Corporacion Habanos, S.A.v.Guantanamera Cigars Company

Trademark Trial and Appeal Board

Feb 16, 2012

No. 91152248 (T.T.A.B. Feb. 16, 2012)

Mailed:
February 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Corporacion Habanos, S.A.

v.

Guantanamera Cigars Company
_____

Opposition No. 91152248 to application
Serial No. 76256068 filed on May 14, 2001
_____

David B. Goldstein of Rabinowitz, Boudin, Standard, Krinsky
& Lieberman, P.C. for Corporacion Habanos, S.A.

Frank Herrera of Frank Herrera, P.A. for Guantanamera Cigars
Company.
______

Before Zervas, Cataldo and Bergsman, Administrative
Trademark Judges.1

Opinion by Zervas, Administrative Trademark Judge:

Background
Corporacion Habanos, S.A. (“opposer”) has opposed the
registration on the Principal Register of the mark
GUANTANAMERA (in standard character form) for “tobacco,

1 Judge Hairston, who was a member of the Board’s panel that
rendered the February 29, 2008 opinion (see below), has retired.
Judge Bergsman is substituted for Judge Hairston.
THIS OPINION IS
A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91152248
2
namely, cigars” by Guantanamera Cigars Company
(“applicant”). On February 29, 2008, after trial on the
merits, we sustained opposer’s opposition on the ground that
applicant’s mark is primarily geographically deceptively
misdescriptive under Trademark Act §2(e)(3).2
See Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86
USPQ2d 1473 (TTAB 2008). Applicant appealed our decision to
the District Court for the District of Columbia, and, on
August 5, 2010, the district court remanded the case back to
the Board. Guantanamera Cigars Co. v. Corporacion Habanos,
S.A., 729 F.Supp.2d 246, 98 USPQ2d 1078 (D.D.C. 2010).
In our 2008 decision, we applied the three-part test
set forth by the Federal Circuit in In re California
Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856-57
(Fed. Cir. 2003), for determining whether a mark is
primarily geographically deceptively misdescriptive, namely,
whether:
(a) the primary significance of the mark is a
generally known geographic location;

(b) the consuming public is likely to believe the
place identified by the mark indicates the origin
of the goods bearing the mark (i.e., that a goods-
place association exists), when in fact the goods
do not come from that place; and

(c) the misrepresentation would be a material
factor in the consumer's decision to purchase the
goods.

2 We did not reach opposer’s claim of fraud stemming from
applicant’s representation to the Office that GUANTANAMERA has no
meaning or English translation.
Opposition No. 91152248
3
The district court also applied the California Innovations
test in its decision, and found as follows in relevant part:
● “Guantanamera literally means ‘girl from
Guantanamo’”;

● applicant did not produce sufficient evidence
to disturb the Board’s finding that the primary
significance of GUANTANAMERA is a geographic
location;

● the consuming public is likely to believe that
applicant’s cigars originate from Cuba;

● the record “contains ample evidence that cigar
tobacco is produced in the Guantanamo province”;
and

● “Cuba is well-known for cigars.”

Guantanamera, 98 USPQ2d at 1082-83. The district court,
because it did not comment on or disagree with our finding
that applicant’s goods do not come from Cuba, apparently
agreed with such finding. However, the court did not agree
with our conclusion on the third element of the California
Innovations test — the materiality of the geographic
misrepresentation inherent in the mark. The court concluded
that our decision did not address whether a significant
portion of relevant consumers would be materially influenced
in their purchasing decisions; and “[t]o establish a prima
facie case, the TTAB or the opposition must show that ‘a
significant portion of the relevant consumers would be
materially influenced in the decision to purchase the
product or service by the geographic meaning of the mark.’”
The court cited to In re Spirits Int’l, 563 F.3d 1347,
Opposition No. 91152248
4
90 USPQ2d 1489, 1495 (Fed. Cir. 2009), which the Court of
Appeals for the Federal Circuit decided after we issued our
decision in Corporacion Habanos.3
The district court added that opposer “never introduced
evidence that suggested material deception of a substantial
proportion of the relevant consuming public”; and “never
established a prima facie case for the third part of the
test before the TTAB.” Guantanamera, 98 USPQ2d at 1084.
The district court remanded the case “to the TTAB so it may
apply the proper legal standard to the third part of the
test for primarily geographically deceptively misdescriptive
terms.” Id. at 1085.
On September 28, 2010, the Board reopened proceedings
for the limited purpose of having the parties address the
question on remand, namely, whether a significant portion of
the relevant consumers would be materially influenced in the

3 In our 2008 opinion, we stated the following regarding the
materiality element of the California Innovations test:

The final prong of the three-part test requires proof
that the misleading goods-place association is a
material factor in the customer's decision to purchase
applicant's cigars. Because opposer has established
Cuba’s renown and reputation for high-quality cigars …
we find that the goods-place association created by
applicant’s mark with Cuba is material in a consumer’s
decision to purchase applicant's cigars. Applicant
evidently believed that the use of Cuban tobacco is a
material factor in the decision to purchase a cigar
because it included the false claim “Genuine Cuban
Tobacco” on its product packaging. Accordingly, we
find that the third element of the Section 2(e)(3)
test has been met.

Opposition No. 91152248
5
decision to purchase the product or service by the
geographic meaning of the mark. The Board also reopened the
briefing period, and allowed the parties to file briefs
limited to this question.
The Evidentiary Record
The parties took further discovery and fully briefed
the issue on remand. The record now includes, in addition
to the evidence noted in our February 29, 2008 decision, the
following:
● the parties’ stipulation (TTABVUE no. 118),4
allowing for, inter alia, the introduction into
evidence of the depositions or excerpts of the
discovery depositions taken in the district court
action of (i) Encarnacion Santovenia (vice
president of Tabacuba and former national director
of tobacco agriculture in Cuba), (ii) Mauricio
Hanono (owner of Absolute Cigar Shop, a cigar
retailer), (iii) Enrique Berger (owner of Cuban
Crafters, another cigar retailer) and (iv) Jorge
Armenteros (a tobacco retailer and educator who
applicant offered as applicant’s expert witness);
and Mr. Santovenia’s declaration in support of
opposer’s summary judgment motion submitted in the
district court action;

● opposer’s supplemental notice of reliance
including excerpts of the depositions of Messrs.
Santovenia, Hanono, Berger and Armenteros taken in
the district court action (TTABVUE nos. 121 –
124);

● exhibits to the trial testimony of opposer’s
witness Jose L. Montagne, president of applicant
(TTABVUE no. 125), previously submitted at TTABVUE
no. 75;

Corporacion Habanos, 86 USPQ2d at 1479.

