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 77157193
LAW OFFICE ASSIGNED LAW OFFICE 107
MARK SECTION (no change)
ARGUMENT(S)
Response to June 19, 2009 Office Action
1. 1. The Office Action and the Grounds for Refusal Cited Therein Are Inconsistent With
the PTO's Rules of Practice.
This is the fourth Office Action in response to Applicant's application to register. Each Office Action
has set forth different, and often contradictory, substantive grounds for refusal. Each one of the
substantive grounds for refusal, including in this fourth Office Action has been meritless, and all
substantive grounds asserted in the first three Office Actions by the prior examining attorney have been
withdrawn. Nearly three years after filing the application in April of 2007, Applicant is now confronted
with wholly new grounds for refusal being raised for the first time, which are likewise without merit.
TMEP § 706.1 states, "It is the policy of the USPTO to do a complete examination upon initial review
of an application by an examining attorney, and to issue all possible refusals and requirements in the
first Office Action. TMEP § 704.01. The USPTO will not issue a new refusal or requirement that could
or should have been made in an earlier Office Action unless it is necessary to do so to prevent the
issuance of a registration that would violate the Trademark Act or applicable rules." (Emphasis added).
TMEP § 706 further provides that examining attorneys should take "great care to avoid these situations,
and should take this step only when the failure to do so would result in clear error," and that "an
examining attorney who does make a new refusal or requirement must clearly explain why the refusal or
requirement is necessary." (Emphasis added).
This Office Action clearly fails to meet these standards, as the failure to assert the new grounds in this
Office Action plainly would not result in "clear error," as the new grounds for refusal are without merit.
Further, the examining attorney has provided no explanation as to why the stated grounds are being
raised only now, after not having been presented as grounds for refusal in three prior Office Actions.
In the present Office Action, the examining attorney primarily has refused Applicant's application on
the ground that there is a likelihood of confusion with registrations and applications filed before
Applicant's application. In addition to being a substantively incorrect ground for refusal as set forth
below, that rationale was never raised by the prior examining attorney in the first, second or third Office
Actions.

The PTO's course of conduct is exacerbated by the self-contradictory nature of the PTO's prior actions,
in which the prior examining attorney raised legally incorrect arguments, contradicted his own
definition of the word HABANOS, and otherwise erred by raising a series of objections that the PTO
has now (correctly) abandoned altogether, albeit in favor of a new rationale that is not based on any new
development or newly available information and is likewise without merit. The PTO's course of
conduct over the course of the four Office Actions has been arbitrary and capricious towards Applicant
under applicable law, has generated significant costs and expenses for Applicant, and has raised
inconsistent and legally erroneous grounds that provide no basis to refuse registration of the applied-for
mark.
2. 2. Likelihood of Confusion is Not a Ground for Refusal.
The examining attorney primarily refused Applicant's application on the ground that a likelihood of
confusion exists between Applicant's proposed HABANOS certification mark and a number of
previously filed applications and registrations.

None of the cited registrations contains the word HABANOS, except for the HABANOS UNICOS
DESDE 1492 mark, which is registered by an authorized user of the Applicant's mark for products of
Cuban origin certified by Applicant, Corporacion Habanos, S.A. The other cited marks each contain a
form of the word HABANO, but in each case the word Habano is disclaimed, as it must be, as a
geographically descriptive term (indeed, as discussed below, in each case it is a geographically
deceptive term, because the goods do not originate from the geographical location indicated). As a
matter of law, a disclaimed, descriptive term cannot be the basis for a finding of likelihood of confusion,
because the disclaimer itself is evidence that the mark's holder does not have exclusive rights in the
mark. See, e.g., Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1566 (Fed. Cir.
1987). This is particularly true if the term is actually misdescriptive and deceptive as used.
By way of comparison, there are a number of registrations containing the word SWISS for chocolate, all
of which disclaim that word as geographically descriptive, and none of which the PTO has held to
conflict with the registered certification mark SWISS for chocolate, Reg. No. 1,570,455 (see, e.g.,
SWISS GOLD, SWISS BLISS, SWISS CHOCOLATE BANK, LINDT SWISS BITTERSWEET FINE
DARK CHOCOLATE, etc.).

