Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov
ESTTA Tracking number: ESTTA317283
Filing date: 11/17/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91186534
Party Plaintiff
Corporacion Habanos, S.A., Empresa Cubana del Tabaco, dba Cubatabaco
Correspondence David B. Goldstein
Address Rabinowitz, Boudin, Standard, Krinsky, et al
111 Broadway, Suite 1102
New York, NY 10006-1901
UNITED STATES
dgoldstein@rbskl.com
Submission Opposition/Response to Motion
Filer's Name David B. Goldstein
Filer's e-mail dgoldstein@rbskl.com
Signature /David B. Goldstein/
Date 11/17/2009
Attachments HC SJ Final.pdf ( 25 pages )(73767 bytes )
DBG SJ Declaration Final.pdf ( 8 pages )(73868 bytes )
hc goldstein ex 1.PDF ( 28 pages )(2936541 bytes )
hc goldstein ex 2.PDF ( 30 pages )(1417238 bytes )
hc goldstein ex 3.PDF ( 50 pages )(10206390 bytes )
hc goldstein ex 4.PDF ( 19 pages )(10141510 bytes )
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________________
CORPORACION HABANOS, S.A., d.b.a. )
HABANOS S.A., and EMPRESA CUBANA DEL )
TABACO, d.b.a. CUBATABACO, )
)
Opposers, )
) Opposition No. 91186534
v. ) Serial No. 77273188
)
XIKAR, INC., )
)
Applicant. )
)

OPPOSERS’ BRIEF IN OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY

JUDGMENT AND IN SUPPORT OF OPPOSERS’ CROSS-MOTION FOR SUMMARY
JUDGMENT

Opposers Corporacion Habanos, S.A. (hereinafter “Habanos S.A.”) and Empresa Cubana

del Tabaco (hereinafter “Cubatabaco”) (together “Opposers”), by and through their undersigned

attorneys, hereby submit this Brief in opposition to the motion of Applicant Xikar, Inc.

(“Applicant”) for partial summary judgment. Opposers also herein cross-move the Trademark

Trial and Appeal Board (“the Board”), pursuant to 37 C.F.R. § 2.127 and Rule 56 of the Federal

Rules of Civil Procedure, to grant Opposers summary judgment on their claim under section

2(e)(3) of the Lanham Act, sustaining the Opposition and refusing registration of Application

Serial No. 77273188. In support of both their opposition and cross-motion, Opposers rely upon

the following Brief, and the Declarations and exhibits filed herewith.

Out of the universe of available names, Applicant has chosen HAVANA COLLECTION

for cigar accessories that Applicant admits “have no connection with Havana,” “the

quintessential cigar city,” in Applicant’s words. Applicant further admits it deliberately

“adopted the mark HAVANA COLLECTION” “because the word ‘Havana’ is associated with ...
Cuban cigars.” Applicant promotes its cigar accessories through false associations with Havana,

Cuba, and Cuban cigars, including affixing to them the words “CUBA,” “HABANA,” and “à la

Havane,” and claiming its goods “achieve the classic ambience of the Havana cigar.” Given this

undisputed evidence, and the undisputed evidence that cigars and cigar accessories are sold and

promoted together, including by Applicant, Opposers’ cross-motion for summary judgment

under section 2(e)(3) should be granted. Applicant’s motion for summary judgment under this

section and under section 2(d) should be denied.

STATEMENT OF UNDISPUTED MATERIAL FACTS

1. Procedural Background

On September 7, 2007, Applicant applied for the mark HAVANA COLLECTION for

“cigars” and cigar-related accessories, specifically “cigar cutters; non-electric cigar lighters not

of precious metal; humidors; and cigar carrying cases not of precious metal,” that are not from

Havana or elsewhere in Cuba, based on a claim of use in commerce of all the goods under

section 1(a) of the Lanham Act. See Application File, Serial No. 77273188.

On October 10, 2007, the PTO issued an Office Action refusing registration under section

2(a), 2(e)(3) of the Act. 15 U.S.C. § 1052(a), (e)(3). Id. The Examiner also cited Cubatabaco’s

prior pending HABANOS certification mark application for cigars, Serial No. 77157193,

pursuant to section 2(d). Id. On April 10, 2008, Applicant responded by admitting that its

“goods are not manufactured or produced in and have no connection with Havana”; admitted that

its mark is “geographically misdescriptive”; disclaimed “Collection”, but not “Havana”;

amended its goods to delete “cigars,” and retained its list of non-Cuban cigar accessories. Id.

Applicant did not argue that the Examiner had erred in refusing registration for “cigars.”

2
 The Examiner then approved the mark for registration without addressing the related

goods test as to either the section 2(a), (e)(3) refusal or the citation to section 2(d). Opposers

opposed registration of the mark on three grounds (not two, as Applicant misstates): 1) the mark

is deceptive and geographically deceptively misdescriptive under sections 2(a) and 2(e)(3) of the

Act; 2) the mark is likely to cause confusion with Opposer’s identified registered and applied for

marks; and 3) Applicant made a material misrepresentation because it was not using the mark on

all the listed goods when it filed its application. Amended Notice of Opposition ¶¶ 46-54.

On December 23, 2008, Applicant moved, pursuant to Rule 12(c), for judgment on the

pleadings. Before Opposers responded, on January 14, 2009, the Board, sua sponte, denied the

motion because it relied upon matters outside the pleadings and, therefore, was construed as a

motion for summary judgment filed prior to Applicant’s serving its Initial Disclosures, in

violation of 37 C.F.R. § 2.127(e)(1). Applicant then served its Initial Disclosures the next day,

January 15, 2009, and then, prior to any other discovery, re-filed its Rule 12(c) motion

substantially unchanged as a motion for summary judgment on January 16, 2009. Applicant

purported to move for judgment dismissing the Opposition in its entirety, but in fact made no

argument for judgment on the third ground of opposition.1 Opposers moved for discovery

pursuant to Rule 56(f), which the Board granted in part and denied in part on July 15, 2009.

The Board recently held that the mark HAVANA CLUB for non-Cuban cigars is

geographically deceptively misdescriptive, a result that Applicant does not challenge. See

Corporacion Habanos S.A. v. Anncas Inc., 88 U.S.P.Q.2d 1785 (T.T.A.B. 2008); see also

Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008)

1
Because Applicant did not move for summary judgment on the third ground, the Board denied
Opposers’ request to take discovery on that issue. Dkt No. 18, at 9. Thus, regardless of the Board’s
decision on Applicant’s motion, the Opposition cannot be dismissed in its entirety.

3
(GUANTANAMERA for non-Cuban cigars unregistrable under section 2(e)(3)).

2. Havana’s Primary Geographic Significance

Havana is well known in the United States primarily as the capital of, and the largest city

and main port in Cuba. See Anncas, 88 U.S.P.Q.2d at 1791. As Applicant has admitted, “the

primary significance of the word ‘Havana’ [i]s the name of the largest city of Cuba and a chief

port in the West Indies.” App. Mem. at 6. See Applicant’s Exs. C-1, C-3 (establishing Havana’s

well known geographic significance); Exhibit 1 to Declaration of David B. Goldstein (“Goldstein

Decl.”), filed herewith (The Columbia Gazetteer of North America (2000) (Havana is “[t]he

largest city and chief port of the West Indies, and the political, economic, and cultural center of

Cuba”; The Encyclopedia Britannica Online entry for “Havana”; English language dictionary

entries for “Havana”; excerpts of encyclopedia and geographic dictionary entries for Havana).

The Examiner likewise recognized that “[t]he primary significance of the term ‘Havana’ is

geographic.” Application File. Applicant has not submitted any contrary evidence.