4 TTABVUE refers to the “Trademark Trial and Appeal Board Inquiry
System,” which is the electronic record for Board proceedings.
Opposition No. 91152248
6
● the expert trial testimony, with exhibits, of
opposer’s witness Alvin Ossip, including the Ossip
expert report and the Ossip supplemental expert
report (TTABVUE nos. 145, 149 and 151);

● applicant’s supplemental notice of reliance
(TTABVUE nos. 130 – 144, 146, 152 – 166); and

● opposer’s supplemental rebuttal notice of
reliance (TTABVUE nos. 168 and 169).5

The above evidence on the single issue which was the subject
of the remand amounts to approximately three-thousand pages.
In our view, this case is yet another in a series of cases
before the Board in which the issue does not warrant a
record of this size. See General Mills Inc. v. Fage Dairy
Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011)
(“… the issues herein do not warrant a record of this size.
This is not the first time the Board has expressed its
displeasure about overzealous litigation in our
proceedings.”)
Evidentiary Matters/Opposer’s Evidentiary Objections
Opposer submitted as exhibit 1 to its main brief “[a]
true and correct copy of the excerpts of the Armenteros
[district court discovery] deposition and the deposition
exhibits and excerpts thereof that are cited” in the brief.
As indicated above, Mr. Armenteros is a tobacco retailer and
educator. Applicant offered Mr. Armenteros as an expert
witness in the district court; his deposition is covered by

5 Applicant did not object to any of opposer’s supplemental
evidence.
Opposition No. 91152248
7
the parties’ stipulation regarding various depositions.
Opposer introduced into the record certain excerpts from the
Armenteros discovery deposition, some during opposer’s trial
period and others during its rebuttal period. However,
after spending some time reviewing the submission, we
discovered that approximately thirty pages in exhibit 1 were
not submitted to the Board during the testimony period, and
thus were never made of record. It appears to us that
opposer sought to have us consider those pages in exhibit 1
- which were not in evidence - by burying them among other
pages which were properly submitted in evidence in this
purportedly handy attachment to its brief. We condemn in
the strongest possible terms opposer’s attempt to hoodwink
us into considering material that opposer did not make of
record, and which is helpful to opposer’s case. Little is
left in the integrity of a proceeding if the tribunal cannot
trust the accuracy of submissions or the veracity of a
party’s representations. As for those pages in exhibit 1
which opposer properly introduced in evidence, it was not
necessary to resubmit them with opposer’s brief. The Board
has repeatedly advised parties that it is not necessary to
submit duplicates of material that is already in the record.
Although the submission, with a brief, of one or two pages
of particularly important material, along with clear and
accurate notations of where in the record the material can
Opposition No. 91152248
8
be found, can be useful, in general, the submission of large
amounts of material as exhibits to briefs is not helpful.
Next, we turn to the documents submitted by applicant.
Many of the documents submitted by applicant by notice of
reliance are not appropriate for submission under the notice
of reliance procedure. The parties stated in their
stipulation that, with one exception that does not apply
here, they waive any authentication objections to exhibits
submitted in connection with the parties’ cross-motions for
summary judgment in the district court action, and that the
exhibits “shall be submitted to the Board either by Notice
of Reliance or with the relevant deposition testimony in
which said exhibits were identified.” (Stipulation at ¶ 2;
TTABVUE no. 118.) The Board approved this stipulation in
its order of January 6, 2011. (TTABVUE no. 119.) The
parties did not specify which documents submitted by notice
of reliance fall within the stipulation. Because opposer
has not objected to the submission of any documents by
applicant as being outside of the notice of reliance
procedure, we have construed the stipulation as including
all submitted documents, and we have not excluded those
documents inappropriate for the notice of reliance
procedure.
Opposer raises a hearsay objection to “[p]rintouts of
the results of thirteen (13) on-line ‘Weekly Polls’ on the
Opposition No. 91152248
9
Cigar Aficionado website … and a printout of a list of Cigar
Aficionado online ‘Weekly Polls’ from 1997-2010.”
(Opposer’s statement of evidentiary objections at 1; TTABVUE
no. 135.) The pages from the magazine Cigar Aficionado
include, in addition to articles on cigars, the results of
informal surveys on topics such as consumer habits,
practices and preferences regarding cigars.6 Applicant
submitted these results to show, inter alia, that
“advertising has very little to do with a United States
cigar consumer’s decision to purchase cigars” and “that on-
line surveys are a simple and cost effective way to illicit
[sic] direct information from the United States cigar
consuming public.” (Applicant’s supplemental notice of
reliance at ¶ 11.) Because there is no information about
how the surveys were conducted or how many persons
participated in the surveys, or even if they were conducted
scientifically in accordance with established survey
practices, opposer’s hearsay objection is sustained to the
extent that it is directed to the results of the survey; we

6 For example, the pages record the results obtained in response
to the following questions:

Q. Which country is your everyday cigar from?

Q. What motivates you to try new cigar brands?

Q. When you buy a box of Cuban cigars, does the Cuban code
influence your buying habits?

(Applicant’s supplemental notice of reliance; TTABVUE no. 149 at
9, 10 and 13.)
Opposition No. 91152248
10
have not considered the survey results for the truth of any
matter asserted therein. To the extent that applicant
relies on the survey results to demonstrate that information
could be obtained from the cigar consuming public through an
on-line survey, we overrule opposer’s competency and
relevancy objections and have considered the materials from
Cigar Aficionado for the limited probative value they have,
i.e., that such a “poll” can be conducted. For the reasons
stated above, the “poll” results are not probative of the
only issue before us, namely, whether it is material to
consumers that cigars come from Cuba.
Opposer’s objections on the basis of relevancy to
(i) the registration record for Registration No. 3377574 for
GUANTANAMERA for, inter alia, rum and liquors; (ii) a
webpage printout regarding the tobacco-growing regions of
Cuba; and (iii) documents regarding an August 2009 cigar
industry trade show, are all overruled. Although not
directly relevant to the issues on remand, the evidence is
harmless to opposer’s case.
Opposer’s objection to applicant’s sales documents such
as invoices and receipts (TTABVUE nos. 155 – 164) is
overruled. Applicant offered these documents to show that
opposer could have deposed the merchants or customers
identified in the sales documents (and hence could have
obtained direct evidence from consumers on whether the
Opposition No. 91152248
11
alleged misrepresentation in the mark was a material factor
in the decision to purchase the goods).7 According to
opposer, applicant did not produce discovery relating to
potential witnesses (i.e., cigar retailers or distributors)
in the district court proceeding and was sanctioned;
applicant hence should be precluded from relying on these
documents in the Board proceeding because they relate to an
issue on which the district court sanctioned applicant. We
are not persuaded that any behavior which resulted in a
sanction in the district court proceeding should bar
applicant’s reliance on this evidence in this Board
proceeding, as any estoppel sanction imposed by the court
relates to conduct during the court proceeding. For the
estoppel sanction to be applied in this proceeding, opposer
would have to establish that conduct in this proceeding
warranted application of a sanction.
Opposer objected to the discovery deposition testimony
of Messrs. Santovenia, Berger, Hanono, Armenteros, Manuel
Garcia (identified by applicant as opposer’s former vice-
president) and Ossip8 taken in the district court action,

7 Applicant submitted sales documents pursuant to a notice of
reliance. Sales documents are not appropriate for submission by
notice of reliance. We construe the stipulation noted earlier in
this decision to extend to these documents and thus have not
excluded them as inappropriately submitted pursuant to a notice
of reliance.
8 Opposer submitted Mr. Ossip’s February 15, 2011 entire
deposition, thus applicant did not need to include this
deposition as a part of its notice of reliance. Once an item of
Opposition No. 91152248
12
which applicant listed in its supplemental notice of
reliance. However, applicant did not submit this material
to the Board, and therefore the objection is moot. In
addition, we give no effect to opposer’s objection to
applicant’s stated reliance in paragraph 18 of applicant’s
supplemental notice of reliance on “any other document or
testimony submitted in connection with the District Court
Action and not otherwise cited to.” To the extent applicant
seeks to rely on documents or transcripts of testimony
attached to its notice of reliance but not referenced in
such notice, the documents or transcripts have not been
properly introduced; and opposer did not identify any
documents or transcripts which fall within the description
of paragraph 18, so there do not appear to be any particular
documents or transcripts which we need to exclude.
As for opposer’s objection to the pages bearing the
Internet address www.cigarcyclopedia.com (see TTABVUE no.
143) on the basis that the pages were not identified in the
supplemental notice of reliance and applicant did not
indicate the relevance of these documents, opposer’s
objection is overruled. Opposer raised the objection –
which is a procedural objection under Trademark Rule
2.122(e), 37 C.F.R. § 2.122(e) - for the first time in

evidence has been introduced into the record, it may be relied on
by any party for any purpose.

