Habanos Opp To Xikar Msj

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

Proceeding

ESTTA317283 11/17/2009

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] Opposition/Response to Motion

Filer's Name

David B. Goldstein

Filer's e-mail

[email protected]

Signature

/David B. Goldstein/

Date

11/17/2009

Attachments

HC SJ Final.pdf ( 25 pages )(73767 bytes ) DBG SJ Declaration Final.pdf ( 8 pages )(73868 bytes ) hc goldstein ex 1.PDF ( 28 pages )(2936541 bytes ) hc goldstein ex 2.PDF ( 30 pages )(1417238 bytes ) hc goldstein ex 3.PDF ( 50 pages )(10206390 bytes ) hc goldstein ex 4.PDF ( 19 pages )(10141510 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, ) ) Opposition No. 91186534 v. ) Serial No. 77273188 ) XIKAR, INC., ) ) Applicant. ) ) OPPOSERS’ BRIEF IN OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT AND IN SUPPORT OF OPPOSERS’ CROSS-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 this Brief in opposition to the motion of Applicant Xikar, Inc. (“Applicant”) for partial summary judgment. Opposers also herein cross-move the Trademark Trial and Appeal Board (“the Board”), pursuant to 37 C.F.R. § 2.127 and Rule 56 of the Federal Rules of Civil Procedure, to grant Opposers summary judgment on their claim under section 2(e)(3) of the Lanham Act, sustaining the Opposition and refusing registration of Application Serial No. 77273188. In support of both their opposition and cross-motion, Opposers rely upon the following Brief, and the Declarations and exhibits filed herewith. Out of the universe of available names, Applicant has chosen HAVANA COLLECTION for cigar accessories that Applicant admits “have no connection with Havana,” “the quintessential cigar city,” in Applicant’s words. Applicant further admits it deliberately “adopted the mark HAVANA COLLECTION” “because the word ‘Havana’ is associated with ...

Cuban cigars.” Applicant promotes its cigar accessories through false associations with Havana, Cuba, and Cuban cigars, including affixing to them the words “CUBA,” “HABANA,” and “à la Havane,” and claiming its goods “achieve the classic ambience of the Havana cigar.” Given this undisputed evidence, and the undisputed evidence that cigars and cigar accessories are sold and promoted together, including by Applicant, Opposers’ cross-motion for summary judgment under section 2(e)(3) should be granted. Applicant’s motion for summary judgment under this section and under section 2(d) should be denied. STATEMENT OF UNDISPUTED MATERIAL FACTS 1. Procedural Background On September 7, 2007, Applicant applied for the mark HAVANA COLLECTION for “cigars” and cigar-related accessories, specifically “cigar cutters; non-electric cigar lighters not of precious metal; humidors; and cigar carrying cases not of precious metal,” that are not from Havana or elsewhere in Cuba, based on a claim of use in commerce of all the goods under section 1(a) of the Lanham Act. See Application File, Serial No. 77273188. On October 10, 2007, the PTO issued an Office Action refusing registration under section 2(a), 2(e)(3) of the Act. 15 U.S.C. § 1052(a), (e)(3). Id. The Examiner also cited Cubatabaco’s prior pending HABANOS certification mark application for cigars, Serial No. 77157193, pursuant to section 2(d). Id. On April 10, 2008, Applicant responded by admitting that its “goods are not manufactured or produced in and have no connection with Havana”; admitted that its mark is “geographically misdescriptive”; disclaimed “Collection”, but not “Havana”; amended its goods to delete “cigars,” and retained its list of non-Cuban cigar accessories. Id. Applicant did not argue that the Examiner had erred in refusing registration for “cigars.”