3. The Goods/Place Association Between Havana, Cuba and Cigars and the Fame of
Havana Cigars

Havana, Cuba has long been famous in the United States, and throughout the world, for

its manufacture and export of high-quality cigars made from Cuban tobacco. Indeed, the

association between the city of Havana and Cuban origin cigars is so powerful and so

extraordinary that a Cuban origin cigar is commonly known in the United States and throughout

the English-speaking world as a “Havana” or “Havana cigar,” see Anncas, 88 U.S.P.Q.2d at

1791, 1793, as shown in dictionaries, encyclopedias, book titles, and descriptions in cigar books,

cigar magazines, and general media. See Goldstein Decl. Ex. 1 (English language dictionaries

and encyclopedias); id. Ex. 2 (consumer-oriented cigar books published or distributed in the

U.S., including book titles); id. Ex. 3 (cigar magazines and general media).

4
 The evidence submitted by Applicant likewise establishes that Havana, Cuba is famous

for the production of high-quality cigars. See App. Exs. C-1, C-3 (Columbia Gazetteer of North

America entry for “Havana”: “factories making the famous Havana cigars”). The Examiner also

recognized that “Havana, Cuba, is a place where cigars are produced. Furthermore, this belief

would materially influence consumers to purchase the goods because Havana is renown for the

production of cigars.” Application File. Applicant did not contest that finding, and has

submitted no evidence contradicting Opposers’ and Applicant’s evidence that Havana is famous

for the production, sale and export of 100% Cuban-origin cigars.

4. Havana Is Renowned For the Production, Sale and Export of High Quality
Humidors

Havana, Cuba is internationally renowned for the production of high-quality humidors,

one of Applicant’s identified cigar accessories. Cuban-made humidors are sold in Cuba and

exported throughout the world. Declaration of Ana Lopez Garcia (“Lopez Decl.”), ¶¶ 13-15,

Exs. 3-5. Habanos S.A. has contracted for many years with Cuban companies and organizations,

many located in Havana, to produce humidors for sale, including in official La Casa del Habano

stores throughout the world, in connection with Habanos S.A.’s Cuban-origin cigars; These

humidors are frequently sold under the same marks as the famous Cuban cigar brands, such as

COHIBA, MONTECRISTO, ROMEO Y JULIETA, PARTAGAS, and H. UPMANN. See id. ¶

13; Exs. 1, 2, 9. High quality, Cuban-made humidors are featured prominently on Opposers’

websites www.habanos.com and www.lacasadelhabano.cu. See id. ¶ 16; Ex. 5.

For the past eleven years, Habanos S.A. has hosted a world-famous, week-long annual

event, known as the Festival del Habano (Festival of the Havana cigar) in Havana, Cuba. The

Festival culminates with the auction of Cuban-made artisanal humidors, filled with Cuban cigars,

with the money raised from the auction donated to the Cuban health care system. These

5
humidors typically sell for tens and even hundreds of thousands of dollars. Lopez Decl. ¶¶ 17-

18; Ex. 7 (brochures concerning the Festival del Habano humidors); Ex. 6 (articles concerning

the Festival, including the humidors). The leading U.S. consumer cigar magazine, Cigar

Aficionado, regularly covers the annual Festival, including the annual humidor auction. Lopez

Decl. ¶ 19; Ex. 8. Applicant regularly advertises its cigar accessories in Cigar Aficionado.

Goldstein Decl. Ex. 21 (Deposition of Kurt Van Keppel (“Van Keppel Dep.”), at 118:25-

125:19); Goldstein Decl. Exs. 4,12. Applicant has submitted no evidence refuting the renown

and reputation of Cuban-made cigar humidors.

5. Opposers’ Other Cigar-Related Accessories

In addition to the sale, advertising, and coverage in U.S. cigar media of the renowned

Cuban-made humidors, Habanos S.A. also markets cigar accessories throughout the world,

including cigar cutters, lighters, and carrying cases (the same goods as Applicant), frequently

under the same brands as, and in connection with, the famous 100% Cuban-origin cigar brands.

Lopez Decl. ¶ 20; Ex. 9. These products, manufactured outside Cuba, are sold both in Cuba,

including in Havana’s famous cigar shops, and around the world in the same retail tobacconist

outlets as sell Cuban cigars, including in La Casa del Habano stores, and are advertised and

promoted in connection with Cuban cigars, including in the same publications and same

advertisements that promote and cover Cuban cigars. Id. ¶¶ 20-23, 26; Exs. 10-12. These retail

tobacconists also sell third party cigar-related accessories, such as cigar cutters, lighters, cases

and humidors alongside Cuban cigars. Id. ¶ 24.

6. Applicant’s HAVANA COLLECTION Cigar Accessories

Applicant has admitted that its “goods are not manufactured or produced in and have no

connection with Havana,” and that its mark is “geographically misdescriptive.” Application File.

6
Applicant also admits that, although its goods “have no connection with Havana,” it deliberately

“adopted the mark HAVANA COLLECTION” at least in part “because the word ‘Havana’ is

associated with ... Cuban cigars.” Goldstein Decl. Ex. 5 (Applicant’s Response to Opposers’

First Set of Interrogatories, Int. No. 1); Van Keppel Dep. at 16:22-17:18.2 Applicant’s

HAVANA COLLECTION cigar accessories, other than lighters, have no purpose or function

other than for use with cigars. Lopez Decl. ¶ 25.

Applicant promotes its HAVANA COLLECTION cigar accessories by fostering a false

association between its non-Cuban cigar accessories and Cuban cigars and Havana, Cuba in

multiple ways. The specimen submitted with Applicant’s application (and filed by Applicant on

this motion) prominently displays the designation “à la Havane.”3 See App. Ex. D; Application

File. The specimen, and all of Applicant’s cutters, include a brochure promoting HAVANA

COLLECTION cigar cutters by comparing them to “the quintessential cigar city, Havana,” and

boasting that its cutters have a “Havana signature,” referring to Havana, Cuba. Id. (emphasis

added). Application File; Van Keppel Dep. at 18:13-24:13; 160:1-23.

Applicant prominently advertises its cigar accessories in leading consumer cigar

magazines, including Cigar Aficionado, on its web site, and in retailer catalogues, affixed with

“HABANA”; “à la Havane”; and “CUBA” in prominent bold letters, and prominently displays

images of iconic Cuban cigar bands such as COHIBA and H. UPMANN (instantly recognizable

as such to the “cigar aficionados” that Applicant claims purchase its products, App. Mem. at 5;

Lopez Decl. ¶ 28); Goldstein Decl. Exs. 4, 7-10, 12-13.4

2
Applicant submitted no evidence in support of its other stated reason for selecting the mark, that
Havana “is associated with … a leisurely lifestyle.” Resp. to Int. No. 1, Goldstein Decl. Ex. 5.
3
The phrase “à la Havane” literally translates from the French as “to Havana,” and may also mean “in
Havana” as in “fabriqué à la Havane” (made in Havana). See Goldstein Decl. Ex. 6.
4
Applicant uses either reproductions of or original Cuban cigar bands and Cuban cigar box art to create
its cutters; and uses reproductions of Cuban cigar bands or cigar box art to make its lighters and cases.

7
 Applicant’s deliberate, false association of its non-Cuban goods with Havana, Cuba

include claims on its web site that its cigar accessories “achieve the classic ambience of the

Havana cigar,” referring to Cuban cigars, have a “Havana signature,” and refer to “the

quintessential cigar city, Havana,” adjacent to images of its goods prominently displaying

“Habana” “à la Havane,” and “Cuba.” Goldstein Decl. ¶ 12; Ex. 10. Applicant’s slogan in its

cigar magazine advertising for its HAVANA COLLECTION goods is “capturing the spirit of

Havana one cigar at a time.” Id. Ex. 4. Nothing in these promotions disassociates the goods from

Havana, Cuban cigars, or Opposers.