Opposition No. 91152248
13
opposer’s statement of objections filed concurrently with
opposer’s brief. Opposer failed to seasonably raise its
objection at a time that applicant would have had an
opportunity to cure the alleged deficiency. See Trademark
Board Manual of Procedure (“TBMP”) §§ 532 and 707.02 (3d ed.
2011).9
Opposer’s objection to an online article from The
Economist (TTABVUE no. 171) is sustained. Applicant
proffered the article well after its testimony period closed
and did not move to reopen the trial period. See 37 C.F.R.
§ 2.121(b)(1); TBMP § 703.01(c). Additionally, we have not
considered exhibit A to applicant’s brief for the same
reason.
Expert Qualifications and Expert Reports
Opposer objected to the expert report of Mr.
Armenteros, applicant’s proffered expert, on the ground that
it is not competent expert testimony pursuant to Fed. R.
Evid. 702, and Daubert v. Merrell Dow Pharm., Inc., 509 U.S.
579, 113 S. Ct. 2786, 125 L.Ed.2d 469 (1993). According to
Mr. Armenteros, he offered his expertise on (i) the
“advertising and selling of Cuban [cigar] brands in America”
by the U.S. cigar industry, and (ii) “consumer perception of

9 The probative value of this evidence to the issue sub judice is
extremely limited.

Opposition No. 91152248
14
… the Guantanamera brand in connection with cigars.”
(Armenteros dep. at 75 – 76; TTABVUE no. 168 at 91 – 96.)
Mr. Armenteros is the owner of ALTOC, Inc., d/b/a “A
Little Taste of Cuba,” a retail tobacconist company that
specializes in premium and luxury cigars. He has been
involved in retail cigar and tobacco sales since 1995,
working with inexperienced smokers as well as connoisseurs.
Since 2005, Mr. Armenteros has been developing Tobacconist
University, LLC (“TU”). “TU is an educational institution
dedicated to researching, learning, and teaching the history
and traditions of the premium/luxury tobacco industry while
building and projecting the industry’s credibility. TU
provides free education and information” on its website.10
(Armenteros curriculum vitae; TTABVUE no. 133 at 10.) Mr.
Armenteros also writes a blog, and regularly reads
approximately ten cigar industry magazines and reviews ten
cigar-related websites. (Armenteros dep. at 109, TTABVUE
no. 123 at 92; and appendix I and II to Armenteros written
report, TTABVUE no. 133).
With regard to his exposure to applicant’s goods, he
received one box of twenty-five GUANTANAMERA cigars in 2007,
and stated in his curriculum vitae when describing his
experience with GUANTANAMERA cigars, “I tried the cigars and

10 As of June 2009, TU had 190 certified and apprenticing
tobacconists in three countries; there is no indication how many
Opposition No. 91152248
15
do not remember it being compelling enough to buy and sell
in my stores.” (TTABVUE no. 133 at 10.) He does not sell
GUANTANAMERA cigars in his stores, does not know who buys
them, where they are sold or how many are sold. (Armenteros
dep. at 113-14, TTABVUE no. 168 at 93-94.)
Mr. Armenteros received a bachelor’s degree in
International Business and Marketing in 1995 from The
American University in Washington, D.C. (Armenteros dep. at
117, TTABVUE no. 168 at 117.) He has Cuban ancestry, has
traveled in Cuba and speaks Spanish.
Fed. R. Evid. 702 states:

If scientific, technical, or other specialized
knowledge will assist the trier of fact to
understand the evidence or to determine a fact in
issue, a witness qualified as an expert by
knowledge, skill, experience, training, or
education, may testify thereto in the form of an
opinion or otherwise, if (1) the testimony is
based upon sufficient facts or data, (2) the
testimony is the product of reliable principles
and methods, and (3) the witness has applied the
principles and methods reliably to the facts of
the case.

The court (or the Board, in this case) acts as a
“gatekeeper” and determines the admissibility of expert
testimony and the qualifications of expert witnesses,
Meister v. Med. Eng'g Corp., 267 F.3d 1123, 1127 n. 9 (D.C.
Cir. 2001) (quoting Daubert, 509 U.S. at 592 n. 10); and has
“broad discretion in determining whether to admit or exclude

of such tobacconists and apprentices are in the United States.
(Armenteros curriculum vitae; TTABVUE no. 133 at 10.)
Opposition No. 91152248
16
expert testimony.” U.S. ex rel. Miller v. Bill Harbert
Int’l Constr., Inc., 608 F.3d 871, 895 (D.C. Cir. 2010).
The trial court's gatekeeping obligation applies to all
expert testimony. Kumho Tire Co. v. Carmichael, 526 U.S.
137, 148, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999). In
Khairkhwa v. Obama, 793 F.Supp.2d 1, 10-11 (D.D.C. 2011),
the court explained:
Rule 702 does not specify any particular means for
qualifying an expert, requiring only that the
witness possess the “knowledge, skill, experience,
training, or education” necessary to “assist” the
trier of fact. Fed. R. Evid. 702. As the Supreme
Court stated in Daubert the trial court must
determine whether the proposed expert possesses “a
reliable basis in the knowledge and experience of
[the relevant] discipline.” 509 U.S. at 592, 113
S.Ct. 2786. In considering whether this standard
is met, courts may consider the factors
articulated in Daubert, such as (1) whether the
expert's technique or theory can be or has been
tested; (2) whether the technique or theory has
been subject to peer review and publication; (3)
the known or potential rate of error of the
technique or theory when applied; (4) the
existence and maintenance of standards and
controls; and (5) whether the technique or theory
has been generally accepted in the scientific
community. Id.

The Supreme Court has, however, noted that the
Daubert factors are not exclusive and may not
apply in all cases. Kumho Tire Co., 526 U.S. at
150-51, 119 S.Ct. 1167 (noting that Rule 702
envisions a “flexible” inquiry). In cases in
which the Daubert factors do not apply,
“reliability concerns may focus on personal
knowledge or experience.” Groobert v. President &
Dirs. of Georgetown Coll., 219 F.Supp.2d 1, 6
(D.D.C. 2002) (citing Kumho Tire Co., 526 U.S. at
149, 119 S.Ct. 1167). …

There is, however, no requirement that an expert
possess formal education, and an expert may be
Opposition No. 91152248
17
qualified on the basis of his or her practical
experience. See, e.g., Thomas v. Newton Int'l
Enters., 42 F.3d 1266, 1269–70 (9th Cir. 1994)
(concluding that a longshoreman with twenty-nine
years of experience in various positions within
the industry was qualified to testify as an expert
about proper safety procedures). As noted in the
advisory committee notes to Rule 702, “[i]f the
witness is relying solely or primarily on
experience, then the witness must explain how that
experience leads to the conclusion reached, why
that experience is a sufficient basis for the
opinion, and how that experience is reliably
applied to the facts.”