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The Examiner then approved the mark for registration without addressing the related goods test as to either the section 2(a), (e)(3) refusal or the citation to section 2(d). Opposers opposed registration of the mark on three grounds (not two, as Applicant misstates): 1) the mark is deceptive and geographically deceptively misdescriptive under sections 2(a) and 2(e)(3) of the Act; 2) the mark is likely to cause confusion with Opposer’s identified registered and applied for marks; and 3) Applicant made a material misrepresentation because it was not using the mark on all the listed goods when it filed its application. Amended Notice of Opposition ¶¶ 46-54. On December 23, 2008, Applicant moved, pursuant to Rule 12(c), for judgment on the pleadings. Before Opposers responded, on January 14, 2009, the Board, sua sponte, denied the motion because it relied upon matters outside the pleadings and, therefore, was construed as a motion for summary judgment filed prior to Applicant’s serving its Initial Disclosures, in violation of 37 C.F.R. § 2.127(e)(1). Applicant then served its Initial Disclosures the next day, January 15, 2009, and then, prior to any other discovery, re-filed its Rule 12(c) motion substantially unchanged as a motion for summary judgment on January 16, 2009. Applicant purported to move for judgment dismissing the Opposition in its entirety, but in fact made no argument for judgment on the third ground of opposition.1 Opposers moved for discovery pursuant to Rule 56(f), which the Board granted in part and denied in part on July 15, 2009. The Board recently held that the mark HAVANA CLUB for non-Cuban cigars is geographically deceptively misdescriptive, 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); see also Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008)

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Because Applicant did not move for summary judgment on the third ground, the Board denied Opposers’ request to take discovery on that issue. Dkt No. 18, at 9. Thus, regardless of the Board’s decision on Applicant’s motion, the Opposition cannot be dismissed in its entirety.

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(GUANTANAMERA for non-Cuban cigars unregistrable under section 2(e)(3)). 2. Havana’s Primary Geographic Significance Havana is well known in the United States primarily as the capital of, and the largest city and main port in Cuba. See Anncas, 88 U.S.P.Q.2d at 1791. As Applicant has admitted, “the primary significance of the word ‘Havana’ [i]s the name of the largest city of Cuba and a chief port in the West Indies.” App. Mem. at 6. See Applicant’s Exs. C-1, C-3 (establishing Havana’s well known geographic significance); Exhibit 1 to Declaration of David B. Goldstein (“Goldstein Decl.”), filed herewith (The Columbia Gazetteer of North America (2000) (Havana is “[t]he largest city and chief port of the West Indies, and the political, economic, and cultural center of Cuba”; The Encyclopedia Britannica Online entry for “Havana”; English language dictionary entries for “Havana”; excerpts of encyclopedia and geographic dictionary entries for Havana). The Examiner likewise recognized that “[t]he primary significance of the term ‘Havana’ is geographic.” Application File. Applicant has not submitted any contrary evidence. 3. The Goods/Place Association Between Havana, Cuba and Cigars and the Fame of Havana Cigars Havana, Cuba has long been famous in the United States, and throughout the world, for its manufacture and export of high-quality cigars made from Cuban tobacco. Indeed, the association between the city of Havana and Cuban origin cigars is so powerful and so extraordinary that a Cuban origin cigar is commonly known in the United States and throughout the English-speaking world as a “Havana” or “Havana cigar,” see Anncas, 88 U.S.P.Q.2d at 1791, 1793, as shown in dictionaries, encyclopedias, book titles, and descriptions in cigar books, cigar magazines, and general media. See Goldstein Decl. Ex. 1 (English language dictionaries and encyclopedias); id. Ex. 2 (consumer-oriented cigar books published or distributed in the U.S., including book titles); id. Ex. 3 (cigar magazines and general media).

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The evidence submitted by Applicant likewise establishes that Havana, Cuba is famous for the production of high-quality cigars. See App. Exs. C-1, C-3 (Columbia Gazetteer of North America entry for “Havana”: “factories making the famous Havana cigars”). The Examiner also recognized that “Havana, Cuba, is a place where cigars are produced. Furthermore, this belief would materially influence consumers to purchase the goods because Havana is renown for the production of cigars.” Application File. Applicant did not contest that finding, and has submitted no evidence contradicting Opposers’ and Applicant’s evidence that Havana is famous for the production, sale and export of 100% Cuban-origin cigars. 4. Havana Is Renowned For the Production, Sale and Export of High Quality Humidors Havana, Cuba is internationally renowned for the production of high-quality humidors, one of Applicant’s identified cigar accessories. Cuban-made humidors are sold in Cuba and exported throughout the world. Declaration of Ana Lopez Garcia (“Lopez Decl.”), ¶¶ 13-15, Exs. 3-5. Habanos S.A. has contracted for many years with Cuban companies and organizations, many located in Havana, to produce humidors for sale, including in official La Casa del Habano stores throughout the world, in connection with Habanos S.A.’s Cuban-origin cigars; These humidors are frequently sold under the same marks as the famous Cuban cigar brands, such as COHIBA, MONTECRISTO, ROMEO Y JULIETA, PARTAGAS, and H. UPMANN. See id. ¶ 13; Exs. 1, 2, 9. High quality, Cuban-made humidors are featured prominently on Opposers’ websites www.habanos.com and www.lacasadelhabano.cu. See id. ¶ 16; Ex. 5. For the past eleven years, Habanos S.A. has hosted a world-famous, week-long annual event, known as the Festival del Habano (Festival of the Havana cigar) in Havana, Cuba. The Festival culminates with the auction of Cuban-made artisanal humidors, filled with Cuban cigars, with the money raised from the auction donated to the Cuban health care system. These