The overwhelming majority of HAVANA COLLECTION cigar accessories, more than

95%, are sold through retail cigar stores, in which both Applicant’s and third parties’ cigar

accessories are displayed and sold together with cigars, including with Applicant’s own cigar

products. Goldstein Decl. ¶ 13; Ex. 11; Van Keppel Dep. at 68:3-23, 71:21-72:5. Applicant’s

print media advertising is exclusively in cigar publications, including Cigar Aficionado and

Smokeshop. Van Keppel Dep. at 118:25-136:3; Goldstein Decl. Ex. 4, 12. These consumer and

trade cigar magazines regularly promote and cover cigar accessories together with advertising

and coverage of cigars. Lopez Decl. ¶ 27; Goldstein Decl. ¶ 14, Ex. 12. Applicant’s cigar

accessory advertisements typically display cigars, including its recently launched “HC” cigars.5

Id. Ex. 4. Applicant also promotes its cigar accessories in a semi-annual catalog sent to cigar

retailers. Van Keppel Dep. at 115:23-118:15; Goldstein Decl. Ex. 13. Many of the registrations

Applicant’s carrying cases all use the same image, which prominently displays the word “Cuba,” and
several of the eight images used for the lighters prominently display “Cuba” or “Habana.” Van Keppel
Dep. at 35:15-46:8; Goldstein Decl. Exs. 7 and 8. Although Applicant claims that each cutter is unique,
the cutter images prominently displayed on its website are affixed with “Habana” and “à la Havane.”
Goldstein Decl. Ex. 9; Van Keppel Dep. at 92:4-95:24.
5
Applicant did not sell HAVANA COLLECTION cigars, although it represented to the USPTO when it
filed its application on September 6, 2007 that it sold HAVANA COLLECTION cigars along with its
HAVANA COLLECTION cigar accessories. Application File; Van Keppel Dep. at 45:20-24, 79:23-80:1.

8
submitted by Applicant include both cigars and cigar accessories, including the same goods as

Applicant. App. Mem. at 8; App. Ex. E.

7. Opposers’ HABANO/S Marks

Opposers’ own the cited registered marks, HABANOS UNICOS DESDE 1492 and LA

CASA DEL HABANO for cigars and cigar accessories, including humidors and cigar cases.

Goldstein Decl. Ex. 14; App. Ex. F. Cubatabaco owns the prior pending certification mark

application for HABANOS, Serial No. 77157193, for “cigars,” which certifies “that the cigars

have their geographical origin in Cuba and are made from Cuban grown tobacco, ‘Cuba’

meaning the entire national territory of the Republic of Cuba.” Goldstein Decl. Ex. 15. Opposer

Habanos S.A. affixes the “HABANOS” mark to the packaging of all its Cuban-origin cigars.

Goldstein Decl. Ex. 16 (Deposition of Manual Garcia Morejon on May 15, 2007 in the matter of

Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519, at 28:11-30:14, and Ex. 3

thereto). The marks “HABANOS,” HABANOS UNICOS DESDE 1492, and LA CASA DEL

HABANO regularly appear in advertisements in U.S. cigar magazines, and on Opposers’

websites, www.habanos.com and www.lacasadelhabano.cu. Goldstein Decl. Ex. 16-17.

The term “Habano” (and its plural “Habanos”) refers to Havana cigars, that is, 100%

Cuban origin cigars, and is translated in leading dictionaries as “Havanan, Havana, of Havana,”

“Havana [cigar],” “Cuban cigar,” “belonging or related to Havana,” and a cigar produced in

Cuba with Cuban tobacco. Goldstein Decl. Ex. 18 (Larousse, Gran Diccionario English-Spanish

Spanish-English Dictionary; The American Heritage Spanish Dictionary); see id. Ex. 19 (Real

Academia Española Diccionario de la Lengua Española); see id. Ex. 16, Morejon Dep. at 19:9-

24:10. The PTO has acknowledged this translation of “Habanos” in the HABANOS certification

mark application, and elsewhere. Id. Ex. 15 (HABANOS Aug. 21, 2008 Office Action); id. Ex.

9
20 (NICARAGUA HABANOS Final Refusal).

ARGUMENT

I. STANDARDS FOR SUMMARY JUDGMENT

In a motion for summary judgment, the moving party has the burden of establishing the

absence of any genuine issues of material fact and that it is entitled to summary judgment as a

matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 321 (1986);

Nike, Inc. v. Bordes, Opp. No. 91178960, at 12 (Sept. 30, 2009). A genuine dispute with respect

to material fact exists if sufficient evidence is presented that a reasonable fact finder could decide

the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music

Show, Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992) (Board may not resolve issues of

material fact against the non-moving party; it may only ascertain whether such issues are

present). Thus, all doubts as to whether any factual issues are genuinely in dispute must be

resolved against the moving party and all inferences must be viewed in the light most favorable

to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22

U.S.P.Q.2d 1542 (Fed. Cir. 1992); Nike, Inc., supra, at 12.

Under these standards, Opposers are entitled to summary judgment on their section

2(e)(3) claim.6 Applicant’s motion for summary judgment on that claim and on Opposers’

section 2(d) claim must be denied.

II. THE MARK IS PRIMARILY GEOGRAPHICALLY DECEPTIVELY

MISDESCRIPTIVE

Applicant’s argument that, although its mark is “geographically misdescriptive,”

Application File, it is not primarily geographically deceptively misdescriptive under section

6
The Board now addresses geographic deceptiveness claims under section 2(e)(3), not 2(a), although the
standards are the same. See California Innovations, 329 F.3d at 1341; Anncas, 88 U.S.P.Q.2d at 1790.

10
2(e)(3), is not supported by any evidence; is directly belied by its own deliberate advertising

strategy that seeks to foster a false association with Havana, Cuba; presents attorney argument

masquerading as fact, which has been expressly repudiated by Applicant; makes assertions

without evidence that are plainly false; and ignores the substantive precedents of the Board and

the Federal Circuit, including the applicability of the related goods test. The evidence and law

clearly establish that Opposers, not Applicant, are entitled to summary judgment on their section

2(e)(3) claim. In the event the Board finds for Opposers on this claim, the Board need not reach

the section 2(d) claim.

Registration of a mark must be refused under section 2(e)(3) if “(1) the primary

significance of the mark is a generally known geographic location, (2) the consuming public is

likely to believe the place identified by the mark indicates the origin of the goods bearing the

mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a

material factor in the consumer’s decision.” In re California Innovations, Inc., 329 F.3d 1334,

1341 (Fed. Cir. 2003); see TMEP § 1210.01(b). Applicant has admitted that its “goods are not

manufactured or produced in and have no connection with Havana.” Application File; see also

Amended Answer ¶ 40 (admitting allegations of Amended Opp. ¶ 40 that Applicant’s “goods do

not come from, or otherwise originate in, Havana, Cuba or elsewhere in Cuba”).

Applicant also did not dispute during the application process, and does not dispute now,

that section 2(e)(3) bars its attempt to register its HAVANA COLLECTION mark for non-Cuban

cigars. See Anncas, 88 U.S.P.Q.2d 1785. Thus, Applicant is left to argue, without any evidence

in support, that somehow cigar consumers will finely parse the distinction between

geographically deceptive HAVANA COLLECTION cigars and HAVANA COLLECTION cigar

accessories (where cigars and cigar accessories are sold and promoted together, including under

11
the same marks, including by both Applicant and Opposers), an argument that defies logic,

common sense and law.