Expert testimony that is based upon “subjective belief” or
“unsupported speculation” is excluded. Harris v. Koenig, __
F.Supp.2d __, 2011 WL 2531257, at *1, (D.D.C. June 27, 2011)
(quoting Ambrosini v. Labarraque, 101 F.3d 129, 135–36
(D.C. Cir. 1996)). The court must focus its analysis on the
reliability and relevance of the proffered expert testimony.
Id. at 133.
We first consider whether Mr. Armenteros qualifies as
an expert in the advertising and selling of Cuban cigar
brands, i.e., cigar brands with Cuban names or words or
references to Cuba, in the United States. We find that in
view of the many years he has owned and operated two tobacco
stores that have sold a variety of cigars over the years,
his interactions with sellers and buyers of cigars, his
regular review of cigar magazines and websites, his travels
to cigar manufacturing regions in the world, his operation
of TU and its predecessor, and his writings on his cigar-
related blog, he has sufficient expertise to testify as to
Opposition No. 91152248
18
the advertising and selling of Cuban cigar brands in the
United States. As noted above, the district court has
allowed expert testimony by witnesses based on personal
experience. See Groobert, 219 F.Supp.2d at 6 (“personal
experience is therefore a reliable basis for his expert
testimony ….”).
Because we have found that Mr. Armenteros is qualified
as an expert on the advertising and selling of Cuban cigar
brands in the United States, we turn to his expert report
and opposer’s objections thereto. Specifically, we consider
whether his testimony set forth in his expert report is
reliable. “[E]xpert testimony [is] unreliable when an
expert chooses to utilize her own unique methodology rather
than the proper analysis which is well-known and respected.”
Groobert, 219 F.Supp.2d at 8, citing Kumho Tire Co., 526
U.S. at 157, Meister, 267 F.3d at 1131, and Raynor v. Merrel
Pharm. Inc., 104 F.3d 1371, 1375-76 (D.C. Cir. 1977). The
testimony should not be based on speculation. U.S. v.
Simmons, 431 F.Supp.2d 38, 75 (D.D.C. 2006).
Mr. Armenteros reached the following conclusions at pp.
5 – 6 in his report (TTABVUE no. 133 at 6 – 7):11

11 Mr. Armenteros’s report was submitted to the district court in
connection with the cross motions for summary judgment in that
proceeding, which resulted in the remand to this Board. The
district court did not opine on the qualifications of Mr.
Armenteros as an expert, on the admissibility of his report or on
the evident lack of methodology in reaching his conclusions.
Opposition No. 91152248
19
I do not believe that the word Guantanamera is
generally believed to be a reference to a geographic
location. Rather, I believe that the primary
significance of the word “Guantanamera” among U.S.
cigar consumers is that “Guantanamera” is a famous song
of Cuban origin. Those that do relate Guantanamera to
Cuba perceive it as a cultural reference. With regard
to those people that may relate the word Guantanamera
to Guantanamo, Cuba, there is no perceived or
significant historical connection between cigars and
Guantanamo or Guantanamera. Today’s consumers are used
to the use of Spanish words in cigar marketing and do
not associate such use as indicating the geographic
source of the products as originating from Cuba.
Rather, they understand that premium cigars have
evolved from Cuba and it is common to reference Spanish
language and Cuban culture. Hence, any use of the word
Guantanamera would not lead consumers to believe that
the cigars come from Guantanamo or Cuba. Even if a
person did believe that the Plaintiff’s Guantanamera
cigars came from Guantanamo, Cuba, this would not be a
material factor in their decision to purchase the
cigars.12

We do not discern any methodology applied by Mr. Armenteros
in arriving at his conclusions, and applicant has not
indicated one. Mr. Armenteros testified that he did not
undertake any studies or focus groups in arriving at his
conclusions. (Armenteros dep. at 116, TTABVUE no. 168 at
95.) The following is telling as to how he arrived at his
conclusions:
Q. Did you rely on any written materials for the
statement in here that educated consumers are
driving much of the innovation in the marketplace?

12 Many of Mr. Armenteros’s opinions in the quoted paragraph are
contrary to the findings of the district court; those findings
cannot be revisited because the district court’s findings are
binding on us on remand. We include Mr. Armenteros’s opinions
herein to explain why he reached his conclusion that the
geographic location referenced in the mark is not material to the
purchaser.

Opposition No. 91152248
20

A. No. An educated perception.

Q. That you have an educated perception?

A. I do.

(Armenteros dep. at 144; TTABVUE no. 168 at 101.) Even
assuming that conversations with customers and other
tobacconists over an unspecified time period constitute a
“technique” under Daubert, opposer correctly notes at p. 14
of its brief that there is no evidence to show that there
are any standards which he applied to his technique or that
the technique is generally accepted by the marketing or
advertising community. Thus, to the extent that Mr.
Armenteros’s report concerns the “advertising and selling of
Cuban [cigar] brands in America,” opposer’s objection is
sustained; there is nothing in the report or his testimony
to demonstrate that the report is reliable.
We turn now to the question of whether Mr. Armenteros
is qualified to provide expert testimony on consumer
perceptions of the GUANTANAMERA brand in connection with
cigars. Mr. Armenteros acknowledged in his deposition that
he is not an expert on applicant’s GUANTANAMERA cigars in
the United States. (Armenteros dep. at 144; TTABVUE no. 168
at 144.) He testified that his only exposure to applicant’s
cigars was from one box of twenty-five samples that he
received from applicant in 2007, which he did not sell, but
rather gave away. (Armenteros dep. at 116–17; TTABVUE no.
Opposition No. 91152248
21
168 at 95-96.) He also stated that he does not know (i) who
buys such cigars, (ii) the income, education or
sophistication level of the typical consumer of such cigars;
(iii) how the profile of his consumers compares to that of a
GUANTANAMERA cigar consumer; (iv) how the GUANTANAMERA
consumer profile compares to that of other premium cigar
consumers; (v) where GUANTANAMERA cigars are sold; (vi) how
many are sold; (vii) the percentage that are sold by retail
stores, internet or mail order; (viii) its sales ranking
among cigar brands; or (ix) when they were first sold.
(Armenteros dep. at 113–114, 119, 123 and 144-145; TTABVUE
no. 168 at 92-93, 97, 98 and 101-102.) He clearly is not
qualified as an expert on the GUANTANAMERA brand of cigar
through direct knowledge or contact with the brand.
However, we do not require an expert witness to have direct
knowledge or expertise of a particular brand in order
provide expert testimony related to the brand. To require
such knowledge or expertise would be far too onerous on a
party in a Board proceeding, especially a party that does
not have a product that is widely sold or known to a wide
segment of the population. In many cases, a party would not
be able to locate such an expert. Rather, as an extension
of his qualification to provide expert testimony on the
advertising and selling of Cuban cigar brands in the United
States by the U.S. cigar industry, we find that Mr.
Opposition No. 91152248
22
Armenteros is qualified to provide expert testimony on the
likely perception of cigar consumers of the GUANTANAMERA
brand. The problem, of course, is the lack of methodology
reflected in his written report. Thus, we sustain opposer’s
objection to Mr. Armenteros’s written report to the extent
that it concerns consumer perceptions of the GUANTANAMERA
brand in connection with cigars.
We have considered Mr. Armenteros’s non-opinion
deposition testimony, including his statements at p. 157 of
his deposition (TTABVUE no. 123 at 107) regarding attempts
by cigar manufacturers to associate their products with
Cuba, and discuss his testimony later in this opinion.
With regard to opposer’s expert, Mr. Ossip, and his two
expert reports, because applicant has not raised any
objection to Mr. Ossip’s qualifications and reports, we find
Mr. Ossip qualified to provide expert testimony on the
subjects on which he has testified, both in his deposition
and in his reports.
Analysis
We now turn to the question on remand, namely, whether
a significant portion of the relevant consumers would be
materially influenced in the decision to purchase the cigars
by the geographic meaning of the mark.13 We begin, of

