’s application file. In addition, the parties
introduced the following testimony and evidence:
A. Opposers' testimony and evidence.
1. Declaration of Ana López Garcia, former Director of Marketing at
Corporacion Habanos, S.A., former Corporate Director at the English firm of
Hunters & Frankau Ltd., a cigar import and distribution company that is the
exclusive United Kingdom distributor of cigars imported from Cuba by Habanos,
S.A., and currently an employee at Empressa Cubano del Tabaco involved in

1 Opposers also asserted that applicant’s mark is deceptive under Section 2(a) of the
Trademark Act, 15 U.S.C. § 1052(a). However, the Federal Circuit has held that with the
NAFTA amendments, Section 2 of the Trademark 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).” In re
California Innovations Inc., 329 F.3d 1334, 1340, 66 USPQ2d 1853, 1856-57 (Fed. Cir.
2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003). 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 Section 2(a). Id. at 1857.
Opposition No. 91186534

3

marketing and exporting Cuban cigars and cigar related accessories, with attached
exhibits.2
2. Notice of reliance on the following items:3
a. Entries for “Havana” from encyclopedias, dictionaries, and THE
COLUMBIA GAZETTEER OF THE WORLD purportedly to
show that Havana is a well-known geographic location in Cuba,
that Havana has meaning as a cigar made in Cuba or grown
from Cuban tobacco, and that Havana is known for the
production of cigars and tobacco products;
b. Excerpts from “consumer-oriented English-language cigar books
published or sold in the United States, which purportedly use
the term ‘Havana(s)’ or ‘Havana cigar(s)’ to mean cigars
manufactured in Cuba from Cuban tobacco and that Havana is
known for as a source for humidors;
c. Excerpts from the Cigar Aficionado magazine and website
purportedly to show that cigar accessories are advertised and

2 The parties filed a stipulation on April 13, 2011 agreeing that opposers may introduce the
Declaration of Ana Lopez Garcia as her trial testimony.
3 Opposers also introduced excerpts from applicant’s product catalogues through the notice
of reliance, however, product catalogues are not publications in general circulation among
members of the general public within the meaning of Trademark Rule 2.122(e) and,
therefore, we have not considered the catalogues. See Hiraga v. Arena, 90 USPQ2d 1102,
1104-05 (TTAB 2009). Opposers introduced an affidavit of Steve J. Albert, Senior Account
Manager at LanguageWorks, regarding the translation of the phrase “a la Havane.”
However, because the parties did not stipulate to the introduction of Mr. Albert’s affidavit
as testimony, we have not considered the affidavit. See Trademark Rule 2.123(b) (“By
written agreement of the parties, the testimony of any witness or witnesses of any party,
may be submitted in the form of an affidavit by such witness or witnesses.”).
Opposition No. 91186534

4

covered in news articles along with cigars and that cigar
accessories are made in Cuba;
d. Excerpts from the Smoke magazine and website and the Tobacco
Journal International magazine purportedly to show that cigar
accessories are advertised and covered in news articles along
with cigars and that cigar accessories are made in Cuba;
e. Excerpts from the Smokeshop magazine and website
purportedly to show that cigar accessories are advertised and
written about in news articles along with cigars and that cigar
accessories are made in Cuba;
f. News articles from U.S. newspapers discussing and referring to
“Havana(s)” or “Havana cigar(s)” as cigars and discussing
humidors made in Cuba;
g. Nine articles found on the Internet discussing the fame and
reputation of Cuban-origin cigars;
h. Entries from four websites discussing Cuban-origin cigars,
including a NationalCigarMuseum.com article about humidors
made in Cuba;
i. Entries from opposer Habanos, S.A.’s website and the website of
one of its distributors featuring the sale of humidors made in
Cuba;
j. Excerpts from applicant’s website;
Opposition No. 91186534

5

k. Excerpts from the websites of cigar retailers advertising
applicant’s products;
l. Applicant’s Supplemental Responses to Opposers' First Set of
Interrogatories;
m. Applicant’s Responses to Opposers’ Second Set of
Interrogatories;
n. A copy of Registration No. 1970911 for the mark LA CASA DEL
HABANO and design and Registration No. 2177837 for the
mark HABANOS UNICOS DESDE 1492 and design printed
from the electronic records of the United States Patent and
Trademark Office showing the current status and title to the
registration;
o. Entries from English-Spanish dictionaries translating the terms
“Habano” and “Habana”; and
p. Excerpts from the discovery deposition of applicant’s President
Kurt Van Keppel with attached exhibits.
3. Opposers’ rebuttal notice of reliance on the following items:
a. Excerpts from applicant’s website;
b. Excerpts from websites of four purported cigar retailers; and
c. Excerpts from cigar magazines Cigar Aficionado, Smoke and
Smokeshop.