A. The Primary Significance of the Mark is Havana, Cuba, a Generally Known

Geographic Location

Applicant expressly admits, and further asks the Board “to take judicial notice of the

primary significance of the word ‘Havana’ as the name of the largest city of Cuba and a chief

port in the West Indies,” App. Mem. at 6, indisputably a generally known geographic location,

which establishes the first part of the section 2(e)(3) test.7 All the evidence and the repeated

decisions of this Board affirm Applicant’s admission. See Statement of Facts, Point 2 (citing

evidence); Anncas, 88 U.S.P.Q.2d at 1791; In re Bacardi & Co. Ltd., 1997 T.T.A.B. Lexis 169,

at *3-5 (T.T.A.B. 1997) (Bacardi II) (copy annexed); In re Boyd Gaming Corp., 57 U.S.P.Q.2d

1944, 1946 (T.T.A.B. 2000); In re Ricardo Arregui, Serial No. 74/540,041, at 3-4 (T.T.A.B.

April 26, 2001); In re BJIP, Inc., Serial No. 75/529,080, at 9-10 (T.T.A.B. July 18, 2001).

The addition of the common word “collection” does not change the mark’s primary

significance as a known geographic location, and Applicant does not argue otherwise. See

Anncas, 88 U.S.P.Q.2d at 1791 (“The word CLUB does not detract from the primary geographic

significance of the mark” HAVANA CLUB) (citing cases). In the above-cited cases, the Board

has repeatedly held that the primary significance of a composite mark using similar terms with

“HAVANA” is a generally known geographic location, such as HAVANA SELECT, HAVANA

PRIMO, HAVANA CLIPPER, HABANA CLASICO, HAVANA STYLE, and OLD HAVANA.

B. Consumers Are Likely to Make a Material Goods-Place Association

The standard for establishing a goods/place association is not a high one. See California

7
Because Applicant later appears to contradict this clear admission with a vague assertion of “the
complete lack of geographic significance of the word Havana in association with Xikar’s goods,” App.
Mem. at 9, Opposers further address the first California Innovations prong.

12
Innovations, 329 F.3d at 1338, 1340 (noting “relatively easy burden of showing a naked goods-

place association”); In re Les Halles de Paris J.V., 334 F.3d 1371, 1373-74 (Fed. Cir. 2003); In

re Loew’s Theatres, Inc., 769 F.2d 764, 766-68 (Fed. Cir. 1985); TMEP § 1210.04(a) (citing

decisions). The undisputed evidence, from both Applicant and Opposers is more than sufficient

to meet this standard, and it is doubtless “likely that the public, upon encountering [the listed]

goods bearing the mark [HAVANA COLLECTION] would believe that the goods have some

connection to [Havana].” In re Hiromichi Wada, 194 F.3d 1297, 1300 (Fed. Cir. 1999); see

Statement of Facts, Points 3-6.

This undisputed evidence shows that Havana, Cuba is well-known for the production,

sale and export not only of its world famous cigars, but for high-quality humidors, and that

Opposers promote and sell in Cuba and throughout the world cigar accessories, including cutters,

lighters, humidors, and carrying cases, frequently under the same marks as its famous Cuban

cigar brands. Applicant’s assertions, unsupported by any evidence, that Havana is not known as

a source of cigar accessories, including humidors, is not only false, but is contradicted by regular

coverage in the same magazine, Cigar Aficionado, in which Applicant regularly advertises.

This undisputed evidence also establishes that cigars and cigar-related accessories are

commonly sold in the same retail cigar establishments (including virtually all of Applicant’s

HAVANA COLLECTION cigar accessories), often under the same marks, including by

Applicant and Opposers, are advertised in the same cigar consumer and trade magazines

(including all of Applicant’s print advertising), are promoted at cigar events, such as the annual

cigar retailers convention, and have no function other than for use with cigars. In the face of

these undisputed facts, Applicant simply, and inexcusably, ignores the related goods doctrine,

which the Board and the Federal Circuit have expressly adopted for geographically deceptive

13
marks. See In re Save Venice New York, Inc., 259 F.3d 1346 (Fed. Cir. 2001):

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. …
[W]e hold that the 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…. 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.”

Id. at 1355 (emphasis added).

This is precisely what Opposers have done: “expand[ed] on the traditional [Cuban]

products [cigars], to begin marketing products [cigar accessories] related to such goods.” Id. In

the absence of any evidence to the contrary, and in light of the evidence that cigars and cigar

accessories are inextricably advertised, marketed and sold together by Opposers, by Applicant,

and by others, Applicant’s have provided “no reason to believe that the public strictly limits its

association of [Havana] to the geographic region's traditional products [cigars].” Id.; see also In

re SF Investments, Inc., Serial Nos. 78645616, 78645618, at 12 (T.T.A.B. Jan. 24, 2008)

(refusing registration of SMITHFIELD COLLECTION on grounds of geographic

descriptiveness; “Because Smithfield [, Virginia] is noted for the curing and production of ham,

consumers would naturally believe that mail order and online retail store services featuring other

related food products such as meat, seafood, and poultry [under the SMITHFIELD

COLLECTION mark] also emanate from Smithfield,” Virginia, even though they in fact do not).

Crucially, as explained in SF Investments, under the related goods doctrine, the issue is

not whether the related goods are in fact produced in the same geographic location as the primary

14
goods. Rather, marks will be refused registration as geographically deceptive when related

goods are sold in and associated with the geographic location identified in the mark, even if the

specific goods in the mark are not produced in that place, id. at 11-12, and even if the public is

aware that the goods are not actually manufactured in that location, see Fred Hayman Beverly

Hills Inc. v. Jacques Bernier Inc., 38 U.S.P.Q.2d 1691, 1694-95 (T.T.A.B. 1996). Again, the

focus is on whether consumers “would be likely to make the requisite goods/place association.”

Id. at 1695; see Save Venice, 259 F.2d at 1355 (“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”) (emphasis added); In

re Nantucket Allserve Inc., 28 USPQ2d 1144, 1145 (TTAB 1993) (product may be found to

originate from a place, even though product is manufactured elsewhere).

The related goods test is especially appropriate when the goods are complementary, that

is, when they are commonly used together. See 4 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 24:26 (4th ed. 2008), and cases cited therein. It is

difficult to imagine more complementary products than cigars and the listed cigar accessories,

which (other than lighters) are used exclusively in connection with cigars, are sold and advertised

in the same stores and publications as cigars, and the same companies sell both cigars and cigar

accessories. Given the close association between Havana and its famous cigars, it is difficult to

imagine any goods that more clearly meet the test of “derivative ‘related goods’ carrying a

distinctive geographic mark [that] would likely confuse consumers as to the source of the

‘related goods,’” Save Venice, 259 F.3d at 1355, than Havana-marked cigar accessories.

Here, Applicant does not dispute that Havana is renowned for cigars and that this renown

would be material to consumer purchases of Applicant’s HAVANA COLLECTION cigars. See

15
Anncas, 88 U.S.P.Q.2d at 1793; Guantanamera Cigars Co., 86 U.S.P.Q.2d at 1479-80. Yet,

Applicant has submitted no evidence that this false goods/place association will be material to

consumers when they purchase cigars, but not when those same consumers purchase cigar

accessories under the same mark from the same company, including in the same stores.

Applicant’s arguments that the false designation would be immaterial to consumers is

meritless. These unsupported allegations are directly contradicted by Applicant’s own

advertising, which directly fosters a false association with Havana, and Applicant’s admission

that it selected the mark because of the association of Havana with Cuban cigars.

Applicant in fact relies solely on allegations in its Answer and unsubstantiated attorney

argument regarding consumer awareness: 1) of the embargo; 2) whether Cuba is known as a

source of cigar-related accessories, and 3) of Xikar’s reputation. App. Mem. at 5-6. No

competent evidence is submitted in support of any of these claims.8 Notably, Applicant has

expressly repudiated, under oath, any factual basis for the improper attorney argument,

masquerading as fact, that consumers are “presumed to be aware of the trade embargo,” App.

