Ch Response To Oa Habanos Cert Mark

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 Field

Entered

SERIAL NUMBER

77157193

LAW OFFICE ASSIGNED

LAW OFFICE 111

MARK SECTION (no change) ARGUMENT(S) Applicant respectfully responds to the office action dated August 21, 2008, as follows. This response incorporates by reference Applicant's earlier responses and the arguments and evidence submitted together therewith. 1. Cuban Registration

Applicant's application is based, in part, on Applicant's Cuban registration. In the August 21, 2009 Office Action, the Examining Attorney stated, "applicant must submit a certificate of renewal or other certification from the intellectual property office of the foreign country, or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States." Applicant is submitting herewith a certificate from the intellectual property office of Cuba that shows the Cuban registration has been renewed and will be in force until December 4, 2017, together with a certified translation thereof. 1. Other Grounds for Refusal The Examining Attorney stated three other grounds for refusal, under the headings "Certification Statement," "Geographical Misdescription," and "Descriptiveness." The essence of all three grounds for refusal is the same: The Examining Attorney contends that "Habanos" is not a geographical indication for 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 indication at all, but rather "primarily signifies a type of cigar made either in Cuba or outside Cuba, without regard to the regional origin identified by the name." We note for the record that both of these positions are completely at odds with this Examining Attorney's position in previous office actions with respect to this application, in which the Examining Attorney proffered a definition of "Habanos" as "cigars made from tobacco planted and grown in Cuba and manufactured into cigars on the island of Cuba," and stated that "the designation 'Habanos' is the Spanish 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 now corrected, these statements are essentially correct. As the Examining Attorney now appears to have agreed, a purely descriptive geographical indication can be registered as a certification mark. Habanos can 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 ways the 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 containing the word "Havana" is misdescriptive if the product does not come from Cuba. Since that decision, this Examining 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 dictionary definition of "Cuban cigar"). Other examining attorneys similarly have determined that "habano" refers to 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 Cuban cigars"). (Ironically, the examining attorney denied the trademark application for "Habano Maduro" as merely 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 associate Havana/Habanos with cigars from Cuba.) Because this Examining Attorney, subsequent to the most recent office action with respect to the instant application, appears to have accepted Applicant's position that "Habanos" refers to cigars from Cuba, counsel for Applicant called the Examining Attorney on January 26, 2009. During the January 26, 2009 call, the Examining Attorney requested that Applicant submit a response to this office action in which Applicant restated its position and noted the Examining Attorney's recent office 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 to cigars, 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 this application (for instance, Cigar Advisor.com: "Habano: A designation which, when inscribed on a cigar 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 Heritage Spanish 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. The masculine 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 be misinterpreted, 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 dictionary entries define 'Havana' as both the capital of Cuba and as a cigar made in Cuba or made from Cuban tobacco," and "in several news and feature stories and excerpts from cigar publications, 'Havana' is used 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 not submit the voluminous evidentiary backup that could be assembled in support of Applicant's application, 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 the right to submit additional evidence if necessary. Applicant has now responded to all matters raised by the Examining Attorney and submits that Applicant'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)

FOREIGN APPLICATION NUMBER

TO-COME

FOREIGN APPLICATION COUNTRY

Canada

FOREIGN FILING DATE

04/13/2007

FILING BASIS

Section 44(e)

FOREIGN REGISTRATION NUMBER

16

FOREIGN REGISTRATION COUNTRY

Canada

FOREIGN REGISTRATION DATE

12/11/1967

FOREIGN EXPIRATION DATE

12/31/2100

STANDARD CHARACTERS OR EQUIVALENT

YES

GOODS AND/OR SERVICES SECTION (proposed) INTERNATIONAL CLASS

A

DESCRIPTION

cigars

FILING BASIS

Section 1(b)

FILING BASIS

Section 44(e)

FOREIGN REGISTRATION NUMBER

16

FOREIGN REGISTRATION COUNTRY

Cuba

FOREIGN REGISTRATION DATE

12/11/1967

FOREIGN EXPIRATION DATE

12/04/2017

FOREIGN REGISTRATION FILE NAME(S) ORIGINAL PDF FILE CONVERTED PDF FILE(S) (1 page) ORIGINAL PDF FILE CONVERTED PDF FILE(S) (2 pages)

FRU0-71249234214-154323739_._DOP_HABANOS-2009.pdf \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0002.JPG FRU0-71249234214-154323739_._translation_-_OCPI_certificate.PDF \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0003.JPG \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0004.JPG

ORIGINAL PDF FILE CONVERTED PDF FILE(S) (2 pages)

FRU0-1-71249234214-154323739_._cuban_registration.pdf \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0005.JPG \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0006.JPG

ORIGINAL PDF FILE CONVERTED PDF FILE(S) (3 pages)

FRU0-71249234214-154323739_._translation.pdf \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0007.JPG \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0008.JPG \\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0009.JPG

SIGNATURE SECTION DECLARATION SIGNATURE

/Christopher J. Klatell/

SIGNATORY'S NAME

Christopher J. Klatell

SIGNATORY'S POSITION

Attorney of record, New York bar member

DATE SIGNED

02/17/2009

RESPONSE SIGNATURE

/Christopher J. Klatell/

SIGNATORY'S NAME

Christopher J. Klatell

SIGNATORY'S POSITION

Attorney of record, New York bar member

DATE SIGNED

02/17/2009

AUTHORIZED SIGNATORY

YES

FILING INFORMATION SECTION SUBMIT DATE

Tue Feb 17 15:56:30 EST 2009

TEAS STAMP

USPTO/ROA-71.249.234.21420090217155630731539-7715 7193-4409143885356ad38ef9 39e62df46bedf40-N/A-N/A-2 0090217154323739427