Opposition No. 91186534

6

B. Applicant’s testimony and evidence.
1. Notice of reliance on the following items:
a. Wikipedia entry for Cuba;
b. CIA – The World Fact Book (cia.gov) entry for Cuba;
c. Cigar Encyclopedia website (cigarencyclopedia.com) entry for
applicant;
d. Wikipedia entry for Havana
e. COLUMBIA ENCYCLOPEDIA (6th ed. 2007) entry for Havana
f. Webpage from NYCGO.com entitled “Havana Central Times
Square”;
g. Ezinearticles.com webpage entitled “A Moveable Feast In
Havana”;
h. A webpage from Havanacentral.com;
i. Excerpts from opposers' application files;
j. Excerpts from opposers’ registration files;
k. Excerpt from opposer Habanos website (habanos.com);
l. Excerpts from Perelman’s INTERNATIONAL DIRECTORY OF
RETAIL TOBACCONISTS (2008); and
m. Printouts from applicant’s website.
2. The entire discovery deposition of applicant’s President Kurt Van
Keppel with attached exhibits.4

4 In their April 13, 2011 stipulation, the parties agreed that Mr. Van Keppel’s deposition
may be introduced into evidence.
Opposition No. 91186534

7

Standing
Ana López Garcia testified that “[s]ince its creation in 1994, Habanos S.A.
has been responsible for the promotion and marketing in Cuba and abroad of all
Cuban premium, that is, hand-made, cigar brands and cigar-related accessories.”5
The precise nature of the business of opposer Empressa Cubano del Tabaco is not
clear from Ms. Garcia’s affidavit. However, she testified that while employed by
that company she was involved in the marketing and export of Cuban cigars and
cigar-related accessories.6 In addition, Ms. Garcia testified as follows:
During my employment with [Empressa Cubano del
Tabaco] and Habanos S.A., I have joined or directed
strategic efforts to position premium Cuban cigar brands
and cigar-related products for introduction to the U.S.
market upon termination of the present embargo on U.S.-
Cuba trade. The size of the U.S. economy, the number of
U.S. cigar consumers, and the proximity of the United
States to Cuba make the U.S. market an important factor
in [Empressa Cubano del Tabaco’s] and Habanos S.A.’s
long-term planning. All of the marketing strategies and
policies I devised as Habanos S.A.’s Director of Marketing
are formed in part by the prospect of eventual entry into
the U.S. domestic market.7
Accordingly, opposers have a legitimate personal interest in this proceeding and,
therefore, have standing. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185 (CCPA 1982).

5 Garcia Affidavit ¶7.
6 Id.
7 Id. at ¶11.
Opposition No. 91186534

8

Whether the mark HAVANA COLLECTON for cigar accessories is primarily
geographically deceptively misdescriptive?
The elements of a claim under Trademark Act § 2(e)(3) are as follows:
(1) The primary significance of the mark is a generally known geographic
location;
(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 significant
portion of the relevant consumers’ decision to buy the goods or use the services.
See In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1495 (Fed. Cir. 2009);
U.S. Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1540 (TTAB 2006), In re
California Innovations, 66 USPQ2d at 1858; In re Compania de Licores
Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012).
A. The primary significance of the term “Havana.”
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® 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); In re Compania de Licores Internacionales S.A., 102
Opposition No. 91186534

9

USPQ2d at 1844-45. Because the applied-for mark is a composite mark, HAVANA
COLLECTION 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); In re Compania de Licores Internacionales S.A., 102 USPQ2d at 1844-
45. 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; In re Compania de Licores Internacionales S.A., 102 USPQ2d at
1845.
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 determine whether the primary significance is geographic. See, e.g., 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); In re Compania de Licores
Internacionales S.A., 102 USPQ2d at 1845-46 (the primary significance of HAVANA
Opposition No. 91186534

10

in the mark OLD HAVANA is the city of Havana); 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”).
Applicant concedes that Havana is a city in Cuba.8 Moreover, it is beyond
dispute that Havana, Cuba is a generally known geographic location. Accordingly,
we find that primary significance of the term “Havana” is a well-known geographic
location.
The addition of “Collection” to “Havana” does not diminish the primary
geographic significance of the term “Havana” when the mark HAVANA
COLLECTION is considered in its entirety. The mark HAVANA COLLECTION
engenders the commercial impression of a grouping of items that share a connection
with Havana, Cuba.