The examining attorney's ground for refusal not only contradicts the legal standards and past practice
with respect to other geographical certification marks, but it contradicts past practice on its face with
respect to HABANO - the Office has registered the series of marks cited by the examining attorney,
each of which contains the word HABANO, precisely because that word has been disclaimed and thus
does not stand as a bar to future registrations. If the examining attorney's reasoning were correct, and a
registration containing the disclaimed word HABANO barred future registrations containing that word,
then none of the registrations cited by the examining attorney (other than the first one) would or should
have been registered.

Moreover, because of the nature of a certification mark, Applicant's registration of HABANOS would
not prevent any other party from using the certification mark in connection with goods that actually are
from the geographical location that the mark indicates, and which otherwise conform to the applicable
certification standards. Provided that another party - including the registrants of the other cited marks -
is selling genuine Cuban-origin cigars made with Cuban-grown tobacco (currently an impossibility
under U.S. law), and in accordance with the certification standards, such party would have the right to
place the HABANOS certification mark on their goods.
Finally, largely through the efforts of Applicant and Corporacion Habanos, S.A., it is now absolutely
clear that marks containing words such as HABANO or HAVANA in marks for cigars are
geographically deceptive and primarily geographically deceptively misdescriptive for any products not
originating in Cuba. See, e.g., August 6, 2009 Office Action in serial number 77348097 (after granting
Letter of Protest, refusing registration of "100% HABANO MADURO" for non-Cuban cigars "because
the applied-for mark consists of or includes geographically deceptive and primarily geographically
deceptively misdescriptive matter in relation to the identified goods"; and stating "the term HABANO is
primarily geographically descriptive for cigars [from Cuba]. In addition, the Trademark Trial and
Appeal Board has held that the term HABANO, as well as Havana, Habana, and Habanos, are all
geographic terms and recognized as indicating either a region or a city in Cuba and refer to cigars that
originate in that geographic region.") (citing Corporacion Habanos, S.A. v. Anncas Inc., 88 USPQ2d
1785 (TTAB 2008) ("HAVANA CLUB"); see also December 16, 2008 Office Action refusing
registration of NICARAGUA HABANOS, Serial No. 77359144; Oct. 4, 2007 Office Action refusing
registration of EL REY DE LOS HABANOS, Serial No. 77220699) ("The proposed mark contains the
wording 'HABANOS'; this misdescribes applicant's goods and/or services because the term
HABANOS means 'Havana cigars' which designates that the cigar is made 100 percent of the tobacco
used [sic] has been grown in Cuba.").
Not only do the registrants of the marks cited by the examining attorney not have any rights in the word
HABANO because they disclaimed HABANO as geographically descriptive; they have no rights in the
word because their use of it is, as a matter of law, geographically deceptive and deceptively
misdescriptive.
A disclaimed, geographically deceptively misdescriptive term cannot stand as a bar to Applicant's
application for a correctly descriptive certification mark as a matter of law. The point of geographic
certification marks is to certify a geographical indication, and thus registration of otherwise descriptive
terms is not only allowed, but encouraged. It would turn the law on its head if misdescriptive or
deceptive marks could block a mark that accurately certifies geographic origin.
3. 3. The Two Applications Cited Are Not Grounds for Refusal.
Application number 77348097 (100% HABANO MADURO), cited by the examining attorney as a
ground for refusal, has been refused by the Office after a letter of protest filed by Applicant's counsel
and based on the governing caselaw set forth above. Application number 77129912 (GRAN
HABANO) also has been refused and will not be published based on the same caselaw. If either mark
is published and proceeds to opposition - which will not happen given the now clearly established
caselaw - Applicant will oppose the mark and succeed based on the governing authority. Thus, neither
application is an obstacle to Applicant's application.
