THIS OPINION

IS NOT A PRECEDENT OF
THE T.T.A.B.

Mailed:
June 14, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re G & R Brands, LLC

________

Serial No. 77417467

_______

Dana B. Robinson of G & R Brands, LLC.

David C. Reihner, Trademark Examining Attorney, Law Office

111 (Craig Taylor, Managing Attorney).
_______

Before Quinn, Walsh and Cataldo, Administrative Trademark

Judges.

Opinion by Walsh, Administrative Trademark Judge:

G & R Brands, LLC (applicant) has applied to register

the mark HAVANA TIME in standard characters on the

Principal Register for goods now identified as:

hand-rolling tobacco grown from Cuban seed

tobacco; pipe tobacco grown from Cuban seed
tobacco; roll your own tobacco grown from Cuban
seed tobacco; rolling tobacco grown from Cuban
seed tobacco; smoking tobacco grown from Cuban
seed tobacco; tobacco filters; tobacco grinders;
tobacco pipe cleaners; cigar and cigarette boxes
not of precious metal; cigar cutters; cigar
humidifiers; cigar tubes; cigars made from Cuban
seed tobacco; cigarette ash receptacles;
cigarette cases, not of precious metal; cigarette
Serial No. 77417467

holders; cigarette holders, not of precious

metal; cigarette papers; cigarette rolling
machines; cigarette rolling papers; cigarette
tubes; cigarettes made from Cuban seed tobacco;
filter-tipped cigarettes made from Cuban seed
tobacco; hookahs; non-electric cigar lighters not
of precious metal; smoking pipe cleaners; smoking
pipes; tobacco pipes, in International Class 34.

Applicant filed the application on March 10, 2008, and

based the application on its statement of a bona fide

intention to use the mark in commerce under Trademark Act

Section 1(b), 15 U.S.C. § 1051(b). Applicant has

disclaimed “HAVANA.”

The Examining Attorney issued a final refusal to

register the mark on the grounds that the mark is primarily

geographically deceptively misdescriptive of the identified

goods under Trademark Act Section 2(e)(3), 15 U.S.C.

§ 1052(e)(3).1 Applicant appealed. Both applicant and the

Examining Attorney have filed briefs. We affirm.

Before addressing the refusal, we must attend to one

evidentiary objection and one procedural matter.

The Examining Attorney has objected to our

consideration of an attachment to applicant’s main brief, a

declaration from Ray Mauri, manager of applicant, on the

grounds that the declaration was submitted late, that is,

1
A different Examining Attorney issued the first Office action
in this case.

2
Serial No. 77417467

with applicant’s main brief. Applicant has not responded

to the objection in its reply brief. Applicant had

numerous opportunities to submit this evidence, including

in its request for reconsideration, but it did not do so.

The objection is well taken; the record must be complete at

the time the appeal is filed. See 37 C.F.R. § 2.142(d).

Accordingly, we sustain the objection, and we have not

considered this evidence. If we had considered it, we

would reach the same conclusions in this appeal.2

Also, in its appeal brief applicant argued for the

first time that the refusal under Section 2(e)(3) does not

apply to the items in the identification of goods which do

not contain tobacco, namely: tobacco filters; tobacco

grinders; tobacco pipe cleaners; cigar and cigarette boxes

not of precious metal; cigar cutters; cigar humidifiers;

cigar tubes; cigarette ash receptacles; cigarette cases,

not of precious metal; cigarette holders; cigarette

holders, not of precious metal; cigarette papers; cigarette

rolling machines; cigarette rolling papers; cigarette

tubes; hookahs; non-electric cigar lighters not of precious

2
Furthermore, for completeness we note that the declaration
directs the Board to view an online video. If this submission
had been timely, we would not regard the referenced online video
as part of the record. See In re Planalytics Inc., 70 USPQ2d
1453, 1458 (TTAB 2004). Online postings are fleeting. We
would require the submission of a tangible recording of this type
of evidence to ensure the integrity of the record.

3
Serial No. 77417467

metal; smoking pipe cleaners; smoking pipes; and tobacco

pipes. The Examining Attorney concurred and withdrew the

refusal as to these goods in his brief.