8 Applicant’s Brief, p. 1 (“No issue with regard to the fact that Havana is a city in Cuba and
that Cuba is associated with quality cigars.”) and p. 4 (“Applicant does not deny, and has
consistently recognized in this proceeding, that the primary significance of Havana is
geographic.”).
Opposition No. 91186534

11

B. The origins of applicant’s cigar accessories.
It is undisputed that applicant’s cigar accessories do not originate in Havana,
Cuba.
C. Goods/place association.
To establish a goods/place association, opposers may provide such evidence as
excerpts from telephone directories, gazetteers, encyclopedias, geographic
dictionaries, the LexisNexis® database, or the results of an Internet search. See In
re Loew’s Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (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); In re Compania de Licores Internacionales S.A., 102 USPQ2d at 1847.
Opposers may also reference applicant’s specimen displaying the use of its mark
and any other evidence in the record that shows the context in which the mark is
used. See 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 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
Opposition No. 91186534

12

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 record showed
that Havana produces a variety of goods, including clothing and cosmetic items); In
re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1035 (TTAB 1997) (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).
Applicant concedes that there is a goods/place association between “Havana”
and cigars,9 but denies that there is a goods/place association between “Havana”
and cigar accessories.10

9 Applicant’s Brief, p. 4 (“Applicant has not denied, at any time in this proceeding, the
relevant public’s association of Havana with cigars.”).
Opposition No. 91186534

13

The record is clear that Havana is associated with cigars. “Havana” is
defined as “1. the capital of Cuba … 2. a cigar made in Cuba.”11 According to THE
NEW ENCYCLOPAEDIA BRITANNICA, Vol. 20, p. 534 (1988), “The quality products of
the tobacco industry, notably Havana cigars, have brought Cuba world fame.”12
AN ILLUSTRATED ENCYCLOPEDIA OF POST-REVOLUTION HAVANA CIGARS,
by Min Ron Nee,13 p. 193 (2003) cited to a “Bulletin to Members Number 690” of the
America Fair Trade Association (February 14, 1928) as the best definition of
“Havana.”
“Havana” as a trade name for cigars is with little doubt
the oldest trade name in America as it has been used
since the days of Columbus to describe tobacco grown on
the Island of Cuba.
This historical fact was brought out by the Federal Trade
Commission in its case against XXXXX Cigars, Inc., in
which it was charged that the word “Havana” was used to
describe tobacco not grown on the Island of Cuba and that

10 Applicant’s Brief, p. 4 (“[T]here is no basis for even an inference that a ‘reasonably
prudent consumer’ … would make any association between [cigar accessories] and
Havana.”). (Emphasis in the original).
11 Opposers’ notice of reliance, RANDOM HOUSE WEBSTER’S DICTIONARY, p. 331 (4th ed.
2001). See also Opposers’ notice of reliance THE RANDOM HOUSE DICTIONARY OF THE
ENGLISH LANGUAGE (UNABRIDGED), p. 877 (2nd ed. 1987); WEBSTER’S NEW
COLLEGIATE DICTIONARY, Vol. 5, p. 525 (1977); THE OXFORD ENGLISH
DICTIONARY(1970); Merriam-Webster online (m-w.com); Online Etymology Dictionary
(etymonline.com).
12 Opposers’ notice of reliance. See also Opposers’ notice of reliance THE WORLD BOOK
ENCYCLOPEDIA, Vol. 9, p. 87 (1992) (“Havana’s most important manufacturing activity is
the processing of tobacco.”).
13 This reference work is cited in PERELMAN’S POCKET CYCLOPEDIA OF HAVANA
CIGARS, p. 2 (3rd ed. 2005) as “a repository of information simply not available anywhere
else.” In July/August 2005 issue of Cigar Aficionado article “The New Geneva,” the author
referred to the reference work as “the definitive work on the subject.” (Opposers’ notice of
reliance, Exhibit 3).
Opposition No. 91186534