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humidors typically sell for tens and even hundreds of thousands of dollars. Lopez Decl. ¶¶ 1718; Ex. 7 (brochures concerning the Festival del Habano humidors); Ex. 6 (articles concerning the Festival, including the humidors). The leading U.S. consumer cigar magazine, Cigar Aficionado, regularly covers the annual Festival, including the annual humidor auction. Lopez Decl. ¶ 19; Ex. 8. Applicant regularly advertises its cigar accessories in Cigar Aficionado. Goldstein Decl. Ex. 21 (Deposition of Kurt Van Keppel (“Van Keppel Dep.”), at 118:25125:19); Goldstein Decl. Exs. 4,12. Applicant has submitted no evidence refuting the renown and reputation of Cuban-made cigar humidors. 5. Opposers’ Other Cigar-Related Accessories In addition to the sale, advertising, and coverage in U.S. cigar media of the renowned Cuban-made humidors, Habanos S.A. also markets cigar accessories throughout the world, including cigar cutters, lighters, and carrying cases (the same goods as Applicant), frequently under the same brands as, and in connection with, the famous 100% Cuban-origin cigar brands. Lopez Decl. ¶ 20; Ex. 9. These products, manufactured outside Cuba, are sold both in Cuba, including in Havana’s famous cigar shops, and around the world in the same retail tobacconist outlets as sell Cuban cigars, including in La Casa del Habano stores, and are advertised and promoted in connection with Cuban cigars, including in the same publications and same advertisements that promote and cover Cuban cigars. Id. ¶¶ 20-23, 26; Exs. 10-12. These retail tobacconists also sell third party cigar-related accessories, such as cigar cutters, lighters, cases and humidors alongside Cuban cigars. Id. ¶ 24. 6. Applicant’s HAVANA COLLECTION Cigar Accessories Applicant has admitted that its “goods are not manufactured or produced in and have no connection with Havana,” and that its mark is “geographically misdescriptive.” Application File.

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Applicant also admits that, although its goods “have no connection with Havana,” it deliberately “adopted the mark HAVANA COLLECTION” at least in part “because the word ‘Havana’ is associated with ... Cuban cigars.” Goldstein Decl. Ex. 5 (Applicant’s Response to Opposers’ First Set of Interrogatories, Int. No. 1); Van Keppel Dep. at 16:22-17:18.2 Applicant’s HAVANA COLLECTION cigar accessories, other than lighters, have no purpose or function other than for use with cigars. Lopez Decl. ¶ 25. Applicant promotes its HAVANA COLLECTION cigar accessories by fostering a false association between its non-Cuban cigar accessories and Cuban cigars and Havana, Cuba in multiple ways. The specimen submitted with Applicant’s application (and filed by Applicant on this motion) prominently displays the designation “à la Havane.”3 See App. Ex. D; Application File. The specimen, and all of Applicant’s cutters, include a brochure promoting HAVANA COLLECTION cigar cutters by comparing them to “the quintessential cigar city, Havana,” and boasting that its cutters have a “Havana signature,” referring to Havana, Cuba. Id. (emphasis added). Application File; Van Keppel Dep. at 18:13-24:13; 160:1-23. Applicant prominently advertises its cigar accessories in leading consumer cigar magazines, including Cigar Aficionado, on its web site, and in retailer catalogues, affixed with “HABANA”; “à la Havane”; and “CUBA” in prominent bold letters, and prominently displays images of iconic Cuban cigar bands such as COHIBA and H. UPMANN (instantly recognizable as such to the “cigar aficionados” that Applicant claims purchase its products, App. Mem. at 5; Lopez Decl. ¶ 28); Goldstein Decl. Exs. 4, 7-10, 12-13.4

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Applicant submitted no evidence in support of its other stated reason for selecting the mark, that Havana “is associated with … a leisurely lifestyle.” Resp. to Int. No. 1, Goldstein Decl. Ex. 5. 3 The phrase “à la Havane” literally translates from the French as “to Havana,” and may also mean “in Havana” as in “fabriqué à la Havane” (made in Havana). See Goldstein Decl. Ex. 6. 4 Applicant uses either reproductions of or original Cuban cigar bands and Cuban cigar box art to create its cutters; and uses reproductions of Cuban cigar bands or cigar box art to make its lighters and cases.