Mem. at 5, or the bizarre attorney claim that consumers will associate HAVANA COLLECTION

for cigar accessories with “a certain way of living, an exultation of the spirit, a joie de vivre that

has nothing to do with cigars,” but rather with Ernest Hemingway “fishing for marlin with Fidel

Castro or drink[ing] daiquiris with his wife, Mary.” Id. at 7 (emphasis added); See Goldstein

Decl. Ex. 5 (App. Resp. to Int. Nos. 1, 6, 7: “Applicant adopted the mark ... because the word

8
Applicant’s only purported “evidence” for these assertions is Wikipedia, Ex. A, and a two-line, online
promo blurb, Ex. B, App. Mem. at 5-6, neither of which is competent evidence. See Embotelladora Aga
del Pacifico, SA de CV v. Jose Alfonso Serrano Gonzalez, Opposition No. 91175952, at 4 (T.T.A.B. Dec.
3, 2008) (Board “will not take judicial notice of evidence from Wikipedia or other sources which are
available only online”); In re IP Carrier Consulting Group, 84 U.S.P.Q.2d 1028, 1032 (T.T.A.B. 2007).
Even if considered, Ex. B proves nothing of relevance. That Exhibit B appears on the website of a person
that Habanos S.A. has used as an expert on an unrelated topic in a different proceeding does not alter the
relevance or admissibility of the two-line post.

16
‘Havana’ is associated with ... Cuban cigars”; “Applicant does not know any particulars

regarding Applicant’s customer’s knowledge of the Cuban embargo.”9 “Applicant has no direct

knowledge concerning [the above-quoted statements from App. Mem. 7], which are taken from

an argument advanced by Applicant’s counsel”). How Applicant’s attorneys can claim that

Applicant’s use of “Havana” “has nothing to do with cigars,” when Applicant advertises that its

goods “achieve the classic ambience of the Havana cigar,” Goldstein Decl. Ex. 10 (emphasis

added), is a mystery.

In any event, the Board has repeatedly rejected these unsupported “embargo” and

“lifestyle” arguments for other “Havana” marks. See, e.g., Boyd Gaming, 57 U.S.P.Q.2d at

1945-47; Bacardi I, 48 U.S.P.Q.2d at 1034, 1035 n.13; Bacardi II, 1997 T.T.A.B. Lexis 169, at

*2 (“unsupported contention that the mark [HAVANA STYLE] ‘evokes the image of a pre-

Castro, free wheeling lifestyle’”); BJIP, Inc., Serial No. 75/529,080, at 8-10; Ricardo Arregui,

Serial No. 74/540,041, at 5 n.2.

Applicant’s deliberate and false promotion of an association between Applicant’s goods

and Havana and Havana cigars in its advertising, on its website, and by prominent display of

“Cuba” and Habana” on its goods is powerful and additional support of the materiality of the

goods/place association. See Guantanamera Cigars Co., 86 U.S.P.Q.2d at 1479 (“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”,

constituting additional evidence supporting materiality finding); The Scotch Whiskey Ass’n v.

Consolidated Distilled Prod., Inc., 210 U.S.P.Q. 639, 642 (N.D. Ill. 1981) (geographic

deceptiveness reinforced by “the label [which] displays a castle and refers to a Scottish island”).

9
Applicant also stated what it “believes” about consumer knowledge of the embargo, which is not
evidence. Int. Resp. No. 6.

17
 That Applicant has chosen HAVANA COLLECTION out of the universe of possible

names for its cigar-related accessories that are not from Havana or Cuba – “the quintessential

cigar city,” in Applicant’s words – is itself highly relevant to discerning materiality. No reason

exists other than to seek to have consumers link its non-Havana product with Havana’s fame and

reputation for great cigars. Indeed, Applicant admits this reason – “Applicant adopted the mark

HAVANA COLLECTION because the word “Havana” is associated with … Cuban cigars.”

Goldstein Decl. Ex. 5 (App. Resp. to Int. No. 1) (emphasis added). This deliberate, false

association between Applicant’s goods and Havana will function in precisely the desired manner,

leading consumers who might not otherwise purchase Applicant’s goods to do so. See In re

Perry Mfg. Co., 12 U.S.P.Q.2d 1751, 1752 (T.T.A.B. 1989) (“[W]e can fathom no reason for a

North Carolina manufacturer, with no connection to New York, to adopt a mark incorporating

the words ‘New York’ and the New York skyline other than an attempt to appeal to the

consumer’s desire for clothing connected with New York and its fashion image and industry.”).

Applicant’s other section 2(e)(3) arguments are seriously misplaced. In United States

Playing Card Co. v. Harbro, 81 U.S.P.Q.2d 1537 (T.T.A.B. 2006), there was no evidence that:

the applicant fostered a false association between its goods and Las Vegas beyond the mark

itself; playing cards are inextricably linked to casino gambling the way cigar accessories are

linked to cigars; or casino gambling and playing cards are advertised, marketed, and sold

together, including under the same marks.

Applicant’s reliance on other registered marks that use “Havana,” particularly in the

absence of any evidence of use, App. Mem. at 7-8; App. Ex. E, simply ignores the Board’s

rejection of the same argument in Anncas, 88 U.S.P.Q.2d at 1793; see also In re Nett Designs,

Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001) (third party registrations have “little persuasive

18
value”; “Board must decide each case on its own merits”); see also T.B.M.P. § 704.03(b)(1)(B)

(“probative value [of third-party registrations] is limited, particularly when … there is no

evidence of actual use of the mark shown in the registration”).10 Applicant’s claim that these

other registrations show “how restrictive opposers’ rights in their registered marks should be,”

App. Mem. at 7, is unintelligible. Notably, the Board denied Opposers’ Rule 56(f) request to

seek discovery concerning Applicant’s reliance on these registrations, Order, at 18, indicating

that the Board agreed that these registrations are irrelevant.11

III. APPLICANT IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE

SECTION 2(d) CLAIM

Applicant fares no better in its scattershot, meritless arguments that there is no likelihood

of confusion between its application and Opposers’ registered HABANO/S marks or

Cubatabaco’s prior pending HABANOS certification mark application. These arguments are

unsupported by evidence, misstate the law, and ignore the related goods doctrine. Thus,

Applicant asserts that the “question of likelihood of confusion is one of law,” App. Mem. at 7,

but then omits the crucial remainder of the sentence in the two cases it cites : “based on

underlying facts.” China Healthways Institute Inc. v. Xiaoming Wang, 83 U.S.P.Q.2d 1123,

1125 (Fed. Cir. 2007); (emphasis added); M2 Software Inc. v. M2 Communications Inc., 78

U.S.P.Q.2d 1944, 1946 (Fed. Cir. 2006) (“based on findings of relevant underlying facts”)

10
Most of these marks were registered based on one Examiner’s misunderstanding that cigars made from
“Cuban seed tobacco” originated in Cuba, and, in light of Anncas, 88 U.S.P.Q.2d at 1793, are vulnerable
to cancellation on that basis. Several of the marks are on the Supplemental Register and several are not
for cigars or cigar accessories. Applicant is wrong that any of these marks are immune from cancellation,
including for abandonment, fraud, and deceptiveness under section 2(a). Opposers have already
petitioned to cancel two of the marks, HAVANA SUNRISE and HAVANA BLEND, and expect to
proceed against others.
11
Applicant’s only identified witness admitted that he had no involvement in selecting the submitted
registration, before Applicant’s counsel objected to any further questions on this topic. Van Keppel Dep.
at 28:8-31:1.

19
(emphasis added). du Pont likewise emphasizes that likelihood of confusion is evidence-based.