14

such use of the word was misleading to the purchasing
public and constituted an unfair practice of the trade.
“The tobacco grown on the Island of Cuba has, since the
days of Columbus, borne the name ‘Havana’, the tobacco
no doubt having taken the name of the city of Havana
where it was first manufactured into cigars from which
such cigars and the tobacco have been exported to all
parts of the world as the Havana tobacco and Havana
cigars,” says Henry Miller, the commission’s attorney in
his brief of the case.
… Havana became the cigar manufacturing center of the
world and the tobacco and the cigars were marketed
under the name Havana.
Ana López Garcia testified as follows:
12. Havana, Cuba, in particular, is world renowned for
its production and export of high-quality, premium cigars.
In fact, Havana is so closely associated with the famous
Cuban cigars that Cuban cigars are commonly referred to
as “Havanas” in English-speaking countries.
13. Havana, Cuba, in particular, is internationally
renowned for the production of high quality humidors,
which are both sold in Cuba and exported throughout the
world. … These humidors are frequently sold under the
same marks as the famous Cuban cigar brands, including
COHIBA, MONTECRISTO, ROMEO Y JULIETA,
PARTAGAS and H. UPMANN. …
15. Habanos S.A. also exports humidors made in Cuba
for sale in countries throughout the world, including
Europe, Latin America and the Caribbean, Asia, the
Middle East and North America. Humidors made in
Cuba are also special ordered from all over the world,
including from Hong Kong, Japan, France, Spain, Italy,
Germany, Belgium, Holland, Luxembourg, Libya and
Mexico. …
* * *
25. Cigar accessories, such as humidors, cigar cutters,
cigar holders and cigar cases/travel humidors, have no
function or use other than in connection with cigars.
Opposit

A
applicat
specime
The term
style of
O
fashione

14 “A la”
ENGLISH
notice of
Imports
Cir. 1983
ion No. 91
s indicated
ion to se
n is a copy
“a la Ha
Havana.”1
n the seco
d the ciga
It is
the q

means “acc
LANGUAG
dictionary
Co., 213 US
).
186534
above, w
e the con
of a produ
vane” app
4
nd page o
r cutter ha
a handma
uintessent

ording to; in
E (UNABR
evidence. U
PQ 594, 59
e may look
text in w
ct insert.
earing on
f the inse
ndles from
de piece o
ial cigar ci
the style o
IDGED), p.
niversity o
6 (TTAB 19
15
to applic
hich appli
The cover
the left-ha
rt, applica
French m
f art that
ty, Havana
f.” THE RA
46 (2nd ed.
f Notre Dam
82), aff’d, 7
ant’s speci
cant uses
of the inse
nd side of
nt explain
aple and h
liberates
.
NDOM HO
1987). The
e du Lac v
03 F.2d 137
men of us
its mark
rt is displ

the cover
s how a
and paint
the spirit
USE DICTI
Board ma
. J. C. Gour
2, 217 USP
e filed wit
. Applica
ayed below
means “in
Parisian a
ed them.
of
ONARY OF
y take judic
met Food
Q 505 (Fed
h its
nt’s
.
the
rtist
THE
ial
.
Opposit

F
T
cigar ac
from an
annual
humido
barns, h
Habano
T
Chests.”

15 Applic
16 Lopez
17 Oppos
“designe
procedur
ion No. 91
inally, the
here was v
cessories.
article ab
internatio
rs in virtu
istorical b
s Festival
he Nation
17

ant’s notice
Dec. ¶¶17-1
ers’ notice o
d to tell the
es, the batt
186534
insert incl
ery little
The Summ
out the Cu
nal cigar f
ally every
usts of pe
features an
alCigarM

of reliance
8, Exhibits
f reliance E
stories beh
les and stra
udes a “Ce
direct evid
er 2008 i
ban cigars
estival, “G
shape of
rsons – e
auction o
useum.com
Exhibit H.
6 – 8; Opp
xhibit 9. T
ind all thos
tegies, the
16
rtificate o
ence refer
ssue of Sm
noting th
ifted Cub
the imag
ven a 194
f humidor
website
osers’ notice
he Nationa
e folks and
schemes, th
f Authenti
encing Ha
oke maga
at at the H
an crafter
ination: t
9 Chevy F
s for charit
has a w
of reliance
l Cigar Mu
all those br
e triumph
city” show

