Manufactura de Tabacos (MATASA) S.A.

Trademark Trial and Appeal Board

May 12, 1999

No. 75090638 (T.T.A.B. May. 12, 1999)

Hearing: Paper No. 15
July 9, 1998 HRW
THIS DISPOSITION IS NOT CITABLE AS MAY 12, 99
PRECEDENT OF THE TTAB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Manufactura de Tabacos (MATASA) S.A.
________
Serial No. 75/090,638
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Allen M. Krass of Gifford, Krass, Groh, Sprinkle, Patmore,
Anderson & Citkowski, P. C. for applicant.
Albert J. Zervas, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Quinn, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Manufactura de Tabacos S.A. has filed an application
to register the mark PUROS DOMINICANOS for cigars.1
Registration has been finally refused on the grounds
that the mark is primarily geographically descriptive under
Section 2(e)(2)of the Trademark Act and that the mark is

1 Serial No. 75/090,638, filed April 18, 1996, based on a bona
fide intention to use the mark in commerce.
Ser No. 75/090,638
2
merely descriptive under Section 2(e)(1) of the Trademark
Act.
Applicant and the Examining Attorney have filed briefs
and an oral hearing was held.
The Examining Attorney argues that, under the doctrine
of foreign equivalents, applicant’s mark must be translated
to its English equivalent and that the primary translation
of PUROS DOMINICANOS would be “Dominican cigars.” To
support this translation, the Examining Attorney has made
of record the following definitions from Cassells Spanish
and English Dictionary:
Dominicano, -ns. a. Dominican;
puro, -ra a. pure; sheer –n.m. cigar.
As evidence that “Dominican cigars” would be the most
likely translation of applicant’s mark, rather than
treating the term PUROS as an adjective, the Examining
Attorney has made of record excerpts from Spanish grammar
rules stating that, in Spanish, adjectives agree in gender
and number with the nouns they modify; that descriptive
adjectives generally follow the noun; and that adjectives
denoting nationality always follow the noun.2 He has also
made of record several excerpts from the NEXIS database in

2 A. Jarvis et al, Como se dice...? (1994).
Ser No. 75/090,638
3
which the word “puros” is shown to have been recognized in
English publications as the Spanish term for “cigars”, and
thus would be translated as such. The following are
representative:
Cigar aficionados take note: many brands of premium,
hand-rolled “puros” may become even harder to come by as
the holidays approach. Austin American-Statesman (October
23, 1996);
But the puros, as the cigars are called in Spanish,
are not what they once were. Chicago Tribune (December 2,
1995).
With applicant’s mark being translated as “Dominican
cigars,” the Examining Attorney maintains that the mark is
both geographically descriptive of applicant’s goods, i.e.,
cigars which come from the Dominican Republic,3 and merely
descriptive, in that it describes the cigars as being made
of Dominican tobacco.
Applicant, on the other hand, argues that the mark
should not be translated in the first place, since this is
a mark which is not likely to be translated by consumers,
but rather should be preserved in the Spanish words. If it
were translated, applicant argues that the most likely
meaning that would be attached to the term PUROS would be
“pure” and thus DOMINICANOS would be viewed as a plural

3 Applicant’s address in the application is in the Dominican
Republic.
Ser No. 75/090,638
4
noun meaning “Dominican ones” or “Dominicans.” As such,
applicant argues that the mark is neither descriptive nor
geographically descriptive. Instead, applicant contends,
the mark should be given an interpretation comparable to
that given to ALL-AMERICAN in Wilco Co. v. Automatic Radio
Manufacturing Co., Inc., 151 USPQ 24 (D. Mass 1966), or to
GREAT AMERICAN in In re Jim Crockett Promotions, Inc., 5
USPQ2d 1455 (TTAB 1987), as more than a description of the
origin or other characteristics of applicant’s goods.
Applicant argues the mark should be viewed as suggestive of
the “level of pure, unadulterated high Dominican quality”
of applicant’s cigars. (Brief p. 4).
In response to applicant’s proffered translation of
the mark as “Pure Dominicans,”4 the Examining Attorney
argues that the mark remains unregisterable under Section
2(e)(1). He maintains that, even with the translation
“Pure Dominican,” the mark merely describes a feature of
applicant’s goods, i.e., that the cigars contains pure or
only Dominican tobacco. He argues that this is not a
situation similar to the Wilco case, in that “Pure

4 We agree with the Examining Attorney that applicant has
submitted no evidence that DOMINICANOS would be translated as
“Dominican ones” and thus such a translation has not been
considered.
Ser No. 75/090,638
5
Dominican” means just that and has no additional
connotation.5
It is well settled that normally no distinctions can
be made between English terms and their foreign equivalents
for purposes of registrability, and the foreign equivalent
of a merely descriptive or geographically descriptive
English term is no more registrable that the English term,
even though the foreign term may not be commonly known to
members of the general public in the United States. See In
re Atavio Inc., 25 USPQ2d 1360 (TTAB 1992); In re Geo. A.
Hormel & Co, 227 USPQ 813 (TTAB 1985); In re Jos. Schlitz
Brewing Co., 223 USPQ 45 (TTAB 1983) and the cases cited
therein. Exceptions to this rule have been made in a few
cases, where the foreign expression was one which even
those familiar with the language would not translate or
where it was unlikely that purchasers would translate the
foreign expression as it was encountered on the goods. In
re Jos. Schlitz, supra.
Here we are thoroughly convinced that the mark is one
which persons familiar with the Spanish language would
translate and also is one which purchasers of cigars,