13 Regarding materiality in purchasing decisions, opposer’s
expert, Mr. Ossip, explained:

Opposition No. 91152248
23
course, with the Federal Circuit’s decision in Spirits which
led to this remand, where the Federal Circuit reversed the
Board's finding that MOSKOVSKAYA, translated as “from
Moscow,” was geographically deceptively misdescriptive of
vodka. The Board found that Moscow was noted for vodka, and
that Russian speakers who would translate the mark as “from
Moscow” would be deceived into believing that the vodka came
from Moscow. The Court stated, “in order to establish a
prima facie case of materiality there must be some
indication that a substantial portion of the relevant
consumers would be materially influenced in the decision to
purchase the product or service by the geographic meaning of
the mark.” Spirits, 90 USPQ2d at 1495. The Court noted in
reversing the Board’s decision that the Board failed to
consider whether Russian speakers were a “substantial
portion of the intended audience.” In this regard, the
Court commented:
We express no opinion on the ultimate question of
whether a substantial portion of the intended
audience would be materially deceived. We note

In marketing terminology “materially influenced” could
logically and operationally be defined as a reason
that is important enough to have had an effect in the
choice of purchasing the brand (that is, the mark) as
opposed to purchasing any other brand. To be material
the reason (such as mistaken goods-place association)
need not have been the sole motivator for the purchase
or even the most important one. However, it would
have played a role in the consumer’s reasoning that
led to the purchase of that brand versus any other.
(Ossip supplemental expert report at 9; TTABVUE no.
145 at 10.)

Opposition No. 91152248
24
that only 0.25% of the U.S. population speaks
Russian. … If only one quarter of one percent of
the relevant consumers was deceived, this would
not be, by any measure, a substantial portion.
However, it may be that Russian speakers are a
greater percentage of the vodka-consuming public;
that some number of non-Russian speakers would
understand the mark to suggest that the vodka came
from Moscow; and that these groups would together
be a substantial portion of the intended audience.

Because the mark in issue in this case is a Spanish term, we
must consider in connection with the question of
materiality, at a minimum, whether Spanish speakers in the
United States are a substantial portion of the intended
audience (or purchasers) for applicant’s goods, and, if so,
whether they would be materially influenced in the decision
to purchase applicant’s goods by the geographic meaning of
the mark. Accord In re Jonathan Drew, 97 USPQ2d 1640, 1646
n.14 (TTAB 2011) (“we read Spirits as requiring a showing
that a substantial portion of the relevant universe of
consumers (however that universe is defined), would
recognize the meaning of a foreign language term as denoting
a geographic place.”) As part of this determination, we
also consider the nature and type of evidence that is
acceptable to establish materiality.

Are persons who speak Spanish a substantial portion of
the intended audience?

The record includes data from the 2007 U.S. census
showing that almost 35 million people in the United States
Opposition No. 91152248
25
over age five (12.3% of the population of the United States)
speak Spanish at home; and that in Florida, 3.3 million
people (19.3 percent of Florida’s population) speak Spanish
at home. (Opposer’s supplemental notice of reliance, exhs.
8 and 9; TTABVUE no. 124 at 86-112.) Tens of millions more
people in the United States have received Spanish language
instruction in school. See, e.g., federally-funded studies
in 1997, 2000 and 2008, showing over five million public
school students studying Spanish in 2000 and in 2008, and
70% of students studying a foreign language were taking
Spanish. (Opposer’s supplemental notice of reliance, exhs.
10 and 11; TTABVUE no. 124 at 113-154.) Opposer hence has
established that (i) persons who speak Spanish at home, and
(ii) persons who do not speak Spanish at home but who know
Spanish, are a substantial portion of the U.S. population.
The record also reflects that all of applicant’s
advertisements prior to 2008 were in Spanish; and at least
as of December 2006, applicant’s website was almost
exclusively in Spanish and many of applicant’s customers are
from Cuba (and presumably know Spanish, since that is the
primary language of Cuba). (Montagne dep. at 65, 69, 76,
90, 103 and 104, TTABVUE no. 75 at 19, 20, 22, 56-27 and 29;
Montagne exhs. 1, 5 and 6, TTABVUE no. 125 at 10, 33, and
39-77.)
Opposition No. 91152248
26
In view of the foregoing, and because applicant’s goods
are directed to the general adult population, we may infer
that Spanish-speaking adults purchase cigars generally and
applicant’s cigars in particular. Therefore, we find that
persons who speak or know Spanish are a substantial portion
of the intended audience (or purchasers) of applicant’s
goods.
Must opposer rely only on direct evidence on the
question of materiality?

Applicant argues that opposer may only rely on direct
evidence of materiality. Brief at 3. As acceptable direct
evidence, applicant proposes (a) a survey of the cigar
consuming public on the question of materiality; and/or (b)
direct testimony from cigar retailers or cigar consumers,
including applicant’s customers. Brief at 5 - 7. According
to applicant, an inference of deception is not enough to
establish deceptiveness. Brief at 12 (“… if there is an
inference of deception based on the likelihood of a
goods/place association (or a claim that Cuba is famous for
cigars), a mere inference is not enough to establish the
deceptiveness and consequence of non-registrability.”)
In Spirits, the Federal Circuit did not provide any
guidance on the nature of evidence needed to establish
materiality, and the district court did not comment on what
evidence it considers appropriate for our consideration.
Thus, in assessing the merits of applicant’s argument, we
Opposition No. 91152248
27
consider (i) what evidence the Federal Circuit has allowed
in ex parte cases on the question of materiality, (ii) what
evidence other courts have allowed in infringement cases,
and (iii) the merits of requiring direct evidence.
In In re Les Halles de Paris, J.V., 334 F.3d 1371, 67
USPQ2d 1539, 1542 (Fed. Cir. 2003), the Federal Circuit
allowed that for goods, the Office may inferentially
establish materiality. Additionally, in Spirits, the
Federal Circuit “did not say or suggest that the evidence
must show that a substantial portion of the relevant public
would actually be deceived, or that indirect evidence of
consumer perception of the mark … would not be sufficient.”
Jonathan Drew, 96 USPQ2d at 1645. Thus, at least in the ex
parte context, indirect evidence is permitted, and
materiality may be established by inference.
The Board too has allowed inferences of materiality in
ex parte cases. In Jonathan Drew, the Board did not require
direct evidence of materiality and stated as follows in
discussing the examining attorney’s evidentiary burden in
light of Spirits and California Innovations;
[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-
Opposition No. 91152248
28
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, [In re Bayer
Aktiengesellschaft, 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.