See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362 (C.C.P.A. 1973) (“Only the facts

can do that [determine likelihood of confusion]. In every case turning on likelihood of

confusion, it is the duty of the examiner, the board and this court to find, upon consideration of

all the evidence, whether or not confusion appears likely.” Decision made only “after a thorough

review of the entire record”). Here, Applicant has provided virtually no competent evidence to

support its motion. By contrast, Opposers have, at this preliminary discovery stage, prior to any

expert reports or testimony, submitted more than sufficient evidence to create a genuine issue of

material fact.

Applicant concedes that the similarity or dissimilarity of the marks and nature of the

goods are the central considerations here. App. Mem. at 10. Focusing on these two factors,

there is, at a minimum, a clear fact dispute as to likelihood of confusion between Cubatabaco’s

HABANOS certification mark and HAVANA COLLECTION in a direct comparison of the

marks, under the doctrine of foreign equivalents, and under the related goods test. See In re

Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004) (addressing primarily these two factors);

Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002).

First, HAVANA and HABANOS, both in standard character, are very similar “in their

entireties as to appearance, sound, connotation and commercial impression,” one of the central

factors of comparison for likelihood of confusion. du Pont, 476 F. 2d at 1361; see Palm Bay

Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371-72

(Fed. Cir. 2005). As noted, the terms “Havana(s)” and “Habano(s)” are both used widely and

interchangeably within the cigar industry and among cigar consumers, including in the United

States, to refer to 100% Cuban origin cigars. Goldstein Decl. Exs. 1-3, 15-17, 20. Addition of

20
the common word “collection” (which Applicant disclaimed) to Applicant’s mark does not alter

the overall similar commercial impression created by the dominant HAVANA/HABANOS

portion of the marks. See, e.g.,Veuve Clicquot, 396 F.3d at 1372; In re Chatam Int’l, 380 F.3d at

1343; (“Viewed in their entireties with non-dominant features appropriately discounted, the

marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly

identical”); Hewlett-Packard, 281 F.3d at 1266; TMEP § 1207.01(b)(iii) (citing cases).

Second, under the doctrine of foreign equivalents, HAVANA and HABANOS, when

applied to cigars and related goods, and certainly on summary judgment, have almost identical

meanings, and are plainly confusingly similar. See Statement of Facts, Point 7 (“Habano”

translated as Havanan, Havana, of Havana, or a Havana or Cuban cigar); id. Points 3, 7 (both

“Havana” and “Habanos” are commonly used to refer to a Cuban cigar);12 see, e.g., Continental

Nut Co. v. Cordon Bleu, Ltee, 494 F.2d 1397, 181 U.S.P.Q. 647 (C.C.P.A. 1974); In re Thomas,

79 U.S.P.Q.2d 1021, 1024 (T.T.A.B. 2006) (MARCHE NOIR for jewelry held likely to be

confused with BLACK MARKET MINERALS for retail jewelry store services); In re American

Safety Razor Co., 2 U.S.P.Q.2d 1459, 1460 (T.T.A.B. 1987). As in Thomas, the addition of a

common word like “collection” or “minerals” does not alter the likelihood of confusion.

The HABANOS mark, and the registered HABANOS UNICOS DESDE 1492 and LA

CASA DEL HABANO marks are regularly advertised in United States cigar consumer

magazines, including in conjunction with the renowned COHIBA cigar mark, whose logos

Applicant affixes to its cutters, on Opposers’ websites, and on all packaging of Opposer Habanos

S.A.’s Cuban origin cigars. See Statement of Facts, Point 7. Thus, United States cigar

12
It is difficult to discern how Applicant believes it is helped because the term Habano means a Havana
cigar or a Cuban cigar, both meaning a cigar from Cuba. App. Mem. at 11. As noted, supra, n.8, the
Board cannot take judicial notice of Wikipedia, Applicant’s sole source for claiming that Habanos
“sometimes” has an additional meaning of “cigars in general.” App. Mem. at 12; App. Ex. H, .

21
consumers are highly likely to be exposed to both the HABANOS certification mark and

Applicant’s HAVANA COLLECTION mark, as well as the two cited registered marks.

Third, the Examiner initially (and correctly) found that there “may be a likelihood of

confusion” between Applicant’s mark and the HABANOS certification mark. Applicant’s

suggestion that the HABANOS application should not block its application under section 2(d)

because the PTO has not yet approved that application, App. Mem. at 12, is simply a non

sequitur. As the Examiner noted, if the HABANOS “application matures into a registration, the

examining attorney may refuse registration ... under Section 2(d).” Application File.

Applicant’s unprecedented theory that a later-filed application is entitled to registration while a

potentially blocking application is pending turns the Lanham Act’s priority rules upside down,

and, of course, is without case support. 13

The Examiner withdrew its section 2(d) finding after Applicant deleted “cigars” from its

application, without analyzing the related goods test. As addressed, supra, concerning Opposers’

section 2(e)(3) claim, cigar consumers so closely associate cigars with cigar accessories that the

likelihood of confusion between HABANOS and HAVANA COLLECTION necessarily will

extend from cigars to Applicant’s cigar accessories. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d

341, 348 (9th Cir. 1979) (in likelihood of confusion analysis, “[r]elated goods are those products

which would be reasonably thought by the buying public to come from the same source if sold

13
Applicant relies on the prior Examiner’s refusal to register the HABANOS certification mark based on
his flawed analysis that a certification mark that is geographically descriptive (as are numerous
certification marks) is somehow “generic” for goods from that place. App. Mem. at 12. The PTO,
through a new Examiner, has now withdrawn that flawed ground for refusal (and has raised different
grounds for refusal, irrelevant here, which Cubatabaco will soon address). Goldstein Decl. Ex. 15.
Applicant’s reliance on the CHABLIS case, Institut National des Appellations D’Origine v. Vintners Int’l
Co., Inc., 22 U.S.P.Q.2d 1190 (Fed. Cir. 1992), shows a fundamental misunderstanding both of that case
and of certification marks generally. CHABLIS was denied registration as a certification mark because it
was found to be generic of a type of wine, not as a description of goods from a particular geographic area.
By contrast, as the PTO regularly acknowledges, and as all evidence shows, the term “Habanos”
specifically identifies cigars from Cuba, and therefore is registrable as a certification mark.

22
under the same mark”) (internal quotations omitted); Save Venice, 259 F.3d at 1355. Here, of

course, it is virtually certain that consumers who buy cigar accessories under one mark would

believe that cigars sold under the same mark came from the same source.

Although third party registrations are generally of little probative value on the issue of

likelihood of confusion because they fail to show use in the market, AMF Inc. v. American

Leisure Products, Inc., 474 F.2d 1403, 1406 (C.C.P.A. 1973), such registrations are probative to

show the relatedness of goods, see, e.g., Venture Out Properties LLC v. Wynn Resorts Holdings

LLC, 81 U.S.P.Q.2d 1887, 1892-93 (T.T.A.B. 2007). Here, Applicant’s original application,

Opposers’ two cited registrations, and many of the third party registrations submitted by

Applicant are for cigars and cigar accessories, including the same accessories as Applicant. App.

Ex. E, F; App. Mem. at 8.

Applicant’s jumble of remaining miscellaneous arguments are meritless. It asserts that its

mark is strong and unique, App. Mem. at 10, when clearly HAVANA COLLECTION is neither.

As noted, it submits no evidence of the sophistication of its buyers. Id. The directory of the

names of retail tobacconists, which has nothing to do with cigar or cigar accessory trademarks or

USPTO applications or registrations, is irrelevant. App. Ex. I. Its claim that Havana is not

known for any of Applicant’s goods, App. Mem. at 13, besides being false as shown, is

irrelevant to the section 2(d) issue, which is addressed to source, not location, and it is not

disputed that Habanos S.A. is a source of the identical cigar accessories as Applicant. See

Statement of Facts, Points 4-5; App. Ex. F. Its reliance on marks for completely unrelated goods

or services, in different classes, that use the term “Havana,” App. Mem. at 13-14; App. Ex. J, is

likewise irrelevant, particularly in the absence of any evidence of use, and Applicant is unable to

cite a single case suggesting otherwise. Veuve Clicquot, 396 F.3d at 1373 (“The probative value

23
of third party trademarks depends entirely upon their usage.”); Nett Designs, 236 F.3d at 1342;

American Leisure Prod., 474 F.2d at 1406 (“We have frequently said that little weight is to be

given [third party] registrations in evaluating whether there is likelihood of confusion.”).