5 While, as pointed out by applicant, the Examining Attorney has
referred to the translation as “Pure Dominican” rather than “Pure
Dominicans,” we cannot agree with applicant that this discrepancy
affects the connotation of the translation.
Ser No. 75/090,638
6
regardless of their familiarity with Spanish, would
translate. In the first place, knowledge of Spanish is
prevalent in the United States and the mark is easily
translated. Second, and even more importantly, as shown by
the NEXIS evidence submitted by the Examining Attorney, the
word “puros” is one which would be likely to be recognized
by cigar aficionados, regardless of their overall knowledge
of Spanish, as the Spanish term for “cigars.”
Contrary to applicant’s arguments, we do not find
applicant’s use of the mark PUROS DOMINICANOS, in
connection with cigars, to be in any way comparable to the
circumstances in In re Pan Tex Hotel Corp., 190 USPQ 109
(TTAB 1976). There the Board found it unlikely that
consumers of the lodging and restaurant services offered
under the mark LA POSADA would stop and translate the mark
into its English equivalent, “the inn,” when consideration
was given to the manner of use of the mark and the nature
of the services with which it was being used. Here
applicant specifically intends to use PUROS DOMINICANOS in
connection with cigars originating from the Dominican
Republic, making translation virtually inevitable. See In
re Jos. Schlitz Brewing Co, supra [argument that the mark
KUHLBRAU, as used for beer, is one which purchasers would
not be likely to translate is not persuasive].
Ser No. 75/090,638
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We also find that “Dominican cigars” would be the most
likely and reasonable translation for applicant’s mark
PUROS DOMINICANOS. The dictionary definitions, the rules
of Spanish grammar and the NEXIS evidence all point us to
this conclusion. While “Pure Dominicans” might be a
potential stab at translation for persons not familiar with
Spanish, we cannot accept this meaning as the most likely,
or appropriate, one.
Accordingly, we turn to the refusals at hand on the
basis that applicant’s mark is the foreign equivalent of
“Dominican cigars” and that it is intended for use with
cigars.
In order for registration to be refused under Section
2(e)(2) of the Trademark Act, on the ground that the mark
is primarily geographically descriptive of the goods or
services, it must be established that
(1) the mark sought to be registered is the name of
a place known generally to the public, and
(2) the public would make a goods/place
(or in this case, services/place) association,
i.e., would believe that the services originate
from this place.
See In re Societe Generale des Eaux Minerals de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re
California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).
Ser No. 75/090,638
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Where there is no question but that the geographic
significance of a term is its primary significance, and the
place named is neither obscure nor remote, a public
association of the goods (or services) with the place may
be presumed if, in fact, the goods (or services) originate
from the geographic place named in the mark. See In re
California Pizza Kitchen Inc., supra; In re Handler Fenton
Westerns, Inc. 214 USPQ 848 (TTAB 1982). Moreover, the
addition of highly descriptive or generic matter to a
geographic term does not detract from the mark’s primary
significance as being geographically descriptive. See In
re U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998); In re
Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986).
Here the term “Dominican” clearly refers to the
geographic location the Dominican Republic. Not only may
the association of cigars with this location be presumed,
but the Examining Attorney has also introduced specific
evidence that tobacco is a chief product of the Dominican
Republic.6 The addition of the generic term “cigars” does
not detract from the geographic significance of the mark.
Applicant’s mark PUROS DOMINICANOS is primarily

6 Webster’s New Geographical Dictionary (1988).
Ser No. 75/090,638
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geographically descriptive of the goods upon which it is
intended to be used.
In view of our holding under Section 2(e)(2), we find
it neither necessary nor appropriate to consider the
further refusal of applicant’s mark, when translated as
“Dominican cigars,” as merely descriptive under Section
2(e)(1). We have found the primary significance of the
mark to be one of geographic descriptiveness.
Furthermore, even if we adopt the translation
proffered by applicant, namely, “Pure Dominicans,” we
consider applicant’s mark to be primarily geographically
descriptive. While we agree with the Examining Attorney
that “Pure Dominicans” would be viewed as a description of
the ingredients of the cigars, i.e., that they are made of
pure Dominican tobacco, we find this to still be a
combination of the name of the geographic location from
which applicant’s cigars (and the tobacco from which they
are made) originate and a highly descriptive term. Cf. In
re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983)[since
tobacco and cigars are important products from the Bahia
region, purchasers of cigars bearing mark BAHIA would
believe they originated in Bahia]. The refusal under
Section 2(e)(2) stands.
Ser No. 75/090,638
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Applicant’s arguments that “pure Dominican” rises to
the level of suggestiveness are not persuasive, in the
absence of any evidence of an additional recognized
significance for the phrase. The mark cannot be equated
with the phrase “All-American.” In fact, even if the mark
indicates a “level of pure, unadulterated high Dominican
quality,” as argued by applicant, it would still be
primarily geographically descriptive of the cigars upon
which it is intended to be used.
Decision: The refusal to register under Section
2(e)(2) is affirmed.
T. J. Quinn
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board