Ch Reply In Support Of 56f Motion

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: Filing date:

Proceeding

ESTTA274309 03/25/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91186534

Party

Plaintiff Corporacion Habanos, S.A., Empresa Cubana del Tabaco, dba Cubatabaco

Correspondence Address

Submission

David B. Goldstein Rabinowitz, Boudin, Standard, Krinsky, et al 111 Broadway, Suite 1102 New York, NY 10006-1901 UNITED STATES [email protected] Reply in Support of Motion

Filer's Name

David B. Goldstein

Filer's e-mail

[email protected]

Signature

/David B. Goldstein/

Date

03/25/2009

Attachments

R 56(f) Reply.91186534.pdf ( 8 pages )(34088 bytes )

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE 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, ) ) v. ) Opposition No. 91186534 ) Serial No. 77273188 XIKAR, INC., ) ) Applicant. ) ) OPPOSERS’ REPLY IN SUPPORT OF RULE 56(f) REQUEST FOR DISCOVERY TO RESPOND TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT Opposers Corporacion Habanos, S.A. (hereinafter “Habanos, S.A.”) and Empresa Cubana del Tabaco (hereinafter “Cubatabaco”) (together “Opposers”), by and through their undersigned attorneys, hereby submit their Reply, pursuant to Fed. R. Civ. P. 56(f); 37 C.F.R. § 2.127(e)(1); TBMP § 528.06, in support of their request for time to take discovery to respond to Applicant’s pending motion for summary judgment in the above-captioned proceeding, and in support thereof state as follows: I.

Applicant concedes, as it must, that no matter the result of Applicant’s summary

judgment motion, there necessarily will be further proceedings in this matter, including discovery, on Opposers’ fraud claim, Applicant’s Response (“App. Resp.”), at 2. Further, in the very likely event that the summary judgment motion is denied, it is almost certain that, after discovery, the parties will bring another round of summary judgment motions. These facts, while not necessarily dispositive of the Rule 56(f) Request, certainly weigh in favor of allowing this matter to proceed in an orderly, efficient matter, rather than through disjointed discovery and

seriatum summary judgment motions. See Declaration of David B. Goldstein, dated February 20, 2009 (“Goldstein Decl.”), ¶¶ 7-10. Applicant fails to make any argument why the parties and the Board should be put through such unnecessary and inefficient piecemeal litigation. Its claim that the situation here is the same as Corporacion Cimex, S.A. v. DM Enter. & Dist. Inc., Opp. No. 91178943 (Nov. 17, 2008), is simply bizarre. First, in Cimex, the parties made summary judgment motions after the close of discovery. Second, there was no piecemeal litigation. Rather, both parties moved for summary judgment on fully dispositive grounds – Opposer moved on its Inter-American Convention (“IAC”) claim, and Applicant moved on lack of standing. The Board found standing, and found for the opposer on the IAC claim, thereby disposing of the case in full. Third, this is not a case in which, after discovery, the parties have moved for partial summary judgment in contemplation of narrowing the issues for trial. Here, there is a certainty that there will be discovery, and a near certainty that there will be additional summary judgment motions, including by Opposers. Therefore, Opposers request that the Board: 1) allow a reasonable period for Opposers to take discovery on all three of its grounds for opposition (Applicant has expressly represented that it has no need for discovery on the section 2(e)(3) and 2(d) grounds, and Applicant plainly does not need discovery of Opposers on whether and when Applicant used the mark); and 2) after the close of discovery, allow the parties to cross-move for summary judgment on any grounds they deem appropriate. II.

Applicant seriously mischaracterizes Opposers’ position on the section 2(e)(3) claim, and

then, relying on that mischaracterization, claims, “Discovery on this issue is unnecessary and will not lead to any admissible evidence.” App. Resp. at 2. Applicant first quotes from Opposers’ Request, which noted that Applicant was “resist[ing] discovery as to the relevant