Jonathan Drew, 97 USPQ2d at 1645.
At least one federal court has also accepted indirect
evidence of materiality involving a Section 2(e)(3) claim.
In Daesang Corp. v. Rhee Bros. Inc., 77 USPQ2d 1753, 1763
(D. Md. 2005), the Maryland district court considered the
trademark SOON CHANG for a popular Korean hot bean paste
product known as “gochujang.” Soon Chang is a geographical
region in Korea. In finding for the plaintiff on the
question of materiality, the court relied on the admission
of defendant’s principal, expert testimony, and the
defendant’s advertisements and packaging referencing the
geographic location.
As for applicant’s contention regarding conducting a
survey for actual evidence of materiality, including an on-
line survey, the Board does not require surveys to establish
Opposition No. 91152248
29
facts in any Board proceeding.14 Although surveys may be
helpful in certain instances, they are not required of
litigants at the Board given the limited nature of our
jurisdiction. Schering-Plough HealthCare Prods., Inc. v.
Ing-Jing Huang, 84 USPQ2d 1323, 1328 (TTAB 2007) (“… the
Board does not require surveys in Board proceedings.”).
Applicant also argues that opposer could have deposed
or questioned some of applicant’s actual purchasers to
determine whether the geographic significance of the mark
was a material factor in their decision to purchase
applicant’s cigars. The purchasing decisions of applicant’s
actual purchasers are not critical in determining the issue
of materiality. What is important is the materiality of the
misrepresentation in the mark to the intended group of cigar
purchasers in this case, which, as we noted supra, contains
a substantial proportion of Spanish speakers. Additionally,

14 The Federal Circuit recognized in “ex parte prosecution … the
PTO has limited facilities for acquiring evidence — it cannot,
for example, be expected to conduct a survey of the marketplace
or obtain consumer affidavits ….” In re Budge Mfg., Inc., 857
F.2d 773, 8 USPQ2d 1259, 1260-61 (Fed. Cir. 1988). In In re
Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir.
1985), an ex parte appeal involving a Section 2(e)(3) refusal,
the Federal Circuit stated that the USPTO, as part of its prima
facie case, “does not have means” to undertake the research, such
as a marketing survey, necessary to prove that the public would
actually make the goods/place association asserted; and required
the USPTO only to establish “a reasonable predicate for its
conclusion that the public would be likely to make the particular
goods/place association on which it relies,” and not that the
public would actually make the asserted association. Id. at 868.
Applicant has pointed to no authority that indicates surveys, not
being necessary in ex parte consideration of Section 2(e)(3),
would be necessary in inter partes cases.
Opposition No. 91152248
30
Mr. Ossip noted the following difficulties in obtaining
testimony from actual purchasers:
[I]t is difficult to locate and question buyers
very close to the time they made their initial
purchase (and perhaps before they discover the
geographic misdescription and would be loath to
admitting they were fooled.) Even if some buyers
were found, a serious question arises as to
whether the sample of buyers who were questioned
would enable one to extrapolate results to the
larger population of the brands’ buyers.

(Ossip supplemental expert report at 10; TTABVUE no. 145 at
11.) We point out too that if a product has insubstantial
sales and hence few actual purchasers, the burden on a
plaintiff to locate actual purchasers who recall their
reasons for making a purchase is too great.
At this point in our decision, we pause to comment on
one point raised by the district court in the present case
which may be construed as changing the evidentiary standard
in any case involving a Section 2(e)(3) refusal at the
Board. The district court stated, Spirits “plainly demands
more than a finding of Cuba's reputation for high quality
cigars. In Spirits, Moscow's renown[ed] reputation for
vodka was not enough to affirm the TTAB's legal conclusion;
likewise, Cuba's renown[ed] reputation for cigars is not
enough in this case.” Guantanamera, 98 USPQ2d at 1083. In
Spirits, the Federal Circuit stated:
The problem with the Board's decision is that it
elsewhere rejected a requirement of
proportionality, and discussed instead the fact
that Russian is a “common, modern language[] of
Opposition No. 91152248
31
the world [that] will be spoken or understood by
an appreciable number of U.S. consumers for the
product or service at issue,” such number being in
this case 706,000 people, according to the 2000
Census. … The Board, however, failed to consider
whether Russian speakers were a “substantial
portion of the intended audience.” Because the
Board applied an incorrect test, a remand is
required.

90 USPQ2d at 1496. The problem was with the Board’s test
regarding a foreign language mark, not with the nature or
quantity of evidence submitted to establish materiality.
Moreover, the Federal Circuit in Spirits did not disturb its
holding in California Innovations, reiterated in Les Halles
de Paris, 67 USPQ2d at 1542, that for goods, the PTO may
raise an inference in favor of materiality with evidence
that the place named in the mark is famous as a source of
the goods at issue.
In view of the foregoing, we reject applicant’s
position that direct evidence of materiality is necessary to
establish materiality. Indirect evidence may be used to
establish materiality. We therefore determine that indirect
evidence of materiality such as gazetteer entries and
website evidence, and even expert testimony, may be
submitted to establish materiality in an inter partes
proceeding.

If an opposer may rely on indirect evidence of
materiality, may opposer rely on such evidence in this
case?

Opposition No. 91152248
32
Applicant argues that if it is permissible to draw an
inference of materiality, an inference cannot be drawn in
this case because the mark pertains to Guantanamo, and there
is no evidence that Guantanamo is “famous or otherwise
known” in the United States for cigar production; and the
evidence shows that “Guantanamo is famous for a US Naval
Detention center and as it relates to the song titled
Guantanamera.” Brief at 12-13. We do not accept this
argument. First, the argument is inconsistent with the
district court’s findings that “Cuba or Guantanamo, Cuba is
the primary significance of GUANTANAMERA,” and that the
consuming public is likely to believe from the
misrepresentation in the mark that applicant’s cigars
originate from Cuba. Guantanamera, 98 at 1082. Second,
applicant’s argument ignores that we consider the issue in
the context of the goods. Corporacion Habanos, 86 USPQ2d at
1478 (“the primary meaning of the term “Guantanamera” is “of
or from Guantanamo, Cuba” or “a female from Guantanamo”; …
those consumers of cigars in the United States who speak
Spanish would know that Guantanamo is a geographic location
and recognize the meaning of “Guantanamera” as “of or from
Guantanamo, Cuba” or “a female from Guantanamo”; and … this
would be the case especially in the context of applicant's
goods.”). Third, there is no requirement that the place
identified in the mark must be “noted for” the goods for a
Opposition No. 91152248
33
mark to be determined to be primarily geographically
deceptively misdescriptive. See In re Nantucket, Inc., 677
F.2d 95, 213 USPQ 889, 898 (CCPA 1982) (Nies, J. concurring:
“Neither this case nor any other cited by appellant provides
authority for the principle that a place must be ‘noted for’
goods before use of its name as a mark will be held
‘primarily geographically deceptively misdescriptive.’”).
It is sufficient if the geographic connotation of the mark
has significance for the goods, such that purchasers would
expect the goods to have their origin in the identified
locality. See In re Jack's Hi-Grade Foods, Inc., 226 USPQ
1028 (TTAB 1985), regarding the mark NEOPOLITAN for sausage
made in the United States, where the Board stated:
While there is no question but that sausage is not
listed in the Gazeteer reference as one of the
specific products which emanates from Naples,
Italy, we see nothing … which require[s], as
applicant contends, that a showing be made that
the particular geographical area (Naples) is well
known or noted for producing processed meat
products and particularly sausage. On the
contrary, the concurring opinion of Judge Nies in
the case of In re Nantucket, [677 F.2d 95, 213
USPQ 889, 896-898 (CCPA 1982)] specifically
rejected the “noted for” test. In the present
case, evidence has been made of record which shows
that “NEAPOLITAN” means pertaining to Naples,
Italy; that Naples is a large city and seaport in
Italy which serves as a major industrial and
commercial center and which has a large food
industry and that the specimen labels reinforce
the “Italian connection” by virtue of the product
is being described as Italian sausage as well as
by a depiction of a simulated Italian flag
immediately next to the word “NEAPOLITAN” on said
specimen labels. It is our opinion that this
evidence is sufficient to make out a prima facie
Opposition No. 91152248
34
showing that purchasers of applicant's sausage
would expect the goods to have their origin in the
geographical locality named in the mark, that is,
Naples, Italy.

Thus, because of the additional findings by the
district court that (i) Cuba is well-known for cigars, and
(ii) cigar tobacco is produced in Guantanamo, Cuba,
Guantanamera Cigar, 98 at 1082, we need not require evidence
that Guantanamo itself is famous or otherwise known in the
United States for cigars or cigar tobacco.
Is the misrepresentation in the mark a material factor
in a purchaser’s decision to purchase the goods?