4. 4. Applicant Exercises Legitimate Control Over Use of the Certification Mark.
The examining attorney states that there is "some doubt" as to Applicant's control over the certification
mark, but does not state or denominate this comment as a ground for refusal. In any event, and in
response to the examining attorney's comment, for a Section 44 or 1(b) application, such as the present
one, the only question is whether Applicant has a "bona fide intention to exercise legitimate control over
the use of the certification mark." TMEP § 1306.6(g)(iii). There is no doubt as to Applicant's bona fide
intention, given, among other things, the activities described in detail below.
Applicant has gone to extraordinary efforts to protect the term HABANOS in the United States,
particularly in the context of the legal and practical barriers imposed by the United States embargo
against Cuba, and further given that no genuine Cuban origin cigars certified by Applicant as
HABANOS can actually be sold in the United States at the moment. Applicant has participated in
numerous federal trademark lawsuits, oppositions, and cancellation proceedings and has been
universally successful. In addition to Anncas, 88 USPQ 1785 (HAVANA CLUB), and the Letter of
Protest (100% HABANOS MADURO) cited above, Applicant and/or its licensee Corporacion Habanos,
S.A., has brought Opposition proceedings against the following applications for cigars or cigar-related
services that use HABANO/HAVANA or closely related terms, each of which has resulted in the
abandonment of the application, either voluntarily or after Board action:
CUBANOS Y HABANOS, No. 78937482
GRAND HAVANA HOUSE OF CIGARS, No. 78911203
HABANO CLASICO, No. 78964657
HABANOS FABRICA DE TABACOS, No. 74490089
HABANOS PUROS ECUADOR, No. 76410081
HABANOS REY, No. 76168197
HAVANA DREAMS, No. 77115388
HAVANA DREAMS CIGAR FACTORY, No. 78768016
HAVANA JOE'S, No. 77975090
LA GIANNA HAVANA, No. 76673201
MI HABANO, No. 74704970
SAN GABRIEL CIGARS HABANOS REPUBLICA DOMINICANA, No. 77050325
In addition, Applicant and Corporacion Habanos, S.A. are currently opposing registration of the mark
HAVANA COLLECTION, No. 77273188, for cigar accessories, and cross motions for summary
judgment are pending before the Board.
Applicant and Corporacion Habanos, S.A., successfully petitioned to cancel LA VIEJA HABANA,
Reg. No. 2797152, resulting in a voluntary surrender.
Applicant and Corporacion Habanos, S.A. have brought Petitions to Cancel the following registrations,
which Petitions are currently pending:
HAVANA BLEND, Reg. No. 2890975
HAVANA SUNRISE, Reg. No. 2900059
MONSENOR DE LA HABANA, Reg. No. 2872267
Applicant anticipates bringing additional cancellation petitions against similar marks.
Applicant and/or Corporacion Habanos, S.A. have brought federal court actions against the following
marks that use the term HABANOS or HABANO, all of which have resulted in judgments or
settlements requiring cessation of use of the marks:
MR HABANOS, Corporacion Habanos, S.A. v. Habanos Inc., et al., 03 cv 1963 (S.D.N.Y.) (KMW)
(Default Judgment)
HABANO & DESIGN, Empresa Cubana del Tabaco v. Santa Clara Cigar Manuf., Inc., 05 cv 5041
(S.D.N.Y.) (JES) (Stipulation and Order)
HABANOS PUROS ECUADOR, Corporacion Habanos, S.A. and Empresa Cubana del Tabaco v.
Superior Cigars, 07 cv 1001 (D.N.J.) (JAP-TJB) (Settlement)
One obstacle to even more extensive protection of the geographical indication HABANOS has been the
refusal by this Office to allow the Applicant to register the certification mark. The United States takes
the official position that it protects geographical indications by issuing certification marks, and yet this
Office, for shifting and eventually withdrawn reasons, has refused to grant Applicant the registration
that would allow it to use the certification mark system for precisely that purpose.
Given the activities described above, it would be strange to refuse registration of the certification mark
on the ground that Applicant lacks a bona fide intention to exercise control over it when the mark has
not even been issued yet to Applicant and Applicant has nonetheless taken a long series of actions to
protect it. As stated in its application, Applicant fully intends to exercise control over the certification
mark and to use its anticipated registration further to protect the geographical indication HABANOS.
There is no ground for doubting Applicant's intent; and Applicant's persistence amply demonstrates
such intent.

