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
77157193
LAW OFFICEASSIGNED
LAW OFFICE 111
MARK SECTION (no change)ARGUMENT(S)Applicant respectfully responds to the office action dated August 21, 2008, as follows. Thisresponse incorporates by reference Applicant's earlier responses and the arguments and evidencesubmitted together therewith.Cuban Registration1.
Applicant's application is based, in part, on Applicant's Cuban registration. In the August 21, 2009Office Action, the Examining Attorney stated, "applicant must submit a certificate of renewal or othercertification from the intellectual property office of the foreign country, or a copy of the foreignregistration that shows that the foreign registration has been renewed and will be in force at the time theregistration issues in the United States." Applicant is submitting herewith a certificate from theintellectual property office of Cuba that shows the Cuban registration has been renewed and will be inforce until December 4, 2017, together with a certified translation thereof.
Other Grounds for Refusal1.
The Examining Attorney stated three other grounds for refusal, under the headings "CertificationStatement," "Geographical Misdescription," and "Descriptiveness." The essence of all three grounds forrefusal is the same: The Examining Attorney contends that "Habanos" is not a geographical indicationfor cigars from Cuba, but instead either (1) an indication for the Cuban province and/or city of Havana,or, (2) bizarrely, contradictorily, and patently incorrectly, that Habanos is not a geographical indicationat all, but rather "primarily signifies a type of cigar made either in Cuba or outside Cuba, without regardto the regional origin identified by the name."We note for the record that both of these positions are completely at odds with this ExaminingAttorney's position in previous office actions with respect to this application, in which the ExaminingAttorney proffered a definition of "Habanos" as "cigars made from tobacco planted and grown in Cubaand manufactured into cigars on the island of Cuba," and stated that "the designation 'Habanos' is theSpanish word for 'Havanas', which is the generic name for Cuban cigars."
See
February 11, 2008
Office Action. (Other than the misuse of the term "generic," which the Examining Attorney has nowcorrected, these statements are essentially correct. As the Examining Attorney now appears to haveagreed, a purely descriptive geographical indication
can
be registered as a certification mark. Habanoscan and therefore should be registered because it means "Cuban cigars"; in fact, the United States'position is that registering descriptive geographical indications as certification marks is one of the waysthe United States complies with its international treaty obligations.)After the last office action, on September 26, 2008, the Trademark Trial & Appeal Board held in
Corporacion Habanos, S.A. v. Anncas, Inc.
, 88 U.S.P.Q.2d 1785 (TTAB 2008) that a mark containingthe word "Havana" is misdescriptive if the product does not come from Cuba. Since that decision, thisExamining Attorney properly has rejected a number of applications that include the word "Habano"because the cigars sold under the mark did not come from Cuba,
see, e.g.
, Serial Number 77359144("Nicaragua Habanos") ("applicant indicates that the goods do not originate from Cuba but Nicaragua,applicant's mark is [therefore] primarily geographically deceptively misdescriptive") (citing dictionarydefinition of "Cuban cigar"). Other examining attorneys similarly have determined that "habano" refersto Cuban cigars and have denied applications on that basis.
See, e.g.
, Serial Number 77348097 ("100%Habano Maduro"), dated September 18, 2008 ("Habano Maduro can be translated to 100% ripe Cubancigars"). (Ironically, the examining attorney denied the trademark application for "Habano Maduro" asmerely descriptive, apparently because she was under the false impression that the goods in question
were
from Cuba, ample demonstration of the holding in
Anncas
that people inextricably associateHavana/Habanos with cigars from Cuba.) Because this Examining Attorney, subsequent to the mostrecent office action with respect to the instant application, appears to have accepted Applicant's positionthat "Habanos" refers to cigars from Cuba, counsel for Applicant called the Examining Attorney onJanuary 26, 2009.During the January 26, 2009 call, the Examining Attorney requested that Applicant submit a response tothis office action in which Applicant restated its position and noted the Examining Attorney's recentoffice actions with respect to other "Habano" marks. In line with the Examining Attorney's request,Applicant again submits that "Habanos" is a geographical indication that indicates, with respect tocigars, that the cigars are made in Cuba from 100% Cuban tobacco. Applicant notes, in this respect,that (1) the Examining Attorney's own references state as much in office actions with respect to thisapplication (for instance, Cigar Advisor.com: "Habano: A designation which, when inscribed on acigar band, indicates that a cigar is Cuban") and with respect to other applications (epicurus.com:"Habano: On a cigar band this indicates that the cigar was made in Cuba"; The American HeritageSpanish Dictionary: "Habano, -na . . . m. (
cigarro
) Cuban cigar.")Also for the record, the word "Habanos" with an "s" is not the plural form of the general adjective for"from Havana"; rather, it is a word in Spanish that applies to cigars, and means cigars from Cuba. Themasculine plural adjective for people or things from Havana city or province is "Habaneros," not"Habanos." The fact that a "Habano" is sometimes translated as a "Havana cigar" should not bemisinterpreted, either, because "Havana," when applied to cigars, means a cigar from the island of Cuba. For instance, in
Corporacion Habanos
, the TTAB noted that, "several English language dictionaryentries define 'Havana' as both the capital of Cuba and as a cigar made in Cuba or made from Cubantobacco," and "in several news and feature stories and excerpts from cigar publications, 'Havana' isused to denote a cigar made in Cuba."In short, it is beyond dispute that "Habanos" is a geographical indication that refers to a cigar made in
Cuba from Cuban tobacco, that the word is consistently used that way and has been for a long period of time, and that the geographical indication should be registered as a certification mark to protect one of the most famous goods/place associations in the world.During the January 26, 2009 phone call, the Examining Attorney also stated that Applicant need notsubmit the voluminous evidentiary backup that could be assembled in support of Applicant'sapplication, and that a final office action refusing registration would not result from this response.Applicant submits this response in reliance on the Examining Attorney's statement, and reserves theright to submit additional evidence if necessary.Applicant has now responded to all matters raised by the Examining Attorney and submits thatApplicant's application is ready for publication.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS
A
DESCRIPTION
cigars
FILING BASIS
Section 1(b)
FILING BASIS
Section 44(d)
FOREIGNAPPLICATION NUMBER
TO-COME
FOREIGNAPPLICATION COUNTRY
Canada
FOREIGN FILINGDATE
04/13/2007
FILING BASIS
Section 44(e)
FOREIGNREGISTRATION NUMBER
16
FOREIGNREGISTRATIONCOUNTRY
Canada
FOREIGNREGISTRATIONDATE
12/11/1967
FOREIGNEXPIRATION DATE
12/31/2100
STANDARDCHARACTERSOR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION(proposed)
INTERNATIONAL CLASS
A
of 00
CH Response to OA Habanos Cert Mark
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| Upload Date: | 02/20/2009 |
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