PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

The table below presents the data as entered.

Input Field Entered
SERIAL NUMBER 77497173
LAW OFFICE ASSIGNED LAW OFFICE 111
MARK SECTION (no change)
ARGUMENT(S)

In the Office Action dated August 14, 2008, the Examining Attorney refused registration under Sections

2(a) and 2(e)(3) based on his belief that the mark PINAR DEL RIO 1941 is geographically deceptive
and primarily geographically deceptively misdescriptive of Applicant's cigars because consumers are
likely to come to the mistaken belief that Applicant's cigars come from Pinar del Rio, Cuba, a major
tobacco growing region. In response to this refusal - and in response to the Examining Attorney's

request for information relating to the origin of Applicant's goods - Applicant advises that the seeds
used to grow the tobacco that is used to manufacture Applicant's cigars are, in fact, from Pinar del Rio,
Cuba. It cannot be said that Applicant's mark is geographically deceptive or primarily geographically

deceptively misdescriptive because the mark actually identifies the place from which the goods (i.e., the

tobacco seeds) originate. For the foregoing reasons, Applicant respectfully requests that the Examining
Attorney withdraw his refusals under Sections 2(a) and 2(e)(3).

In the Office Action, the Examining Attorney also cited to prior pending Application Serial No.
77/428,932 for the mark PINAR DEL RIO, which is used on cigars, and indicated that registration of

the subject application would be refused under Section 2(d) if the prior application matured into a

registration. Applicant acknowledges that Serial No. 77/428,932 has now matured into Supplemental
Registration No. 3542236. However, Applicant notes that the mark shown in the prior registration has

only been in use since July 2008, according to the registration, whereas Applicant's mark has been in

use since June 2007. Accordingly, Applicant intends to file a petition to cancel the prior registration,
 which will make this issue moot.

Should the Examining Attorney have any questions regarding this response, or would like clarification
of any of the points raised herein, the undersigned requests that she be contacted by telephone at (407)
841-2330 or by electronic mail (blabutta@addmg.com).
SIGNATURE SECTION
RESPONSE SIGNATURE /Bridget Heffernan Labutta/
SIGNATORY'S NAME Bridget Heffernan Labutta
SIGNATORY'S POSITION Attorney for Applicant
DATE SIGNED 02/16/2009
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon Feb 16 14:05:27 EST 2009
USPTO/ROA-66.193.169.98-2
0090216140527283418-77497
TEAS STAMP 173-440e936ef308e6f98fb68
bb4a1aa9d579d5-N/A-N/A-20
090216140204131232

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77497173 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In the Office Action dated August 14, 2008, the Examining Attorney refused registration under Sections

2(a) and 2(e)(3) based on his belief that the mark PINAR DEL RIO 1941 is geographically deceptive and
primarily geographically deceptively misdescriptive of Applicant's cigars because consumers are likely to

come to the mistaken belief that Applicant's cigars come from Pinar del Rio, Cuba, a major tobacco
growing region. In response to this refusal - and in response to the Examining Attorney's request for

information relating to the origin of Applicant's goods - Applicant advises that the seeds used to grow the
tobacco that is used to manufacture Applicant's cigars are, in fact, from Pinar del Rio, Cuba. It cannot be

said that Applicant's mark is geographically deceptive or primarily geographically deceptively

misdescriptive because the mark actually identifies the place from which the goods (i.e., the tobacco
seeds) originate. For the foregoing reasons, Applicant respectfully requests that the Examining Attorney

withdraw his refusals under Sections 2(a) and 2(e)(3).

In the Office Action, the Examining Attorney also cited to prior pending Application Serial No.

77/428,932 for the mark PINAR DEL RIO, which is used on cigars, and indicated that registration of the
subject application would be refused under Section 2(d) if the prior application matured into a registration.

Applicant acknowledges that Serial No. 77/428,932 has now matured into Supplemental Registration No.
3542236. However, Applicant notes that the mark shown in the prior registration has only been in use
since July 2008, according to the registration, whereas Applicant's mark has been in use since June 2007.

Accordingly, Applicant intends to file a petition to cancel the prior registration, which will make this issue
moot.
Should the Examining Attorney have any questions regarding this response, or would like clarification of

any of the points raised herein, the undersigned requests that she be contacted by telephone at (407) 841-
2330 or by electronic mail (blabutta@addmg.com).

SIGNATURE(S)
Response Signature
Signature: /Bridget Heffernan Labutta/ Date: 02/16/2009
Signatory's Name: Bridget Heffernan Labutta
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
attorney/agent not currently associated with his/her company/firm previously represented the applicant in
this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
him/her as an associate attorney in this matter.

Serial Number: 77497173

Internet Transmission Date: Mon Feb 16 14:05:27 EST 2009
TEAS Stamp: USPTO/ROA-66.193.169.98-2009021614052728
3418-77497173-440e936ef308e6f98fb68bb4a1
aa9d579d5-N/A-N/A-20090216140204131232