Accordingly, in this appeal we limit our consideration

to the refusal as applied to the tobacco products

identified in the application, namely, hand-rolling tobacco

grown from Cuban seed tobacco; pipe tobacco grown from

Cuban seed tobacco; roll your own tobacco grown from Cuban

seed tobacco; rolling tobacco grown from Cuban seed

tobacco; smoking tobacco grown from Cuban seed tobacco;

cigars made from Cuban seed tobacco; cigarettes made from

Cuban seed tobacco; and filter-tipped cigarettes made from

Cuban seed tobacco.

Turning to the refusal, to determine whether the

HAVANA TIME mark is primarily geographically deceptively

misdescriptive we must consider:

(1) [whether] the primary significance of the

mark is a generally known geographic location,
(2) [whether] 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) [whether] the
misrepresentation was a material factor in the
consumer's decision.

In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d

1853, 1858 (Fed. Cir. 2003). See also In re Les Halles De

Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir.

4
Serial No. 77417467

2003); United States Playing Card Co. v. Harbro LLC, 81

USPQ2d 1537 (TTAB 2006).

Before addressing these factors specifically, we will

dispose of two dominant arguments in the briefs which

implicate a number of the factors.

First, in arguing the case both applicant and the

Examining Attorney devote much of their attention to the

question of whether we should reverse here because a number

of registrations have issued for marks which include

HAVANA, and similar terms, for tobacco products where the

identification of goods specified that the tobacco was

grown from Cuban seeds. In a related argument, applicant

asserts here that, because it intends to use seeds newly

exported from Cuba, we should regard HAVANA as used in its

mark as accurate and merely descriptive and not deceptively

misdescriptive. Consistent with that argument applicant

has disclaimed HAVANA, as we noted.

In the Havana Club case, the Board addressed the issue

of the existing third-party HAVANA registrations with the

“Cuban-seed” identifications, and stated:

… to the extent that applicant argues that it has

been the USPTO's practice to allow an applicant
to overcome a Section 2(e)(3) refusal by amending
its identification of goods from “cigars” to
“cigars made from Cuban seed tobacco,” and
disclaiming the geographic term in the mark, such
argument is not well taken. It cannot be said

5
Serial No. 77417467

from the third-party registrations and

applications submitted by applicant that this has
been the policy of the USPTO. It may well be the
practice of just a few examining attorneys. In
any event, 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. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).

Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785,

1793 (TTAB 2008) (HAVANA CLUB held primarily geographically

deceptively misdescriptive of “cigars made from Cuban seed

tobacco” not made in Cuba). We, of course, conclude

likewise with regard to the relevance of the third-party

registrations in this case. Accordingly, we reject this

argument.

In the Havana Club case, the Board also rejected the

related argument that the tobacco products made from seeds

exported from Cuba should be regarded as products which

could be accurately described as being from Havana or Cuba.

Id. We likewise reject the same argument here.

The only difference between the arguments in the two

cases is applicant’s contention that its Cuban seeds will

be newly exported from Cuba whereas the seeds at issue in

the Havana Club case were exported from Cuba decades ago.

We agree with the Examining Attorney and conclude that this

is a distinction without a difference. To conclude

6
Serial No. 77417467

otherwise, and to treat agricultural products, such as

tobacco (or potatoes, oranges or grapes for that matter)

grown from seeds from the place named as equivalent to the

products grown in that place, could eviscerate Section

2(e)(3). We decline to go down that path on the facts of

this case.

We reject applicant’s contention that the age of the

seeds was the controlling factor in the Havana Club case.

Furthermore, we reject the fundamental contention that the

inclusion of language specifying that the tobacco is grown

from Cuban seeds of any vintage forecloses the

determination that the mark is primarily geographically

deceptively misdescriptive of the identified tobacco

products.

For completeness we note applicant’s offer in its main

brief to amend its identification of goods further to

specify “made of tobacco grown from seeds newly exported

from Cuba.” Obviously, such an amendment would be futile

in view of our conclusion that the date of export of the

seeds is not relevant. In addition, applicant failed to

propose the amendment in a timely manner and in an

appropriate request.