Finally, the fraudulent and deceptive statements of other parties to the PTO, such as claims of products
made from "Cuban seed tobacco," which did not actually originate in Cuba and which served only to
create a false association between the proposed products and Cuba and its renowned cigars, see, e.g.,
Anncas, 88 USPQ 1785, cannot prejudice Applicant's legitimate application. Other than one registrant
that is Applicant's certified user - Corporacion Habanos, S.A. for the mark HABANOS UNICOS
DESDE 1492- all of the registrants cited by the examining attorney have obtained registrations by
misleading the PTO as to the origin of their products in Cuba. It would be contrary to the purpose of
trademark law if these registrants' conduct, and the PTO's granting of registrations for plainly
geographically misdescriptive and deceptive marks, somehow prevented the legitimate registration of a
geographic certification mark that would help consumers cut through the confusion caused by deceptive
and misdescriptive marks.
5. Applicant is the owner of U.S. Registration No. 1970911. The owner of Registration No.
2177837 is an authorized user of Applicant's certification mark.
6. Applicant has been required to address grounds for refusal raised for the first time in this fourth
Office Action. Applicant, therefore, reserves the right further to respond to any arguments made by the
examining attorney, to present additional evidence, and to make further legal and factual arguments.
7. Applicant again refers the PTO to the various international obligations that the United States has
with respect to the protection of geographical indications such as HABANOS, including under the
General Inter-American Convention for Trade Mark and Commercial Protection and TRIPs. The
registrations cited by the examining attorney, and the disclaimers of the word HABANOS contained
therein, indicate that all those registrants knew of the meaning of the word HABANOS and its
geographically descriptive nature, including for purposes of applicable treaties.

SIGNATURE SECTION
RESPONSE SIGNATURE /Christopher J. Klatell/
SIGNATORY'S NAME Christopher J. Klatell
SIGNATORY'S POSITION Attorney of record, New York bar member
DATE SIGNED 12/16/2009
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Dec 16 11:59:15 EST 2009
USPTO/ROA-71.249.234.214-
20091216115915296373-7715
TEAS STAMP 7193-460728721c5ffa86dbaa
984ce428ef34ea-N/A-N/A-20
091216114425981327

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. 77157193 has been amended as follows:

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

Response to June 19, 2009 Office Action

1. 1. The Office Action and the Grounds for Refusal Cited Therein Are Inconsistent With the
PTO's Rules of Practice.
This is the fourth Office Action in response to Applicant's application to register. Each Office Action has
set forth different, and often contradictory, substantive grounds for refusal. Each one of the substantive
grounds for refusal, including in this fourth Office Action has been meritless, and all substantive grounds
asserted in the first three Office Actions by the prior examining attorney have been withdrawn. Nearly
three years after filing the application in April of 2007, Applicant is now confronted with wholly new
grounds for refusal being raised for the first time, which are likewise without merit.