Applicant’s ipse dixit hyperbole that denial of registration would “cause a loss of

confidence in the administrative judicial system,” is frivolous, particularly in light of the Board’s

recent HAVANA CLUB decision, and Applicant’s deliberate and false association of its mark

with Havana, Cuba and Havana cigars. See Anncas, 88 U.S.P.Q.2d at 1793 (“it is well

established that even if some prior registrations have some characteristics similar to applicant’s,

the USPTO's allowance of such prior registrations does not bind the Board”).

CONCLUSION

For the reasons stated herein, and on the prior papers and proceedings had herein,

Applicant’s motion for summary judgment should be denied and Opposers’ cross-motion for

summary judgment on its section 2(e)(3) claim should be granted.

Dated: November 17, 2009 Respectfully submitted,

By: /David B. Goldstein/

DAVID B. GOLDSTEIN
RABINOWITZ, BOUDIN, STANDARD,
KRINSKY & LIEBERMAN, P.C.
111 Broadway – Suite 1102
New York, New York 10006-1901
212-254-1111
dgoldstein@rbskl.com
Attorneys for Opposers Corporacion Habanos, S.A.
and Empresa Cubana del Tabaco

24
 CERTIFICATE OF SERVICE

The undersigned certifies that true and correct copies of the foregoing OPPOSERS’

BRIEF IN OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT AND

IN SUPPORT OF OPPOSERS’ CROSS-MOTION FOR SUMMARY JUDGMENT and

Declarations and Exhibits in support thereof were served on Applicant by mailing, postage

prepaid, said copy on November 17, 2009, via U.S. first-class mail, and a copy was sent by

electronic mail, to:

J. David Wharton, Reg. No. 25,717

STINSON MORRISON HECKER LLP
1201 Walnut St, Suite 2800
Kansas City, MO 64106-2159
dwharton@stinson.com
Attorneys for Applicant

/David B. Goldstein/
DAVID B. GOLDSTEIN
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
________________________________________________
CORPORACION HABANOS, S.A., d.b.a. )
HABANOS, S.A., and EMPRESA CUBANA DEL )
TABACO, d.b.a. CUBATABACO, )
)
Opposers, )
) Opposition No. 91186534
v. ) Serial No. 77273188
)
XIKAR, INC., )
)
Applicant. )
)

DECLARATION OF DAVID B. GOLDSTEIN IN SUPPORT OF OPPOSERS’

OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT AND
OPPOSERS’ CROSS-MOTION FOR SUMMARY JUDGMENT

DAVID B. GOLDSTEIN, an attorney admitted to practice before the Courts of the State

of New York and, inter alia, the United States District Courts of the Southern District of New

York and the District of the District of Columbia, declares under penalty of perjury as follows:

1. I am a member of Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C.,

counsel to Opposers CORPORACION HABANOS, S.A. (hereinafter “Habanos, S.A.”) and

EMPRESA CUBANA DEL TABACO d.b.a. CUBATABACO (hereinafter “Cubatabaco”)

(together “Opposers”). I submit this declaration in support of Opposers’ Opposition to

Applicant’s Motion for Summary Judgment and Opposers’ Cross-Motion for Summary

Judgment on its section 2(a), 2(e)(3) claim in the above-captioned proceeding

2. Annexed hereto are certain exhibits referred to in Opposers’ Brief in Opposition

to Applicant’s Motion for Summary Judgment and in Support of Opposers’ Cross-Motion for

Summary Judgment Motion. Many of the images of Applicant’s goods are being submitted

herein in color, and I note that when these images are printed in black and white the clarity,
including the wording on the images of the goods, is often difficult to discern. Other exhibits

referenced therein are annexed to the Declaration of Ana Lopez Garcia, filed herewith.

3. Annexed hereto as Exhibit 1 are true and correct copies of the entry, or excerpts

from the entry, for “Havana” in the following encyclopedias, dictionaries and The Columbia

Gazetteer of North America which are relevant to show that Havana is a well-known location in

Cuba (the capital of Cuba), that “Havana” has long meant and currently means a cigar made in

Cuba and/or from tobacco grown in Cuba, namely from: (a) The Columbia Gazetteer of North

America (Saul B. Cohen ed. 2000), republished at www.bartleby.com, printed on September 7,

2007; (b) The Encyclopedia Britannica Online, http://www.britannica.com, printed on

September 21, 2007; (c) Random House Webster’s Dictionary, at 331 (4th ed. 2001); (d) The

Random House Dictionary of the English Language, at 877 (2d ed. Unabridged 1983); (e)

Webster’s New Collegiate Dictionary, at 525 (1977); (f) The Oxford English Dictionary, at 123

(1933, 1970); (g) Webster’s New Geographical Dictionary, at 492 (1988); (h) The World Book

Encyclopedia, at 86-87 (1993); (i) The New Encyclopaedia Britannica, at 544 (15th ed. 1988).

4. Annexed hereto as Exhibit 2 are true and correct copies of excerpts from

consumer-oriented English-language cigar books published or sold in the United States, which

use the terms “Havana(s)” or “Havana cigar(s)” to mean cigars manufactured in Cuba from

Cuban tobacco, including in the book titles, which are relevant to show that these terms are

widely used and understood in the United States to mean a cigar from Cuba, and that Havana,

Cuba is renowned for the production of cigars: (a) Richard B. Perelman, Perelman’s Pocket

Cyclopedia of Havana Cigars, at 1-3, 29-34 (3d ed. 2005); (b) Gerard Pere et Fils, Havana

Cigars, at Foreward (1997); (c) Min Ron Nee, An Illustrated Encyclopedia of Post-Revolution

2
Havana Cigars, at 193 (2003); (d) Anwer Bati, The Cigar Companion, at 31-33, 38, 66, 76-77,

196 (1993).

5. Annexed hereto as Exhibit 3 are true and correct copies of: (a) excerpts of articles

referring to “Havana(s)” or “Havana cigars” as cigars from Cuba, and/or discussing production

of cigars in Havana, from the United States cigar consumer magazines Cigar Aficionado, and the

Cigar Aficionado website, www.cigaraficionado.com, Smoke, and the Smoke website,

www.smokemag.com, and Smokeshop, and the Smokeshop websites, www.smokeshop.com, and

www.gosmokeshop.com, which are relevant to show that these terms are widely used and

understood in the United States to mean a cigar from Cuba, and that Havana is renowned for the

production of cigars; and (b) printouts of news articles published in United States newspapers

after 2003, and retrieved from the Westlaw database NPMJ (Major Newspapers) (and a printout

from Westlaw of the newspapers included in the NPMJ database), referring to “Havana(s)” or

“Havana cigar(s)” as cigars from Cuba, which are relevant to show that these terms are widely

used by the general media widely understood in the United States to mean a cigar from Cuba.

6. Annexed hereto as Exhibit 4 is a true and correct copy of Exhibits 9 and 10

(Applicant’s advertisements in Cigar Aficionado, Cigar Magazine, Cigar Press, Smokeshop and

Tobacconist Magazine, and advertisement preparation materials for same) to the Deposition of

Applicant’s president and founder, Kurt Van Keppel, taken on October 13, 2009 in Kansas City,

Missouri in the above-captioned proceeding (“Van Keppel Dep.”), which show that Applicant

regularly advertises its HAVANA COLLECTION cigar accessories in Cigar Aficionado,

Smokeshop and other U.S. consumer cigar magazines. Exhibit 4 also shows that Applicant’s

slogan in its cigar magazine advertising for its HAVANA COLLECTION goods is “capturing

the spirit of Havana one cigar at a time.”

