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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 FieldEnteredSERIAL NUMBER
77497173
LAW OFFICE ASSIGNED
LAW OFFICE 111
MARK SECTION (no change)ARGUMENT(S)
In the Office Action dated August 14, 2008, the Examining Attorney refused registration under Sections2(a) and 2(e)(3) based on his belief that the mark 
PINAR DEL RIO 1941
is geographically deceptiveand primarily geographically deceptively misdescriptive of Applicant's cigars because consumers arelikely to come to the mistaken belief that Applicant's cigars come from Pinar del Rio, Cuba, a majortobacco growing region. In response to this refusal - and in response to the Examining Attorney'srequest for information relating to the origin of Applicant's goods - Applicant advises that the seedsused to grow the tobacco that is used to manufacture Applicant's cigars are, in fact, from Pinar del Rio,Cuba. It cannot be said that Applicant's mark is geographically deceptive or primarily geographicallydeceptively misdescriptive because the mark actually identifies the place from which the goods (i.e., thetobacco seeds) originate. For the foregoing reasons, Applicant respectfully requests that the ExaminingAttorney withdraw his refusals under Sections 2(a) and 2(e)(3).In the Office Action, the Examining Attorney also cited to prior pending Application Serial No.77/428,932 for the mark 
PINAR DEL RIO,
which is used on cigars, and indicated that registration of the subject application would be refused under Section 2(d) if the prior application matured into aregistration. Applicant acknowledges that Serial No. 77/428,932 has now matured into SupplementalRegistration No. 3542236. However, Applicant notes that the mark shown in the prior registration hasonly been in use since July 2008, according to the registration, whereas Applicant's mark has been inuse since June 2007. Accordingly, Applicant intends to file a petition to cancel the prior registration,
 
which will make this issue moot.Should the Examining Attorney have any questions regarding this response, or would like clarificationof any of the points raised herein, the undersigned requests that she be contacted by telephone at (407)841-2330 or by electronic mail (blabutta@addmg.com).
SIGNATURE SECTION
RESPONSE SIGNATURE
 /Bridget Heffernan Labutta/ 
SIGNATORY'S NAME
Bridget Heffernan Labutta
SIGNATORY'S POSITION
Attorney for Applicant
DATE SIGNED
02/16/2009
AUTHORIZED SIGNATORY
YES
FILING INFORMATION SECTION
SUBMIT DATE
Mon Feb 16 14:05:27 EST 2009
TEAS STAMP
USPTO/ROA-66.193.169.98-20090216140527283418-77497173-440e936ef308e6f98fb68bb4a1aa9d579d5-N/A-N/A-20090216140204131232
PTO Form 1957 (Rev 9/2005)OMB No. 0651-0050 (Exp. 04/2009)
Response to Office ActionTo the Commissioner for Trademarks:
Application serial no.
77497173
has been amended as follows:
ARGUMENT(S)In response to the substantive refusal(s), please note the following:
In the Office Action dated August 14, 2008, the Examining Attorney refused registration under Sections2(a) and 2(e)(3) based on his belief that the mark 
PINAR DEL RIO 1941
is geographically deceptive andprimarily geographically deceptively misdescriptive of Applicant's cigars because consumers are likely tocome to the mistaken belief that Applicant's cigars come from Pinar del Rio, Cuba, a major tobacco
 
growing region. In response to this refusal - and in response to the Examining Attorney's request forinformation relating to the origin of Applicant's goods - Applicant advises that the seeds used to grow thetobacco that is used to manufacture Applicant's cigars are, in fact, from Pinar del Rio, Cuba. It cannot besaid that Applicant's mark is geographically deceptive or primarily geographically deceptivelymisdescriptive because the mark actually identifies the place from which the goods (i.e., the tobaccoseeds) originate. For the foregoing reasons, Applicant respectfully requests that the Examining Attorneywithdraw his refusals under Sections 2(a) and 2(e)(3).In the Office Action, the Examining Attorney also cited to prior pending Application Serial No.77/428,932 for the mark 
PINAR DEL RIO,
which is used on cigars, and indicated that registration of thesubject application would be refused under Section 2(d) if the prior application matured into a registration.Applicant acknowledges that Serial No. 77/428,932 has now matured into Supplemental Registration No.3542236. However, Applicant notes that the mark shown in the prior registration has only been in usesince July 2008, according to the registration, whereas Applicant's mark has been in use since June 2007.Accordingly, Applicant intends to file a petition to cancel the prior registration, which will make this issuemoot.Should the Examining Attorney have any questions regarding this response, or would like clarification of any of the points raised herein, the undersigned requests that she be contacted by telephone at (407) 841-2330 or by electronic mail (blabutta@addmg.com).
SIGNATURE(S)Response Signature
Signature: /Bridget Heffernan Labutta/Date: 02/16/2009Signatory's Name: Bridget Heffernan LabuttaSignatory's Position: Attorney for ApplicantThe signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of thehighest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federalterritories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and tothe best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadianattorney/agent not currently associated with his/her company/firm previously represented the applicant inthis matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute powerof attorney with the USPTO; (2) the USPTO has granted the request of the prior representative towithdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) theapplicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
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