TMEP § 706.1 states, "It is the policy of the USPTO to do a complete examination upon initial review of
an application by an examining attorney, and to issue all possible refusals and requirements in the first
Office Action. TMEP § 704.01. The USPTO will not issue a new refusal or requirement that could or
should have been made in an earlier Office Action unless it is necessary to do so to prevent the issuance of
a registration that would violate the Trademark Act or applicable rules." (Emphasis added). TMEP § 706
further provides that examining attorneys should take "great care to avoid these situations, and should take
this step only when the failure to do so would result in clear error," and that "an examining attorney who
does make a new refusal or requirement must clearly explain why the refusal or requirement is necessary."
(Emphasis added).
This Office Action clearly fails to meet these standards, as the failure to assert the new grounds in this
Office Action plainly would not result in "clear error," as the new grounds for refusal are without merit.
Further, the examining attorney has provided no explanation as to why the stated grounds are being raised
only now, after not having been presented as grounds for refusal in three prior Office Actions.
In the present Office Action, the examining attorney primarily has refused Applicant's application on the
ground that there is a likelihood of confusion with registrations and applications filed before Applicant's
application. In addition to being a substantively incorrect ground for refusal as set forth below, that
rationale was never raised by the prior examining attorney in the first, second or third Office Actions.
The PTO's course of conduct is exacerbated by the self-contradictory nature of the PTO's prior actions, in
which the prior examining attorney raised legally incorrect arguments, contradicted his own definition of
the word HABANOS, and otherwise erred by raising a series of objections that the PTO has now
(correctly) abandoned altogether, albeit in favor of a new rationale that is not based on any new
development or newly available information and is likewise without merit. The PTO's course of conduct
over the course of the four Office Actions has been arbitrary and capricious towards Applicant under
applicable law, has generated significant costs and expenses for Applicant, and has raised inconsistent and
legally erroneous grounds that provide no basis to refuse registration of the applied-for mark.
 2. 2. Likelihood of Confusion is Not a Ground for Refusal.
The examining attorney primarily refused Applicant's application on the ground that a likelihood of
confusion exists between Applicant's proposed HABANOS certification mark and a number of previously
filed applications and registrations.
None of the cited registrations contains the word HABANOS, except for the HABANOS UNICOS
DESDE 1492 mark, which is registered by an authorized user of the Applicant's mark for products of
Cuban origin certified by Applicant, Corporacion Habanos, S.A. The other cited marks each contain a
form of the word HABANO, but in each case the word Habano is disclaimed, as it must be, as a
geographically descriptive term (indeed, as discussed below, in each case it is a geographically deceptive
term, because the goods do not originate from the geographical location indicated). As a matter of law, a
disclaimed, descriptive term cannot be the basis for a finding of likelihood of confusion, because the
disclaimer itself is evidence that the mark's holder does not have exclusive rights in the mark. See, e.g.,
Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 1566 (Fed. Cir. 1987). This is
particularly true if the term is actually misdescriptive and deceptive as used.
By way of comparison, there are a number of registrations containing the word SWISS for chocolate, all
of which disclaim that word as geographically descriptive, and none of which the PTO has held to conflict
with the registered certification mark SWISS for chocolate, Reg. No. 1,570,455 (see, e.g., SWISS GOLD,
SWISS BLISS, SWISS CHOCOLATE BANK, LINDT SWISS BITTERSWEET FINE DARK
CHOCOLATE, etc.).
The examining attorney's ground for refusal not only contradicts the legal standards and past practice with
respect to other geographical certification marks, but it contradicts past practice on its face with respect to
HABANO - the Office has registered the series of marks cited by the examining attorney, each of which
contains the word HABANO, precisely because that word has been disclaimed and thus does not stand as
a bar to future registrations. If the examining attorney's reasoning were correct, and a registration
containing the disclaimed word HABANO barred future registrations containing that word, then none of
the registrations cited by the examining attorney (other than the first one) would or should have been
registered.
Moreover, because of the nature of a certification mark, Applicant's registration of HABANOS would not
prevent any other party from using the certification mark in connection with goods that actually are from
the geographical location that the mark indicates, and which otherwise conform to the applicable
certification standards. Provided that another party - including the registrants of the other cited marks - is
selling genuine Cuban-origin cigars made with Cuban-grown tobacco (currently an impossibility under
U.S. law), and in accordance with the certification standards, such party would have the right to place the
HABANOS certification mark on their goods.
Finally, largely through the efforts of Applicant and Corporacion Habanos, S.A., it is now absolutely clear
that marks containing words such as HABANO or HAVANA in marks for cigars are geographically
deceptive and primarily geographically deceptively misdescriptive for any products not originating in
Cuba. See, e.g., August 6, 2009 Office Action in serial number 77348097 (after granting Letter of Protest,
refusing registration of "100% HABANO MADURO" for non-Cuban cigars "because the applied-for
mark consists of or includes geographically deceptive and primarily geographically deceptively
misdescriptive matter in relation to the identified goods"; and stating "the term HABANO is primarily
geographically descriptive for cigars [from Cuba]. In addition, the Trademark Trial and Appeal Board has
held that the term HABANO, as well as Havana, Habana, and Habanos, are all geographic terms and
recognized as indicating either a region or a city in Cuba and refer to cigars that originate in that
geographic region.") (citing Corporacion Habanos, S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008)
("HAVANA CLUB"); see also December 16, 2008 Office Action refusing registration of NICARAGUA
HABANOS, Serial No. 77359144; Oct. 4, 2007 Office Action refusing registration of EL REY DE LOS
HABANOS, Serial No. 77220699) ("The proposed mark contains the wording 'HABANOS'; this
misdescribes applicant's goods and/or services because the term HABANOS means 'Havana cigars'
which designates that the cigar is made 100 percent of the tobacco used [sic] has been grown in Cuba.").
Not only do the registrants of the marks cited by the examining attorney not have any rights in the word
HABANO because they disclaimed HABANO as geographically descriptive; they have no rights in the
word because their use of it is, as a matter of law, geographically deceptive and deceptively
misdescriptive.