Furthermore, in view of the fact that this case is

nearly identical to the Havana Club case in all important

7
Serial No. 77417467

respects, we reject applicant’s arguments based on the

other Section 2(e)(3) cases applicant cites, such as, In re

Joint-Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB 2006), all of

which are distinguishable on their facts from this case.

We now consider the California Innovations factors,

first - whether the primary significance of the mark is a

generally known geographic location. Applicant does not

argue that Havana is not a generally known geographic

location, but that the entire mark HAVANA TIME, properly

considered, is not primarily geographically deceptively

misdescriptive.

The Examining Attorney has provided evidence from the

online Columbia Gazetteer which establishes that Havana

identifies a generally known geographic location.

Attachment to Office Action of June 18, 2008. As we noted,

applicant does not dispute this fact. Rather, applicant

posits that the TIME component of its mark is

transformative and operates to cancel out the geographical

meaning of HAVANA. Applicant states that HAVANA TIME

“… captures a new sort of time like Miller Time, or Island

Time, or even Greenwich Meantime.” Applicant’s Brief at

2. Applicant argues further that the HAVANA TIME mark does

not refer to the place HAVANA, but to “… the lifestyles or

qualities associated with that place.” Id. at 3.

8
Serial No. 77417467

We are not persuaded by this argument. In fact, again

we find no difference between the HAVANA CLUB and HAVANA

TIME marks in this regard. There is nothing about either

mark which in any way alters the primary geographical

meaning of HAVANA, in particular, as applied to tobacco

products. The Board considered the issue in Havana Club

and rejected the proposition that the mark as a whole was

not geographic. Havana Club, 88 USPQ2d at 1791 (“… we find

that the primary significance of the mark HAVANA CLUB is

geographic. The word CLUB does not detract from the

primary geographic significance of the mark.”) (citation

omitted). See also In re Bacardi & Co. Ltd., 48 USPQ2d

1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD

HAVANA, HAVANA PRIMO and HAVANA CLIPPER held primarily

geographically deceptively misdescriptive for rum and

related products). Accordingly, we conclude that the

primary significance of HAVANA TIME is that of the name of

a generally known geographic location.

Here too, in view of the close similarity between this

case and the Havana Club case we find unpersuasive

applicant’s arguments based on other cases, such as, In re

Jacques Bernier Inc., 894 F.2d 389 13 USPQ2d 1725 (Fed.

Cir. 1990) (RODEO DRIVE held not primarily geographically

9
Serial No. 77417467

deceptively misdescriptive of perfume). We find the cited

cases easily distinguishable.

We now turn to the second factor under California

Innovations, that is, whether 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.

Above we rejected the notion that applicant could

avoid the refusal under Section 2(e)(3) by simply

identifying its tobacco products as being grown from Cuban

seed tobacco. Applicant has not argued and effectively

concedes that the tobacco for its tobacco products will not

be grown in Cuba and that its tobacco products will not be

made in Cuba. Thus, because we reject the Cuban-seed

loophole, we conclude that the tobacco products applicant

identifies in the application will not come from Cuba.

We also conclude that consumers viewing the mark would

believe that applicant’s tobacco products do come from

Cuba. The evidence the Examining Attorney provided from

the online Columbia Gazetteer, which we referenced above,

establishes an association between Havana and tobacco by

identifying Havana as a port through which tobacco is

exported. Attachment to Office Action of June 18, 2008.

The evidence, discussed below in relation to the third and

10
Serial No. 77417467

final factor, provides even more compelling evidence of

this association.

We also reject applicant’s facile argument, without

supporting evidence, that U.S. consumers would understand

that applicant’s products do not come from Cuba, apparently

because those consumers would be aware of the U.S.-Cuban

embargo. The Board has rejected that argument in similar

cases, and we do likewise here. In re Bacardi & Co. Ltd.,

48 USPQ2d at 1035.

Accordingly, we conclude that 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 now we turn to that third factor - whether the

misrepresentation as to the geographical origin of the

identified goods would be a material factor in the

consumer's decision to purchase. We conclude that it

would.

Applicant does not address this factor directly.