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Applicant’s deliberate, false association of its non-Cuban goods with Havana, Cuba include claims on its web site that its cigar accessories “achieve the classic ambience of the Havana cigar,” referring to Cuban cigars, have a “Havana signature,” and refer to “the quintessential cigar city, Havana,” adjacent to images of its goods prominently displaying “Habana” “à la Havane,” and “Cuba.” Goldstein Decl. ¶ 12; Ex. 10. Applicant’s slogan in its cigar magazine advertising for its HAVANA COLLECTION goods is “capturing the spirit of Havana one cigar at a time.” Id. Ex. 4. Nothing in these promotions disassociates the goods from Havana, Cuban cigars, or Opposers. The overwhelming majority of HAVANA COLLECTION cigar accessories, more than 95%, are sold through retail cigar stores, in which both Applicant’s and third parties’ cigar accessories are displayed and sold together with cigars, including with Applicant’s own cigar products. Goldstein Decl. ¶ 13; Ex. 11; Van Keppel Dep. at 68:3-23, 71:21-72:5. Applicant’s print media advertising is exclusively in cigar publications, including Cigar Aficionado and Smokeshop. Van Keppel Dep. at 118:25-136:3; Goldstein Decl. Ex. 4, 12. These consumer and trade cigar magazines regularly promote and cover cigar accessories together with advertising and coverage of cigars. Lopez Decl. ¶ 27; Goldstein Decl. ¶ 14, Ex. 12. Applicant’s cigar accessory advertisements typically display cigars, including its recently launched “HC” cigars.5 Id. Ex. 4. Applicant also promotes its cigar accessories in a semi-annual catalog sent to cigar retailers. Van Keppel Dep. at 115:23-118:15; Goldstein Decl. Ex. 13. Many of the registrations

Applicant’s carrying cases all use the same image, which prominently displays the word “Cuba,” and several of the eight images used for the lighters prominently display “Cuba” or “Habana.” Van Keppel Dep. at 35:15-46:8; Goldstein Decl. Exs. 7 and 8. Although Applicant claims that each cutter is unique, the cutter images prominently displayed on its website are affixed with “Habana” and “à la Havane.” Goldstein Decl. Ex. 9; Van Keppel Dep. at 92:4-95:24. 5 Applicant did not sell HAVANA COLLECTION cigars, although it represented to the USPTO when it filed its application on September 6, 2007 that it sold HAVANA COLLECTION cigars along with its HAVANA COLLECTION cigar accessories. Application File; Van Keppel Dep. at 45:20-24, 79:23-80:1.

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submitted by Applicant include both cigars and cigar accessories, including the same goods as Applicant. App. Mem. at 8; App. Ex. E. 7. Opposers’ HABANO/S Marks Opposers’ own the cited registered marks, HABANOS UNICOS DESDE 1492 and LA CASA DEL HABANO for cigars and cigar accessories, including humidors and cigar cases. Goldstein Decl. Ex. 14; App. Ex. F. Cubatabaco owns the prior pending certification mark application for HABANOS, Serial No. 77157193, for “cigars,” which certifies “that the cigars have their geographical origin in Cuba and are made from Cuban grown tobacco, ‘Cuba’ meaning the entire national territory of the Republic of Cuba.” Goldstein Decl. Ex. 15. Opposer Habanos S.A. affixes the “HABANOS” mark to the packaging of all its Cuban-origin cigars. Goldstein Decl. Ex. 16 (Deposition of Manual Garcia Morejon on May 15, 2007 in the matter of Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519, at 28:11-30:14, and Ex. 3 thereto). The marks “HABANOS,” HABANOS UNICOS DESDE 1492, and LA CASA DEL HABANO regularly appear in advertisements in U.S. cigar magazines, and on Opposers’ websites, www.habanos.com and www.lacasadelhabano.cu. Goldstein Decl. Ex. 16-17. The term “Habano” (and its plural “Habanos”) refers to Havana cigars, that is, 100% Cuban origin cigars, and is translated in leading dictionaries as “Havanan, Havana, of Havana,” “Havana [cigar],” “Cuban cigar,” “belonging or related to Havana,” and a cigar produced in Cuba with Cuban tobacco. Goldstein Decl. Ex. 18 (Larousse, Gran Diccionario English-Spanish Spanish-English Dictionary; The American Heritage Spanish Dictionary); see id. Ex. 19 (Real Academia Española Diccionario de la Lengua Española); see id. Ex. 16, Morejon Dep. at 19:924:10. The PTO has acknowledged this translation of “Habanos” in the HABANOS certification mark application, and elsewhere. Id. Ex. 15 (HABANOS Aug. 21, 2008 Office Action); id. Ex.