A disclaimed, geographically deceptively misdescriptive term cannot stand as a bar to Applicant's

application for a correctly descriptive certification mark as a matter of law. The point of geographic
certification marks is to certify a geographical indication, and thus registration of otherwise descriptive
terms is not only allowed, but encouraged. It would turn the law on its head if misdescriptive or deceptive
marks could block a mark that accurately certifies geographic origin.
3. 3. The Two Applications Cited Are Not Grounds for Refusal.
Application number 77348097 (100% HABANO MADURO), cited by the examining attorney as a ground
for refusal, has been refused by the Office after a letter of protest filed by Applicant's counsel and based
on the governing caselaw set forth above. Application number 77129912 (GRAN HABANO) also has
been refused and will not be published based on the same caselaw. If either mark is published and
proceeds to opposition - which will not happen given the now clearly established caselaw - Applicant will
oppose the mark and succeed based on the governing authority. Thus, neither application is an obstacle to
Applicant's application.

4. 4. Applicant Exercises Legitimate Control Over Use of the Certification Mark.

The examining attorney states that there is "some doubt" as to Applicant's control over the certification
mark, but does not state or denominate this comment as a ground for refusal. In any event, and in
response to the examining attorney's comment, for a Section 44 or 1(b) application, such as the present
one, the only question is whether Applicant has a "bona fide intention to exercise legitimate control over
the use of the certification mark." TMEP § 1306.6(g)(iii). There is no doubt as to Applicant's bona fide
intention, given, among other things, the activities described in detail below.
Applicant has gone to extraordinary efforts to protect the term HABANOS in the United States,
particularly in the context of the legal and practical barriers imposed by the United States embargo
against Cuba, and further given that no genuine Cuban origin cigars certified by Applicant as HABANOS
can actually be sold in the United States at the moment. Applicant has participated in numerous federal
trademark lawsuits, oppositions, and cancellation proceedings and has been universally successful. In
addition to Anncas, 88 USPQ 1785 (HAVANA CLUB), and the Letter of Protest (100% HABANOS
MADURO) cited above, Applicant and/or its licensee Corporacion Habanos, S.A., has brought Opposition
proceedings against the following applications for cigars or cigar-related services that use
HABANO/HAVANA or closely related terms, each of which has resulted in the abandonment of the
application, either voluntarily or after Board action:
CUBANOS Y HABANOS, No. 78937482
GRAND HAVANA HOUSE OF CIGARS, No. 78911203
HABANO CLASICO, No. 78964657
HABANOS FABRICA DE TABACOS, No. 74490089
HABANOS PUROS ECUADOR, No. 76410081
HABANOS REY, No. 76168197
HAVANA DREAMS, No. 77115388
HAVANA DREAMS CIGAR FACTORY, No. 78768016
HAVANA JOE'S, No. 77975090
LA GIANNA HAVANA, No. 76673201
MI HABANO, No. 74704970
SAN GABRIEL CIGARS HABANOS REPUBLICA DOMINICANA, No. 77050325
In addition, Applicant and Corporacion Habanos, S.A. are currently opposing registration of the mark
HAVANA COLLECTION, No. 77273188, for cigar accessories, and cross motions for summary
judgment are pending before the Board.
Applicant and Corporacion Habanos, S.A., successfully petitioned to cancel LA VIEJA HABANA, Reg.
No. 2797152, resulting in a voluntary surrender.
Applicant and Corporacion Habanos, S.A. have brought Petitions to Cancel the following registrations,
which Petitions are currently pending:
HAVANA BLEND, Reg. No. 2890975
HAVANA SUNRISE, Reg. No. 2900059
MONSENOR DE LA HABANA, Reg. No. 2872267
Applicant anticipates bringing additional cancellation petitions against similar marks.
Applicant and/or Corporacion Habanos, S.A. have brought federal court actions against the following
marks that use the term HABANOS or HABANO, all of which have resulted in judgments or settlements