The district court’s findings included that the record
“contains ample evidence that cigar tobacco is produced in
the Guantanamo province” and that “Cuba is well-known for
cigars.” Guantanamera, 98 USPQ2d at 1082-83. However, the
district court stated that Spirits “plainly demands more
than a finding of Cuba's reputation for high quality cigars.
In Spirits, Moscow's reputation for vodka was not enough to
affirm the TTAB's legal conclusion; likewise, Cuba's
renown[ed] reputation for cigars is not enough in this
case.” Guantanamera, 98 USPQ2d at 1083.
We turn next to the evidence submitted by the parties
bearing on this issue, beginning with the advertisements for
cigars in the record which make reference to Cuba or Cubans.
We regard the advertisements as the best evidence of
materiality in the record because they reflect those
Opposition No. 91152248
35
features or elements of cigars that cigar merchants
emphasize, or those associations they want consumers to
make, in order to sell their cigars. See, e.g.:
“La Aroma de Cuba – A taste from another time.”
(TTABVUE no. 136 at 4);

“The Soul of a Cuban in a Dominican Cigar. La
Gloria Cubana.” (TTABVUE no. 138 at 11);

“We deliver only the finest, handmade complex
cigars with the flavor of the Cuban heritage out
of which the recipe was born. … When Padron is on
the label, it’s a matter of family honor.”
(TTABVUE no. 136 at 15);

“No cigar, not even a Cuban, has ever been rated
higher.” [Onyx Reserve advertisement] (TTABVUE
no. 136 at 17);

“C.A.O. Cigars … The Cigar That’s Outscoring The
Cubans.” (TTABVUE no. 136 at 20);

“In the golden age of Cuban cigars, Ramon
Cifuentes and his father made Partagas the
greatest of them all. … Everything they know
about cigar making – growing the tobaccos,
harvesting and selecting the leaves, curing them,
aging them and then magically turning them into
great cigars one by one by hand – they learned
from Ramon. Just as he learned it all from his
father long ago in Cuba.” (TTABVUE no. 137 at
11);

“Cameroon: the Partagas difference. … So make
your next cigar a Partagas. And let the richest
of Cameroon wrappers and the richest of Cuban
traditions be yours.” (TTABVUE no. 138 at 3);

“When a cigar can make you forget about Havana.
That’s One-Upmanship.” (TTABVUE no. 138 at 6);

“Cabanas® are now made with the extraordinary new
Habana 2000TM Tobacco. (As if almost three
centuries of Cuban heritage weren’t enough.)”
(TTABVUE no. 138 at 8);

Opposition No. 91152248
36
“A lustrous Indonesian Vorstenlanden wrapper is
artfully combined with the finest long-leaf filler
tobaccos from the Dominican Republic, Brazil and
Mexico. A smooth and robust cigar made in the
classic, time-honored Cuban tradition. There
hasn’t been a cigar like this since 1959.”
[advertising Habano Primero] (TTABVUE no. 138 at
15);

“Capture the Spirit of Havana One Cigar at a
Time.” [Xikar HC Series Cigars] (TTABVUE no. 139
at 3); and

“You no longer need to sacrifice flavor for
strength. The Savinelli Rico y Raro – Series Y
cigar delivers both in one outstanding blend of
Cuban seed, Nicaraguan grown long leaf filler and
binder with a luscious Ecuadorian Habano wrapper.”
(TTABVUE no. 139 at 14.)

The advertisements suggest that Cuban cigar products
are the standard against which certain merchants of non-
Cuban cigars compare their products, and that these
merchants seek to associate their products with Cuba in
order to sell their products. Mr. Armenteros, applicant’s
expert, agreed that those in the U.S. cigar industry try to
connect their product with Cuba in some way because they
think it will enhance the potential of their product in the
market if consumers believe there is some association
between their product and Cuba.15 (Armenteros dep. at 157;
TTABVUE no. 123 at 107.) He also noted that “Cuba is the
birth place of cigars and any association with that adds

15 As indicated earlier in our opinion, we did not consider the
testimony of Mr. Armenteros as an expert, but we do consider his
testimony on this subject on which he has knowledge, just as we
would any other witness with relevant knowledge.
Opposition No. 91152248
37
some sort of value.” (Armenteros dep. at 175; TTABVUE no.
123 at 109.)
We next consider Mr. Armenteros’s blog entries at
tobacconistuniversity.org/blog that refer to the
quality of Cuban cigars and comment on the value that
an association with Cuba has for cigars:
● As retail Tobacconists we see first-hand the
amazing level of Romanticism in our consumers[’]
hearts and minds. People ask us every day, “Do
you have Cubans?”, “Do you have Cohiba?” and when
you ask them what their favorite cigar is, they
often tell you it is a Cuban. Often, mentioning a
Cuban as your favorite cigar can be a
psychological/egotistical badge of honor.

***

These issues are convoluted by the U.S. trade
embargo on Cuba and the unparalleled brand equity
of “Cuban” cigars; there is no other luxury
product in the world whose terroir is so revered,
not even Bordeaux wines (Armenteros dep. exh. 15,
TTABVUE no. 123 at 146-47);

● “Cuban seed myth, Cuban seed equals quality.”
(April 2008 posting) (Armenteros dep. exh. 17,
TTABVUE no. 123 at 155);

● defining “Havana-Obsessed Consumers”:

Since Cuba is the “birthplace” of cigar
tobacco, many consumers assume and continue
to believe that Cuban cigars are the best in
the world. While this sentiment has changed
dramatically since the 1990s, there are still
many cigar smokers around the world that
believe in Cuban cigar supremacy. This
bias/focus is further exasperated [sic] in
the U.S. because Cuban products are not

easily available to consumers, so they base
their assumptions on romance and mythology.
Opposition No. 91152248
38
(Armenteros dep. exh. 20; TTABVUE no. 123 at
158.)

Applicant maintains that Mr. Armenteros’s postings and
related testimony demonstrates that cigar manufacturers and
merchants feature Cuban tobacco and Cuban connections to
identify their heritage (as Cuban exiles) or to otherwise
honor cigar making history. Brief at 2. Mr. Armenteros
discusses this point at pp. 3–4 of his expert report
(TTABVUE no. 133 at 4-5) (emphasis added):
One of the major marketing trends to result from
the emergence of the industry outside of Cuba has
been the referencing and evocation of Cuba in
cigar marketing. After all, Cuba is the
“birthplace” of premium cigars and most, if not
all, contemporary cigar seed varietals have
evolved from Cuban varietals. This fact led to a
very common marketing technique, which was the
positioning and articulation of “Cuban Seed” on
cigar boxes and brands. The term “Cuban Seed” has
become less prevalent over the last decade [or] so
as other references evocative of Cuba have become
more common. Since the 1960s it has been a common
technique to promote a Cuban connection with non-
Cuban brands. Common references to Cuba, by non-
Cuban brands, in cigar marketing include: Cuban
Seed …, Made by Cubans … Habanos … Hecho A Mano,
Cuban Made, and the use of the Cuban map …, among
others. In addition, it is common for cigar
brands and retail tobacconists to use Spanish
words and references to Cuba when branding and
marketing their products. In many ways, this is
done to honor and evoke the traditions and
techniques pioneered by the Cuban cigar industry.