vana in co
zine featu
abanos F
s fashione
hatch-roof
astback.”1
y.16
ebpage
Exhibits 3
seum is a p
ands, the p
s and failur
n below.
nnection
red an exc
estival, Cu
d high qu
huts, sto
5 Indeed,
about “Cu
,4, 6 and 9.
rivate ende
rocesses an
es.”
with
erpt
ba’s
ality
rage
the
ban

avor
d
Opposition No. 91186534

17

When Europeans arrived in Cuba they discovered more
than tobacco. Numerous fruits and veggies were added to
the world’s tables. Exotic hardwoods were none the less
prized. The island soon became known for fine
woodworking, much of which went into creating chests for
the island’s cigars so highly prized by the wealthy
worldwide. All Cuban export cigar companies seem to
have used fancy chests at one time or another.
Based on our review of the all the evidence in the record, including evidence
not specifically referenced above, we find that there is a goods/place association
between cigars and Havana. However, to the extent that there is a goods/place
association between cigar accessories and Havana, it exists solely as a result of the
fame of Havana in connection with cigars and because cigar accessories are related
to cigars. Because Havana is so well-known for cigars, consumers seeing Havana
used in connection with a product associated with cigars are likely to believe that
there is a goods/place association between those products and Havana.
The Court of Appeals for the Federal Circuit specifically addressed whether
the related goods test is applicable to geographic marks in In re Save Venice N.Y.,
Inc., 59 USPQ2d at 1784 (emphasis added):
In the modern marketing context, geographic regions that
are noted for certain products or services actively promote
and adapt their specialties to fit changing consumer
needs. Thus we see no reason to believe that a modern
merchant of Venice would not expand on the traditional
Venetian products listed by the Board, to begin marketing
products or services related to such goods. Similarly,
from the consumer's perspective, we also find no reason to
believe that the public strictly limits its association of a
place to the geographic region's traditional products or
services. Because we consider that consumers may
assume that geographic regions, like other commercial
actors, are likely to expand from their traditional goods or
services into related goods or services, we hold that the
Opposition No. 91186534

18

registrability of a geographic mark may be
measured against the public's association of that
region with both its traditional goods and any
related goods or services that the public is likely to
believe originate there. The essence of the test is
whether consumers are likely to be confused by the source
of the related goods identified by a distinctive geographic
mark.
In its application of the “related goods” test, the Board
found that many of applicant's goods “reflect product
types, decorative themes and material compositions”
associated with the city of Venice, Italy. As a result, the
Board concluded that consumers would make a
goods/place association between Venice, Italy and
applicant's related goods. We agree with the Board
that certain derivative “related goods” carrying a
distinctive geographic mark would likely confuse
consumers as to the source of the “related goods.”
In other words, “we are really saying no more than that we must look to the
evidence that has been presented about the probable reaction of purchasers to a
particular geographic term when it is applied to particular goods.” In re House of
Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB
1984).18
D. Materiality.
To establish that a geographic term is primarily geographically deceptively
misdescriptive under 15 U.S.C. § 1052(e)(3), opposers must show that the
goods/place association made by a consumer is material to the consumer’s decision
to purchase those goods. In re California Innovations Inc., 66 USPQ2d at 1856. In

18 House of Windsor was a refusal under Section 2(a) on the ground that the mark BAHIA
for cigars is deceptive. However, as noted in footnote 1, 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 Section 2(a).
Opposition No. 91186534

19

other words, the issue is whether a known or possible misdescription in the mark
would affect a substantial portion of the relevant consumers’ decision to purchase
the goods. As indicated above, we focus on “the probable reaction of purchasers to a
particular geographic term when it is applied to particular goods.” In re House of
Windsor, Inc., 221 USPQ at 57.
If the evidence shows that the geographical area named in the mark is
sufficiently known to lead purchasers to make a goods/place association, but the
record does not show that the relevant goods are a principal product of that
geographical area, the deception will most likely be found not to be material. If,
however, there is evidence that the relevant goods, or related goods, are a
principal product of the geographical area named by the mark, then the deception
will most likely be found to be material. In re Compania de Licores Internacionales
S.A., 102 USPQ2d at 1850.
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 (“[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
Opposition No. 91186534