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20 (NICARAGUA HABANOS Final Refusal). ARGUMENT I.

STANDARDS FOR SUMMARY JUDGMENT In a motion for summary judgment, the moving party has the burden of establishing the

absence of any genuine issues of material fact and that it is entitled to summary judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 321 (1986); Nike, Inc. v. Bordes, Opp. No. 91178960, at 12 (Sept. 30, 2009). A genuine dispute with respect to material fact exists if sufficient evidence is presented that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992) (Board may not resolve issues of material fact against the non-moving party; it may only ascertain whether such issues are present). Thus, all doubts as to whether any factual issues are genuinely in dispute must be resolved against the moving party and all inferences must be viewed in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992); Nike, Inc., supra, at 12. Under these standards, Opposers are entitled to summary judgment on their section 2(e)(3) claim.6 Applicant’s motion for summary judgment on that claim and on Opposers’ section 2(d) claim must be denied. II.

THE MARK IS PRIMARILY GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE Applicant’s argument that, although its mark is “geographically misdescriptive,”

Application File, it is not primarily geographically deceptively misdescriptive under section

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The Board now addresses geographic deceptiveness claims under section 2(e)(3), not 2(a), although the standards are the same. See California Innovations, 329 F.3d at 1341; Anncas, 88 U.S.P.Q.2d at 1790.

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2(e)(3), is not supported by any evidence; is directly belied by its own deliberate advertising strategy that seeks to foster a false association with Havana, Cuba; presents attorney argument masquerading as fact, which has been expressly repudiated by Applicant; makes assertions without evidence that are plainly false; and ignores the substantive precedents of the Board and the Federal Circuit, including the applicability of the related goods test. The evidence and law clearly establish that Opposers, not Applicant, are entitled to summary judgment on their section 2(e)(3) claim. In the event the Board finds for Opposers on this claim, the Board need not reach the section 2(d) claim. Registration of a mark must be refused under section 2(e)(3) if “(1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer’s decision.” In re California Innovations, Inc., 329 F.3d 1334, 1341 (Fed. Cir. 2003); see TMEP § 1210.01(b). Applicant has admitted that its “goods are not manufactured or produced in and have no connection with Havana.” Application File; see also Amended Answer ¶ 40 (admitting allegations of Amended Opp. ¶ 40 that Applicant’s “goods do not come from, or otherwise originate in, Havana, Cuba or elsewhere in Cuba”). Applicant also did not dispute during the application process, and does not dispute now, that section 2(e)(3) bars its attempt to register its HAVANA COLLECTION mark for non-Cuban cigars. See Anncas, 88 U.S.P.Q.2d 1785. Thus, Applicant is left to argue, without any evidence in support, that somehow cigar consumers will finely parse the distinction between geographically deceptive HAVANA COLLECTION cigars and HAVANA COLLECTION cigar accessories (where cigars and cigar accessories are sold and promoted together, including under