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factual similarities and differences,” Opp. Request, at 3, and then Applicant adds “between the goods of the parties.” App. Resp. at 2 (emphasis added). Opposers, however, were unmistakably referring to the “relevant factual similarities and differences” between Applicant’s non-Cuban HAVANA COLLECTION cigars, which are indisputably geographically deceptive, and Applicant’s non-Cuban closely related cigar accessories. Opp. Request at 4; see also Goldstein Decl. ¶ 12. Under both the related goods test – applicable to both the section 2(e)(3) and the section 2(d) claims – and the Board’s geographic deceptiveness precedents – which hold that the manner in which an Applicant promotes or displays its goods is relevant – discovery concerning how the mark is sold, displayed and promoted, including in connection with Applicant’s non-Cuban HAVANA COLLECTION cigars, is both necessary and certain to lead to admissible evidence. See Goldstein Decl. ¶¶ 13-19, 25-28, and Exhibits 2-3 (showing Applicant’s deliberate, aggressive and pervasive promotion of its non-Cuban goods through a false association with Cuba, Havana, and Cuban-origin cigars). Try as it might, Applicant cannot wish away the related goods test, including Opposers’ right to discovery on this issue, by the incorrect assertion that the Board’s HAVANA CLUB precedent for non-Cuban cigars is “not relevant” to Applicant’s closely related non-Cuban HAVANA COLLECTION cigar accessories. App. Resp. at 3; see Corporacion Habanos, S.A. v. Anncas Inc., 88 U.S.P.Q.2d 1785 (T.T.A.B. 2008); see also Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008). Nor can Applicant avoid discovery into its promotion of its non-Cuban HAVANA COLLECTION goods through the false association with Cuba, Havana, and Cuban cigars, by making the frivolous argument that Opposers were required to attach evidence directed solely to the merits of the summary judgment

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motion on Opposers’ Rule 56(f) Request. By Applicant’s reasoning, the Board should now sua sponte grant summary judgment on Opposers’ fraud claim based on Applicant’s non-use of the mark, because “[i]f there were [evidence of use], [Applicant] surely would have attached such evidence” to its summary judgment or Rule 56(f) response papers. App. Resp. at 4. Applicant’s claim that Opposers have not provided specific requests for information, or explained the reasons for these requests in order to oppose the summary judgment motion, App. Resp. at 2-3, simply ignores Opposers’ very specific and detailed requests set out in the Goldstein Declaration, ¶¶ 13, 18, 19, 20, 21, 22, 23, 25, 26, 27, 28. The Goldstein Declaration further sets forth the legal and factual relevance of these specific and detailed requests. Goldstein Decl. ¶¶ 11-12, 14-17, 20, 22-26. Neither Rule 56(f) or the Board’s precedents require more. (If Applicant is claiming that Opposers were required to submit formal Requests for Production of Documents and Things or formal Interrogatories with their Rule 56(f) Request, there is no such requirement, and Applicant points to none.) By contrast, Applicant provides no reasons or legal arguments as to why this specifically requested information is not relevant to the summary judgment motion, other than the various ipse dixit assertions that it is not. Indeed, Applicant is compelled to acknowledge that Opposers are entitled to submit “any evidence that Opposers wish to submit to support their position.” App. Resp. at 3 (emphasis added). Yet, without explanation, Applicant then claims that Opposers are forbidden to seek any discovery whatsoever to obtain this evidence from Applicant, or to test the evidentiary basis of Applicant’s various contentions. Applicant’s claim that Opposers had “ample time to submit discovery requests,” App. Resp. at 2, is disingenuous at best. First, the parties agreed to exchange Initial Disclosures on January 7, 2009. Not only is it standard practice to await the exchange of Initial Disclosures to

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commence traditional, formal discovery, but the whole point of the introduction of the Initial Disclosure procedure into the Federal Rules was to require an early exchange of information without formal discovery demands. See 1993 Advisory Committee Notes (explaining purpose of new Rule 26(a) to provide for the disclosure of “basic information about the case and to eliminate the paper work involved in requesting such information”). The salutary purposes of Rule 26(a) and the Board’s recent implementation of the Rule would be seriously undermined if the Board now held that the failure to serve formal discovery demands prior to the exchange of Initial Disclosures compelled denial of a Rule 56(f) motion. Second, even if Opposers had served formal discovery in early December, Applicant clearly would not have responded, and Applicant is very careful not to say that it would have responded. Discovery opened on December 1, 2008. Ever since December 19, long before any responses would have been due, Applicant has had pending either a Rule 12(c) or Summary Judgment motion, with the exception of one day in January. Applicant failed to produce Initial Disclosures on January 7, as agreed, specifically asserting that the Rule 12(c) motion suspended their discovery obligations, and then served its Initial Disclosures on January 15, only after the Board had converted the Rule 12(c) motion into a summary judgment motion and sua sponte denied it for failure to serve initial disclosures. III.