Even if cigar merchants feature Cuban tobacco and Cuban
connections to identify their heritage (as Cuban exiles) or
to otherwise honor cigar-making history, ultimately they are
promoting their goods to make a sale, and consequently are
Opposition No. 91152248
39
highlighting characteristics of their cigars which will
assist them in selling their cigars. The Cuban references
in the branding and marketing of their products are not
simply for informational purposes or for reasons of pride.
We now consider the webpages from Cuban Crafters, the
exclusive manufacturer and distributor of one of applicant’s
GUANTANAMERA cigar products, which sells non-Cuban cigars
primarily via its website, and the testimony of Mr. Berger,
the owner of Cuban Crafters. One of Cuban Crafter’s
webpages states, “Buy Cuban Cigars Online at Cuban Crafters
Online Store,” followed immediately by “Cuban Cigars and
cigar accessories at Cuban Crafters. Buy typical Cuban
cigars online where they are U.S.A. legal ….” The Cuban
flag also appears on the webpage. (Berger dep. at 3 - 4,
19, and 50-51, TTABVUE no. 123 at 5-6, 10 and 18-19; Berger
dep. exh. 10, TTABVUE no. 123 at 33-34; Ossip supplemental
report at 5 and at exh. A, TTABVUE no. 145 at 6 and 16.)
Cuba is repeatedly emphasized on the webpages, despite the
fact that the cigars offered are not Cuban in origin.
Further, Mr. Berger testified, “people tell me that they
purchased cigars, Cuban cigars, Guantanamera … and other
names, Cohiba, that they purchased them through the
Internet, and they’ve asked us why don’t we carry them.”16

16 This testimony is considered not for its truth, but for what
Mr. Berger recalls his consumers have asked him. As such, it
does not run afoul of the prohibition on hearsay testimony.
Opposition No. 91152248
40
(Berger dep. at 41; TTABVUE no. 123 at 17.) Regarding Cuban
cigars, he also acknowledged;
I don’t know if they’re better, but there is an
old saying, create fame and you can fall asleep.
In other words, fame itself leads you on. All
over the world people always have the fame of the
Cuban rum and the Cuban cigar.

(Berger at 40; TTABVUE no. 145 at 16.) This evidence
further suggests that a branding association with Cuba
indeed does “give some sort of value,” as Mr. Armenteros
stated at p. 175 of his deposition. (TTABVUE no. 123 at
175.)
The record also contains articles from various
magazines, cigar publications and cigar encyclopedias which
reflect that the cigar consumer values Cuban tobacco and
cigars. We agree with opposer that the following excerpts
from articles submitted with Mr. Ossip’s supplemental expert
report (TTABVUE no. 145) “powerfully reinforce the
admissions of GCC’s [applicant’s] own witnesses that U.S.
cigar consumers desire and purchase cigars based on their
often mistaken belief that the cigars are of Cuban origin”
(opposer’s brief at 6):
● The “Ultimate Counterfeit Cuban Cigar Primer,” by
Steve Saka, March 22, 2002 (taken from
cigarnexus.com/counsel/counterfeit):

“Cuban cigars are regarded as one of life’s most
indulgent luxuries. … They are highly sought after
by both the aficionado and the novice …. Probably
the biggest factor working in the
counterfeiter[’s] favor is consumer ignorance. …
This lack of education has helped many
Opposition No. 91152248
41
unscrupulous lowlifes prey on our lack of
knowledge as the means to lining their pockets
with our hard-earned money.” (TTABVUE no. 145 at
25-26.)

● “Cuban Cigars JFK Loved May End ‘Forbidden Fruit’ Status
in U.S.,” by Mark Drajem - June 17, 2009 (taken from
bloomberg.com):

Cuban cigars … hold cachet in popular culture that
dates back to the island’s days as playground for
gamblers, novelists and mobsters. …

“A Cuban embodies so much more than smoke,” said
James Suckling, who has written articles on Cuba
for Cigar Aficionado magazine. He estimates
Americans consume about 20 million Cuban cigars a
year, enjoying them while traveling to Mexico or
the Caribbean or stowing them in luggage on the
way home. …

“Cuban cigars are legendary,” said owner Bob
Materazzi. “Anybody who is a cigar geek is
interested.” (TTABVUE no. 145 at 28-29.)

● Smoke, “Spotting Fake Cuban Cigars,” Spring 1998:

It is unfortunate that a guide like this is
necessary, but to protect the good reputation of
Cuban tobacco, we must attempt to make it
difficult for those who seek to fool us with
inferior products. …

The fake-cigar scenario is more common than ever
these days, with so many new smokers looking for
Cuban cigars. (TTABVUE no. 140 at 33-34.)

● Cigar Aficionado, “Counterfeit Cubans, South of the
Border,” May 1, 2000, (taken from cigaraficianado.com):

Two million to three million fake Cubans a year
are in the Mexican market, “and the majority
usually find their way into the United States.”
(TTABVUE no. 145 at 35.)

● Cigar Aficionado, “Florida Shuts Down Counterfeit Cigar
Ring,” Nov. 23, 2009 (taken from cigaraficionado.com):

The organization is accused of mass-producing
counterfeit Cuban cigars …. [T]he organization
Opposition No. 91152248
42
would re-label and repackage inexpensive cigars
with the expensive bands, markings and boxes
synonymous with popular Cuban cigar brands.
(TTABVUE no. 145 at 36.)

● Slate, “Arnold’s Contraband: If the Governator Doesn’t
Countenance Civil Disobedience, What’s With the Cuban
Cigars?” February 27, 2004 (taken from slate.com):

But Schwarzenegger does not reject civil
disobedience in all conceivable situations. When
something really important is at stake, the
Governator will defy the law to heed the dictates
of his conscience. … We speak here of
Schwarzenegger’s private stash of Cuban cigars.
(TTABVUE no. 145 at 37-8.)

From the advertisements, webpages, testimony, magazines
and cigar publications and encyclopedias, we find that
opposer has established that sellers of cigars in the United
States market non-Cuban cigars through branding and
marketing associations with Cuba because they believe that
consumers value associations with Cuba in making purchasing
decisions.17 Because, as we have already found, a
substantial portion of the relevant consumers speak or
understand Spanish, we find that such consumers would be
materially influenced in the decision to purchase
applicant’s cigars due to the geographic meaning of the mark
in the Spanish language. Spirits, 90 USPQ2d at 1495.
We would be remiss if we did not comment on one
additional point raised by applicant, namely, that “[c]igar

17 However, in light of the district court’s instruction on the
subject, we have not, in the remand of this case, relied on
applicant’s false claim that its goods include “Genuine Cuban
Tobacco.”
Opposition No. 91152248
43
consumers are some of the most sophisticated purchasers of
any product,” brief at 9, and hence that they “would not be
confused or deceived as to the origin of Applicant’s cigars
bearing the GUANTANAMERA trademark, nor would any possible
suggestion with Guantanamo (or even Cuba) be material to
their purchasing decisions.” While there are likely some
consumers such as Mr. Armenteros who would “not be confused
or deceived as to the origin of Applicant’s cigars bearing
the GUANTANAMERA trademark,” there is no evidence as to what
portion of potential purchasers has this level of
sophistication. Thus, applicant’s argument is not well-
taken.
Conclusion
Opposer has provided ample evidence establishing that a
significant portion of consumers of cigars would be
materially influenced in the decision to purchase cigars by
the geographic meaning of applicant’s mark. Because opposer
has established the other elements of the test for a
primarily geographically deceptively misdescriptive mark, we
sustain the opposition on the ground of Section 2(e)(3) of
the Trademark Act, 15 U.S.C. § 1052(e)(3). And, because we
have sustained the opposition on this ground, we again do
not reach opposer’s pleaded claim of fraud.