PTO Form 1957 (Rev 9/2005) OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action To the Commissioner for Trademarks: Application serial no. 77157193 has been amended as follows: ARGUMENT(S) In response to the substantive refusal(s), please note the following: Applicant respectfully responds to the office action dated August 21, 2008, as follows. This response incorporates by reference Applicant's earlier responses and the arguments and evidence submitted together therewith. 1. Cuban Registration

Applicant's application is based, in part, on Applicant's Cuban registration. In the August 21, 2009 Office Action, the Examining Attorney stated, "applicant must submit a certificate of renewal or other certification from the intellectual property office of the foreign country, or a copy of the foreign

registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States." Applicant is submitting herewith a certificate from the intellectual property office of Cuba that shows the Cuban registration has been renewed and will be in force until December 4, 2017, together with a certified translation thereof. 1. Other Grounds for Refusal The Examining Attorney stated three other grounds for refusal, under the headings "Certification Statement," "Geographical Misdescription," and "Descriptiveness." The essence of all three grounds for refusal is the same: The Examining Attorney contends that "Habanos" is not a geographical indication for 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 indication at all, but rather "primarily signifies a type of cigar made either in Cuba or outside Cuba, without regard to the regional origin identified by the name." We note for the record that both of these positions are completely at odds with this Examining Attorney's position in previous office actions with respect to this application, in which the Examining Attorney proffered a definition of "Habanos" as "cigars made from tobacco planted and grown in Cuba and manufactured into cigars on the island of Cuba," and stated that "the designation 'Habanos' is the Spanish 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 now corrected, these statements are essentially correct. As the Examining Attorney now appears to have agreed, a purely descriptive geographical indication can be registered as a certification mark. Habanos can 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 ways the 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 containing the word "Havana" is misdescriptive if the product does not come from Cuba. Since that decision, this Examining 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 dictionary definition of "Cuban cigar"). Other examining attorneys similarly have determined that "habano" refers to 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 Cuban cigars"). (Ironically, the examining attorney denied the trademark application for "Habano Maduro" as merely 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 associate Havana/Habanos with cigars from Cuba.) Because this Examining Attorney, subsequent to the most recent office action with respect to the instant application, appears to have accepted Applicant's position that "Habanos" refers to cigars from Cuba, counsel for Applicant called the Examining Attorney on January 26, 2009. During the January 26, 2009 call, the Examining Attorney requested that Applicant submit a response to this office action in which Applicant restated its position and noted the Examining Attorney's recent office

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 to cigars, 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 this application (for instance, Cigar Advisor.com: "Habano: A designation which, when inscribed on a cigar 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 Heritage Spanish 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. The masculine 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 be misinterpreted, 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 dictionary entries define 'Havana' as both the capital of Cuba and as a cigar made in Cuba or made from Cuban tobacco," and "in several news and feature stories and excerpts from cigar publications, 'Havana' is used 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 not submit the voluminous evidentiary backup that could be assembled in support of Applicant's application, 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 the right to submit additional evidence if necessary. Applicant has now responded to all matters raised by the Examining Attorney and submits that Applicant's application is ready for publication. CLASSIFICATION AND LISTING OF GOODS/SERVICES Applicant proposes to amend the following class of goods/services in the application: Current: Class A for cigars Original Filing Basis: Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)). Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Canada application number TO-COME filed 04/13/2007]. 15 U.S.C.Section 1126(d), as amended. Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use

the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Canada registration number 16 registered 12/11/1967 with a renewal date of __________ and an expiration date of 12/31/2100 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended. Proposed: Class A for cigars Deleted Filing Basis: 44(d) Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)). Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Cuba registration number 16 registered 12/11/1967 with a renewal date of __________ and an expiration date of 12/04/2017 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended. Original PDF file: FRU0-71249234214-154323739_._DOP_HABANOS-2009.pdf Converted PDF file(s) (1 page) Foreign Registration-1 Original PDF file: FRU0-71249234214-154323739_._translation_-_OCPI_certificate.PDF Converted PDF file(s) (2 pages) Foreign Registration-1 Foreign Registration-2 Original PDF file: FRU0-1-71249234214-154323739_._cuban_registration.pdf Converted PDF file(s) (2 pages) Foreign Registration-1 Foreign Registration-2 Original PDF file: FRU0-71249234214-154323739_._translation.pdf Converted PDF file(s) (3 pages) Foreign Registration-1 Foreign Registration-2 Foreign Registration-3 The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent. SIGNATURE(S) Declaration Signature If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has

had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. Signature: /Christopher J. Klatell/ Date: 02/17/2009 Signatory's Name: Christopher J. Klatell Signatory's Position: Attorney of record, New York bar member Response Signature Signature: /Christopher J. Klatell/ Date: 02/17/2009 Signatory's Name: Christopher J. Klatell Signatory's Position: Attorney of record, New York bar member The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter. Serial Number: 77157193 Internet Transmission Date: Tue Feb 17 15:56:30 EST 2009 TEAS Stamp: USPTO/ROA-71.249.234.214-200902171556307 31539-77157193-4409143885356ad38ef939e62 df46bedf40-N/A-N/A-20090217154323739427