3
 7. Annexed hereto as Exhibit 5 is a true and correct copy of Applicant’s Responses

to Opposers’ First Set of Interrogatories to Applicant in the above-caption proceeding, dated

September 10, 2009.

8. Annexed hereto as Exhibit 6 is a true and correct copy of a certified translation of

the French phrase “à la Havane” from The LanguageWorks, Inc., dated November 16, 2009,

which is relevant to show that the French phrase “à la Havane” translates in English as “to

Havana” or “in Havana” as in “fabriqué à la Havane,” or “made in Havana.”

9. Annexed hereto as Exhibit 7 are true and correct copies of excerpts from Exhibit 7

(Applicant’s advertisement from Applicant’s website) and Exhibit 13 (Applicant’s advertisement

used by Applicant’s salepersons) to the Van Keppel Dep., which show that Applicant’s

HAVANA COLLECTION carrying cases prominently display the word “Cuba.”

10. Annexed hereto as Exhibit 8 are true and correct copies of excerpts from Exhibit 8

(Applicant’s magazine advertisements), Exhibit 9 (Applicant’s magazine advertisements) and

Exhibit 13 (Applicant’s advertisement used by Applicant’s salepersons) to the Van Keppel Dep.,

which show that several versions of Applicant’s HAVANA COLLECTION lighters prominently

display the word “Cuba” or “Habana.”

11. Annexed hereto as Exhibit 9 are true and correct copies of excerpts from Exhibit 7

(Applicant’s advertisement from Applicant’s website), Exhibit 8 (Applicant’s magazine

advertisements), Exhibit 11 and Exhibit 13 (Applicant’s advertisement used by Applicant’s

salepersons) to Van Keppel Dep., which prominently display Applicant’s HAVANA

COLLECTION cigar cutters with the words “Habana” or “à la Havane.”

12. Annexed hereto as Exhibit 10 are true and correct copies of excerpts from Exhibit

7 (Applicant’s advertisement from Applicant’s website) to Van Keppel Dep., which show that

4
Applicant claims on its web site that its HAVANA COLLECTION cigar accessories “achieve

the classic ambience of the Havana cigar,” refer to “the quintessential cigar city, Havana,” and

have a “Havana signature,” with images of its HAVANA COLLECTION goods prominently

displaying “Habana” “à la Havane,” and “Cuba.”

13. Applicant has produced documents, APP 0336-39 marked “Highly Confidential

Attorneys Eyes Only,” which contain 2006-09 sales data for HAVANA COLLECTION cigar

cutters, lighters and cases, showing that sales have been overwhelmingly through cigar retailers,

with a very small percentage over the internet (94% of HAVANA COLLECTION cigar cutters,

over 98% of HAVANA COLLECTION cigar lighters, and over 96% of HAVANA

COLLECTION cigar cases). Yesterday, November 16, 2009, Applicant served Applicant’s

Supplemental Responses to Opposers’ First Set of Interrogatories to Applicant, dated November

16, 2009, a true and correct copy of which is annexed hereto as Exhibit 11, which, although

contradicting Applicant’s own sales data, confirms that the overwhelming majority of HAVANA

COLLECTION cigar accessories are sold through retail cigar stores (claiming that

“[a]pproximately 85% of Applicant’s sales of cigar cutters … [and] approximately 93% … of

[its] cigar lighters … are through retailers”, and the remainder over the internet). Should

Applicant seek to impeach its own sales data in subsequent filings, Opposers will file APP0336-

339 under seal.

14. Annexed hereto as Exhibit 12 are true and correct copies of excerpts from the

U.S. consumer and trade cigar magazines Cigar Aficionado, Smokeshop and Smoke (2008-09),

which are relevant to show that consumer and trade cigar magazines regularly promote and cover

cigar accessories together with advertising and coverage of cigars. Almost every issue of these

5
magazines contain advertisements of cigar accessories, and most issues contain news or other

coverage of cigar accessories.

15. Annexed hereto as Exhibit 13 are true and correct copies of a sample of

Applicant’s semi-annual catalog, from Fall 2007 and Fall 2008, showing its HAVANA

COLLECTION cigar cases displaying the word “Cuba,” its lighters displaying the word “Cuba”

or “Habana,” and its cigar cutters displaying the words “Habana” or “à la Havana.”

16. Annexed hereto as Exhibit 14 are true and correct copies of: (1) the registration

certificate of Registration No. 1,970,911, LA CASA DEL HABANO & Design, dated April 30,

1996, and printed from TDR on November 16, 2009, and the TARR Report of said mark, printed

on November 16, 2009, showing that the mark is in full force and effect and owned by Opposer

Cubatabaco, and that a Section 8 & 9 Declaration for Renewal of the mark has been accepted by

the USPTO; and (2) the registration certificate of Registration No. 2,177,837, HABANOS

UNICOS DESDE 1492 & Design, dated August 4, 1998, and printed from TDR on November

16, 2009, and the TARR Report of said mark, printed on November 16, 2009, showing that the

mark is in full force and effect and owned by Opposer Habanos, S.A., and that a Section 8 & 9

Declaration for Renewal of the mark has been accepted by the USPTO.

17. Annexed hereto as Exhibit 15 are true and correct copies of: (1) the TARR Report

for Opposer Cubatabaco’s application for the certification mark HABANOS, Serial No.

77157193 in International Class A for cigars, printed on November 16, 2009; (2) USPTO Office

Actions, dated August 21, 2008 and June 19, 2009, for HABANOS, Serial No. 77157193,

available on TDR; and (3) excerpts from Response to USPTO Office Action, dated August 10,

2008, for HABANOS, Serial No. 77157193, available on TDR.

6
 18. Annexed hereto as Exhibit 16 are true and correct copies of excerpts from the

Deposition on Written Questions of Manuel Garcia Morejon, taken on May 15, 2007 in the

matter of Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519, including

Exhibits 1, 5, 6, 7 and excepts from Exhibits 3 and 8.

19. Annexed hereto as Exhibit 17 are true and correct copies of: (1) advertisements in

the United States consumer cigar magazine Smoke displaying Opposers’ HABANOS,

HABANOS UNICOS DESDE 1492, and LA CASA DEL HABANO marks; and (2) printouts on

November 16 and 17, 2009, from Opposers’ websites, www.habanos.com and

www.lacasadelhabano.cu, prominently displaying Opposers’ HABANOS, HABANOS UNICOS

DESDE 1492, and LA CASA DEL HABANO marks. The magazine covers are not included

because of electronic file size.

20. Annexed hereto as Exhibit 18 are true and correct copies of the entry for “habano”

in: (1) Larousse’s English-Spanish Dictionary, at 362 (Unabridged ed. 1994): and the American

Heritage Spanish Dictionary: English / Spanish, at 277 (2d ed., 2001), which is relevant to show

that the term “Habano” (and its plural “Habanos”) is translated in leading dictionaries as

“Havanan, Havana, of Havana,” a “Havana [cigar]” or a “Cuban cigar.”

21. Annexed hereto as Exhibit 19 is a true and correct copy of a certified translation

of the entry for “habano” in the Real Academia Española’s Diccionario de la Lengua Española,

(22nd ed. 2001) (republished at http://buscon.rae.es), original entry in Spanish printed on

November 13, 2007, which is relevant to show that “habano” means “[b]elonging or related to

Havana…” and the primary meaning of the noun “habano” is a “[p]ure cigar produced on the

island of Cuba with leaves of the plant from that country.”