requiring cessation of use of the marks:
MR HABANOS, Corporacion Habanos, S.A. v. Habanos Inc., et al., 03 cv 1963 (S.D.N.Y.) (KMW)
(Default Judgment)
HABANO & DESIGN, Empresa Cubana del Tabaco v. Santa Clara Cigar Manuf., Inc., 05 cv 5041
(S.D.N.Y.) (JES) (Stipulation and Order)
HABANOS PUROS ECUADOR, Corporacion Habanos, S.A. and Empresa Cubana del Tabaco v.
Superior Cigars, 07 cv 1001 (D.N.J.) (JAP-TJB) (Settlement)
One obstacle to even more extensive protection of the geographical indication HABANOS has been the
refusal by this Office to allow the Applicant to register the certification mark. The United States takes the
official position that it protects geographical indications by issuing certification marks, and yet this Office,
for shifting and eventually withdrawn reasons, has refused to grant Applicant the registration that would
allow it to use the certification mark system for precisely that purpose.
Given the activities described above, it would be strange to refuse registration of the certification mark on
the ground that Applicant lacks a bona fide intention to exercise control over it when the mark has not
even been issued yet to Applicant and Applicant has nonetheless taken a long series of actions to protect
it. As stated in its application, Applicant fully intends to exercise control over the certification mark and
to use its anticipated registration further to protect the geographical indication HABANOS. There is no
ground for doubting Applicant's intent; and Applicant's persistence amply demonstrates such intent.
Finally, the fraudulent and deceptive statements of other parties to the PTO, such as claims of products
made from "Cuban seed tobacco," which did not actually originate in Cuba and which served only to
create a false association between the proposed products and Cuba and its renowned cigars, see, e.g.,
Anncas, 88 USPQ 1785, cannot prejudice Applicant's legitimate application. Other than one registrant
that is Applicant's certified user - Corporacion Habanos, S.A. for the mark HABANOS UNICOS DESDE
1492- all of the registrants cited by the examining attorney have obtained registrations by misleading the
PTO as to the origin of their products in Cuba. It would be contrary to the purpose of trademark law if
these registrants' conduct, and the PTO's granting of registrations for plainly geographically
misdescriptive and deceptive marks, somehow prevented the legitimate registration of a geographic
certification mark that would help consumers cut through the confusion caused by deceptive and
misdescriptive marks.
 5. Applicant is the owner of U.S. Registration No. 1970911. The owner of Registration No. 2177837
is an authorized user of Applicant's certification mark.
6. Applicant has been required to address grounds for refusal raised for the first time in this fourth
Office Action. Applicant, therefore, reserves the right further to respond to any arguments made by the
examining attorney, to present additional evidence, and to make further legal and factual arguments.
7. Applicant again refers the PTO to the various international obligations that the United States has
with respect to the protection of geographical indications such as HABANOS, including under the General
Inter-American Convention for Trade Mark and Commercial Protection and TRIPs. The registrations
cited by the examining attorney, and the disclaimers of the word HABANOS contained therein, indicate
that all those registrants knew of the meaning of the word HABANOS and its geographically descriptive
nature, including for purposes of applicable treaties.

SIGNATURE(S)
Response Signature
Signature: /Christopher J. Klatell/ Date: 12/16/2009
Signatory's Name: Christopher J. Klatell
Signatory's Position: Attorney of record, New York bar member

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: 77157193

Internet Transmission Date: Wed Dec 16 11:59:15 EST 2009
TEAS Stamp: USPTO/ROA-71.249.234.214-200912161159152
96373-77157193-460728721c5ffa86dbaa984ce
428ef34ea-N/A-N/A-20091216114425981327