Implicit in its core argument that tobacco products derived

from Cuban seeds are equivalent to tobacco products grown

and made in Cuba is the recognition that consumers value

tobacco produced from Cuba. The Examining Attorney has

provided evidence from the online Columbia Gazetteer which

11
Serial No. 77417467

establishes the basic fact that Cuba produces and exports

tobacco products. Attachment to Office Action of June 18,

2008. The Examining Attorney has also provided copies of

pages from three websites which offer Cuban cigars for

sale. Id. We infer from the advertising on these sites

that consumers of tobacco products highly value tobacco

products from Cuba.

In his brief the Examining Attorney cites factual

findings in the Havana Club case derived principally from

expert testimony presented in that case. That evidence is

not of record in this case and we have not relied on it for

any purpose in reaching our decision here. However, we

have consulted and take judicial notice of relevant

reference works which offer further support for the

proposition that consumers of tobacco products highly value

tobacco products from Cuba and that the Cuban origin of

those products would be material to their decision to

purchase such products.3

The Good Cigar, A Guide to the World of Cigars (1996),

states, “So powerfully associated with the best tobacco in

the world was Cuba that the name of its chief city for

3
The Board may take judicial notice of dictionaries and similar
references. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).

12
Serial No. 77417467

exportation quickly became synonymous worldwide with a fine

cigar. Havana became the center for exporting Cuban

tobacco due to twin blessings of geography: a magnificent

harbor and proximity to a region endowed by Nature with a

soil superbly suited to growing tobacco.” The guide

elucidates on the properties of that region, stating,

“Here, where rain falls in the right amounts in the right

seasons and sun, shade and temperature are perfectly

attuned to the needs of the tobacco plant….” Good Cigar at

44-45.

The Cigar Companion – A Connoisseur’s Guide (2nd ed.

1995) details the production of Havana cigars, noting, “It

has been estimated that a handmade Havana cigar goes

through no fewer than 222 different stages from seedling to

the finished product, before being ready for distribution.

And the care and expertise shown at the factory is not only

crucial to the final appearance of the cigar, but also

affects how well it burns and what it actually tastes

like.” Cigar Companion at 32-22.

Finally, Cigar Aficionado’s CIGARS (1997) includes the

following quote from Raul Roa Couri, Cuba’s ambassador to

France, “The best Cuban ambassador is the Cuban Cigar.”

CIGARS at 79.

13
Serial No. 77417467

The evidence establishes that consumers of tobacco

products highly value such products from Havana, Cuba.

Accordingly, we conclude that the misrepresentation in the

HAVANA TIME mark will be a material factor in the

consumer's decision to purchase the identified tobacco

products.

Finally, after considering all of the evidence and

arguments, including any we have not specifically discussed

here, in view of the factors delineated in California

Innovations, we conclude that HAVANA TIME is primarily

geographically deceptively misdescriptive of the identified

tobacco products.

Decision: We affirm the refusal under Trademark Act

Section 2(e)(3) with regard to the tobacco products

identified in the application, namely: hand-rolling

tobacco grown from Cuban seed tobacco; pipe tobacco grown

from Cuban seed tobacco; roll your own tobacco grown from

Cuban seed tobacco; rolling tobacco grown from Cuban seed

tobacco; smoking tobacco grown from Cuban seed tobacco;

cigars made from Cuban seed tobacco; cigarettes made from

Cuban seed tobacco; and filter-tipped cigarettes made from

Cuban seed tobacco.

Accordingly, if applicant fails to appeal this

decision, or if applicant does appeal and is unsuccessful

14
Serial No. 77417467

in that appeal ultimately, the application will proceed

with the identification of goods limited to the following:

tobacco filters; tobacco grinders; tobacco pipe cleaners;

cigar and cigarette boxes not of precious metal; cigar

cutters; cigar humidifiers; cigar tubes; cigarette ash

receptacles; cigarette cases, not of precious metal;

cigarette holders; cigarette holders, not of precious

metal; cigarette papers; cigarette rolling machines;

cigarette rolling papers; cigarette tubes; hookahs; non-

electric cigar lighters not of precious metal; smoking pipe

cleaners; smoking pipes; and tobacco pipes.

If applicant files and ultimately succeeds in an

appeal, the application will proceed on the basis of the

entire current identification of goods, subject to any

directive in the appellate decision.

15