It is difficult to discern the basis for Applicant’s contention that Opposers should be

prohibited from any discovery on the section 2(d) claim, particularly as this issue is factintensive. See Goldstein Decl. ¶¶ 24-26. Indeed, Applicant appears to rely on nothing more than two erroneous legal claims directed to the merits of its summary judgment motion, which have nothing to do with Opposers’ right to seek the specific discovery, including under the related goods test, specifically identified in the Goldstein Decl. ¶¶ 25-27. See App. Resp. at 5.

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First, the Examiner initially found that Applicant’s mark for cigars and cigar accessories is likely to cause confusion with Opposer Cubatabaco’s prior pending certification mark application for HABANOS, and then without explanation and without addressing the related goods test, withdrew that initial refusal when Applicant deleted cigars from its application. Goldstein Decl. ¶¶ 3, 25. Applicant now appears to claim that discovery must be denied, because, without further explanation, “any comparison [of HABANOS] with Applicant’s mark is unfounded,” because the HABANOS mark has not been used or registered, “and presently stands rejected based on descriptiveness.” App. Resp. at 5. Applicant, of course, cannot cite a single case for its novel proposition that the Board is foreclosed from a section 2(d) inquiry whenever there has been an initial refusal (here a plainly erroneous one) of a prior pending application under sections 1(b) or 44(d) or (e). See also Goldstein Decl. ¶ 25 & n.3; Exhibit 4. Second, Applicant apparently concedes a likelihood of confusion with Opposers’ cited registered marks if they have secondary meaning or acquired distinctiveness, but then argues, without citation, that the marks cannot have same because they have not been used in commerce in the United States. App. Resp. at 5. Without otherwise addressing the merits of Applicant’s position that there is no likelihood of confusion unless the Opposers’ registered marks have secondary meaning or acquired distinctiveness, Applicant’s legal position is simply wrong, as a federal court has previously held that one of Opposer Cubatabaco’s Cuban cigar marks did acquire secondary meaning in the United States, despite the prohibition on use of that mark in commerce, including through advertising, media attention, and other lawful means by which the mark is brought to the attention of the relevant consumers. See Empresa Cubana del Tabaco v. Culbro Corp., 70 U.S.P.Q.2d 1650, 1676-82 (S.D.N.Y. 2004), rev’d on other grounds, 399 F.3d 462 (2d Cir. 2005); see also Empresa Cubana del Tabaco v. Culbro Corp., 587 F.Supp.2d 622,

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632 (S.D.N.Y. 2008) (“After trial, this Court found that the Cuban COHIBA had acquired recognition consistent with ‘secondary meaning’ in the U.S., that is, it was ‘uniquely associated’ with the Cuban COHIBA, or that this was its “primary significance.”). In any event, nothing in Applicant’s argument addresses Opposers’ right to seek discovery on the confusion issues identified in the Goldstein Decl. ¶¶ 25-27. Finally, Applicant objects to the term “railroaded.” App. Resp. at 2. Opposers note that it was the Supreme Court that used that term in admonishing that Rule 56(f) serves to protect parties against premature summary judgment motions, such as Applicant’s motion here. Celotex Corp. v. Catrett, 477 U.S. 317, 326 (1986); Opposers’ Request, at 2. CONCLUSION For the reasons stated herein, and in the prior papers and proceedings had herein, Opposers’ Rule 56(f) request for discovery to respond to Applicant’s motion for summary judgment should be granted, and the Board should set a reasonable time for Opposers to take discovery on the three grounds for opposition, and to provide that thereafter the parties may move or cross-move for summary judgment without limitation as to the grounds. Dated: March 25, 2009 Respectfully submitted, By:

/David B. Goldstein/ DAVID B. GOLDSTEIN RABINOWITZ, BOUDIN, STANDARD, KRINSKY & LIEBERMAN, P.C. 111 Broadway – Suite 1102 New York, New York 10006-1901 212-254-1111 [email protected] Attorneys for Opposers Corporacion Habanos, S.A. and Empresa Cubana del Tabaco

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CERTIFICATE OF SERVICE The undersigned certifies that a true and correct copy of the foregoing Opposers’ Reply Memorandum in Support of Rule 56(f) Request For Discovery To Respond To Applicant’s Motion For Summary Judgment was served on Applicant by mailing via U.S. first-class mail, postage prepaid, said copy on March 25, 2009, to: J. David Wharton, Reg. No. 25,717 STINSON MORRISON HECKER LLP 1201 Walnut St, Suite 2800 Kansas City, MO 64106-2159 Attorneys for Applicant

/David B. Goldstein/ DAVID B. GOLDSTEIN

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