20

material and the mark, therefore, deceptive.” (quoting In re House of Windsor, 221
USPQ at 57)); In re Compania de Licores Internacionales S.A., 102 USPQ2d at 1850.
In Save Venice, the court affirmed the Board's refusal to register applicant's
mark a logo containing the terms “THE VENICE COLLECTION” and “SAVE
VENICE, INC.” for a variety of goods in nine different international designated
classes, including potpourri, tableware made of precious and nonprecious metals,
lamps, clocks, art prints, paper products, residential furniture, dinnerware,
glassware, bedding and carpets because of the “substantial evidence available
showing that Venice, Italy is known for glass, lace, art objects, jewelry, cotton and
silk textiles, printing and publishing.” 59 USPQ2d at 1783. Although the court in
Save Venice did not expressly address the materiality issue, because it was not
officially recognized in this context, the court concluded that the public would
mistakenly believe they were purchasing traditional Venetian products because
“certain derivative ‘related goods’ carrying a distinctive geographic mark would
likely confuse consumers as to the source of the ‘related goods.’” Id. at 1784.
As indicated above, HAVANA is well-known, if not famous, for its cigars.
Because cigar accessories have no purpose other than to be used in connection with
cigars, it follows that cigar accessories are more desirable if there is some
association with HAVANA. This conclusion is reinforced by applicant’s specimen of
use, a product insert featuring the term “a la Havane” and a certificate of
authenticity. The product depicted on the cover of the product insert is a cigar
cutter underneath the term “THE HAVANA COLLECTION.” On the left-hand side
Opposition No. 91186534

21

of the product insert is the term “a la Havane.” The last page of the product insert
is a “Certificate of Authenticity.” At first blush, a consumer will believe that
applicant is certifying that the product is from Havana because it is part of the
“HAVANA COLLECTION.” The commercial impression engendered by the mark
HAVANA COLLECTION is that is part of a group of items from Havana. Only if
the consumer reads the small print will he/she learn that applicant is certifying
that the “HAVANA COLLECTION” is a hand-made limited production cutter.
Under these circumstances, we find that applicant is trying to associate his product
with the positive commercial impressions engendered by Havana in connection with
cigars. We find that this evidence is sufficient to show that purchasers of
applicant’s cigar cutters would expect the goods to have their origin in Havana,
Cuba. Thus, the use of the word HAVANA in connection with cigar accessories is a
material factor in the purchasing decision.
Applicant’s reliance on our decision in U.S. Playing Card Co. v. Harbro, LLC,
81 USPQ2d 1537 (TTAB 2006) is not well founded. In U.S. Playing Card Co. v.
Harbro, LLC, the Board held that the mark VEGAS was not primarily
geographically deceptively misdescriptive of playing cards that do not originate in
Las Vegas, finding that the opposer failed to establish that the misleading
goods/place association would be a material factor in the customer’s decision to
purchase the goods. The Board rejected opposers’ argument that opposer had met
the materiality factor by proving that there is a market for cancelled casino cards
from Las Vegas casinos, stating that “[a]lthough the evidence demonstrates that
Opposition No. 91186534

22

consumers are interested in obtaining cards that were used in casinos, the evidence
does not establish that they are interested in purchasing playing cards that were
manufactured or used in Las Vegas.” The Board also disagreed with opposers’
contention that the goods/place association between Las Vegas and playing cards
was so strong that materiality could be presumed. 81 USPQ2d at 1542.
E. Conclusion
The primary significance of Havana is the capital city of Cuba, a geographic
area that is generally known to American consumers. Because Havana is well
known, if not famous, for cigars, consumers will make a goods/place association
between cigar accessories and Havana. That is, consumers will mistakenly believe
that applicant’s cigar accessories originate in Havana when they do not. Lastly,
because of the renown of Havana for cigars, the geographic origin of cigar
accessories is a material factor for consumers in their decision to buy such products.
In view of the foregoing, opposers have established that the mark HAVANA
COLLECTION for cigar accessories in geographically deceptively misdescriptive
under Section 2(e)(3) of the Trademark Act.
Decision: The opposition is sustained and registration to applicant is
refused.