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

ESTTA Tracking number:

ESTTA326294

Filing date:

01/11/2010

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDProceeding 91186534PartyPlaintiffCorporacion Habanos, S.A., Empresa Cubana del Tabaco, dba CubatabacoCorrespondenceAddressDavid B. GoldsteinRabinowitz, Boudin, Standard, Krinsky, et al111 Broadway, Suite 1102New York, NY 10006-1901UNITED STATESdgoldstein@rbskl.comSubmission Reply in Support of MotionFiler's Name David B. GoldsteinFiler's e-mail dgoldstein@rbskl.comSignature /David B. Goldstein/ Date 01/11/2010Attachments Havana collection SJ Reply.pdf ( 8 pages )(38214 bytes )

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE 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. 91186534v. ) Serial No. 77273188)XIKAR, INC., ))Applicant. ))

OPPOSERS’ REPLY BRIEF IN SUPPORT OF OPPOSERS’ CROSS-MOTION FORSUMMARY JUDGMENT

Opposers Corporacion Habanos, S.A. (hereinafter “Habanos S.A.”) and Empresa Cubanadel Tabaco (hereinafter “Cubatabaco”) (together “Opposers”), by and through their undersignedattorneys, hereby submit this Reply Brief in support of their cross motion for summary judgmenton their claim under section 2(e)(3) of the Lanham Act, sustaining the Opposition and refusingregistration of Application Serial No. 77273188, as follows:1.

Opposers are entitled to summary judgment under the related goods test

. It is undisputedthat cigars and cigar accessories, including those that Applicant (and Opposers) sell are closelyrelated goods.

See

Opposers’ Summary Judgment Brief (“Opp. SJ”) at 2, 4-9 (citing anddiscussing evidence); Applicant’s Response to Cross-Motion (“App. Resp.”) at 5 (admitting thatApplicant’s “consuming public” for its cigar accessories are “cigar smokers or people buyinggifts for cigar smokers”). Applicant’s HAVANA COLLECTION mark is clearly unregistrableunder section 2(e)(3) for cigars, 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) (HAVANA CLUB). Indeed,Applicant withdrew its application for “cigars” upon the Examiner’s section 2(e)(3) refusal.

See

Opp. SJ at 2. As Opposers have shown, the Federal Circuit and the Board apply the relatedgoods test to section 2(e)(3) claims and, as shown, that test is dispositive here. Opp. SJ. at 13-16.Yet Applicant never even mentions the related goods test in any of its three summary judgmentbriefs, and makes no argument, in response to Opposers’ showing, that the related goods testdoes not control here. Therefore, the Board need look no further in granting Opposers’ motionfor summary judgment on its section 2(e)(3) claim.2.

Applicant admits most of the essential elements of the section 2(e)(3) claim

. Applicant“admits that Havana’s primary significance is geographic,” App. Resp. at 1, and makes noargument challenging Opposers’ showing that the addition of the generic word “collection” doesnot alter that primary significance. Opp. SJ at 4, 12 (citing cases and evidence). Applicant “hasadmitted that its mark is ‘geographically misdescriptive.’” App. Resp. at 3. Applicant “hasadmitted that it adopted its mark partially because of the association with Cuban cigars,”

but it isundisputed

and admitted that

there is NO association between Applicant’s products and Cubancigars.

See

Application File (admitting that Applicant’s “goods are not manufactured orproduced in and have no connection with Havana”).Applicant also “has admitted that it adopted is mark partially … in an attempt toassociate” its non-Cuban cigar accessories with Havana, Cuba (asserting an unexplained andunsupported “lifestyle” and “ambience” claim).

. at 2.

See

Opp. SJ at 7-8 (citing anddiscussing evidence showing Applicant’s extensive and deliberate false association of its non-Cuban cigar accessories with Havana, Cuba and Havana cigars (

i.e

., genuine, Cuban origincigars),

including falsely labeling its products with “CUBA”, “La Havane”, HABANA, and its

Although not relevant to the section 2(e)(3) issue, Applicant’s statement that “Habanos” is “generic forcigars,” citing a dictionary definition that “‘habano’ is a [p]ure cigar produced on the island of Cuba,”App. Resp. at 3, shows a serious misunderstanding of the difference between a geographically descriptive(or misdescriptive) term and a generic one.