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the same marks, including by both Applicant and Opposers), an argument that defies logic, common sense and law. A. The Primary Significance of the Mark is Havana, Cuba, a Generally Known Geographic Location Applicant expressly admits, and further asks the Board “to take judicial notice of the primary significance of the word ‘Havana’ as the name of the largest city of Cuba and a chief port in the West Indies,” App. Mem. at 6, indisputably a generally known geographic location, which establishes the first part of the section 2(e)(3) test.7 All the evidence and the repeated decisions of this Board affirm Applicant’s admission. See Statement of Facts, Point 2 (citing evidence); Anncas, 88 U.S.P.Q.2d at 1791; In re Bacardi & Co. Ltd., 1997 T.T.A.B. Lexis 169, at *3-5 (T.T.A.B. 1997) (Bacardi II) (copy annexed); In re Boyd Gaming Corp., 57 U.S.P.Q.2d 1944, 1946 (T.T.A.B. 2000); In re Ricardo Arregui, Serial No. 74/540,041, at 3-4 (T.T.A.B. April 26, 2001); In re BJIP, Inc., Serial No. 75/529,080, at 9-10 (T.T.A.B. July 18, 2001). The addition of the common word “collection” does not change the mark’s primary significance as a known geographic location, and Applicant does not argue otherwise. See Anncas, 88 U.S.P.Q.2d at 1791 (“The word CLUB does not detract from the primary geographic significance of the mark” HAVANA CLUB) (citing cases). In the above-cited cases, the Board has repeatedly held that the primary significance of a composite mark using similar terms with “HAVANA” is a generally known geographic location, such as HAVANA SELECT, HAVANA PRIMO, HAVANA CLIPPER, HABANA CLASICO, HAVANA STYLE, and OLD HAVANA. B.

Consumers Are Likely to Make a Material Goods-Place Association

The standard for establishing a goods/place association is not a high one. See California

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Because Applicant later appears to contradict this clear admission with a vague assertion of “the complete lack of geographic significance of the word Havana in association with Xikar’s goods,” App. Mem. at 9, Opposers further address the first California Innovations prong.

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Innovations, 329 F.3d at 1338, 1340 (noting “relatively easy burden of showing a naked goodsplace association”); In re Les Halles de Paris J.V., 334 F.3d 1371, 1373-74 (Fed. Cir. 2003); In re Loew’s Theatres, Inc., 769 F.2d 764, 766-68 (Fed. Cir. 1985); TMEP § 1210.04(a) (citing decisions). The undisputed evidence, from both Applicant and Opposers is more than sufficient to meet this standard, and it is doubtless “likely that the public, upon encountering [the listed] goods bearing the mark [HAVANA COLLECTION] would believe that the goods have some connection to [Havana].” In re Hiromichi Wada, 194 F.3d 1297, 1300 (Fed. Cir. 1999); see Statement of Facts, Points 3-6. This undisputed evidence shows that Havana, Cuba is well-known for the production, sale and export not only of its world famous cigars, but for high-quality humidors, and that Opposers promote and sell in Cuba and throughout the world cigar accessories, including cutters, lighters, humidors, and carrying cases, frequently under the same marks as its famous Cuban cigar brands. Applicant’s assertions, unsupported by any evidence, that Havana is not known as a source of cigar accessories, including humidors, is not only false, but is contradicted by regular coverage in the same magazine, Cigar Aficionado, in which Applicant regularly advertises. This undisputed evidence also establishes that cigars and cigar-related accessories are commonly sold in the same retail cigar establishments (including virtually all of Applicant’s HAVANA COLLECTION cigar accessories), often under the same marks, including by Applicant and Opposers, are advertised in the same cigar consumer and trade magazines (including all of Applicant’s print advertising), are promoted at cigar events, such as the annual cigar retailers convention, and have no function other than for use with cigars. In the face of these undisputed facts, Applicant simply, and inexcusably, ignores the related goods doctrine, which the Board and the Federal Circuit have expressly adopted for geographically deceptive

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marks. See In re Save Venice New York, Inc., 259 F.3d 1346 (Fed. Cir. 2001): In the modern marketing context, geographic regions that are noted for certain products or services actively promote and adapt their specialties to fit changing consumer needs. Thus we see no reason to believe that a modern merchant of Venice would not expand on the traditional Venetian products listed by the Board, to begin marketing products or services related to such goods. Similarly, from the consumer's perspective, we also find no reason to believe that the public strictly limits its association of a place to the geographic region's traditional products or services. … [W]e hold that the registrability of a geographic mark may be measured against the public's association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there. The essence of the test is whether consumers are likely to be confused by the source of the related goods identified by a distinctive geographic mark…. We agree with the Board that certain derivative “related goods” carrying a distinctive geographic mark would likely confuse consumers as to the source of the “related goods.” Id. at 1355 (emphasis added). This is precisely what Opposers have done: “expand[ed] on the traditional [Cuban] products [cigars], to begin marketing products [cigar accessories] related to such goods.” Id. In the absence of any evidence to the contrary, and in light of the evidence that cigars and cigar accessories are inextricably advertised, marketed and sold together by Opposers, by Applicant, and by others, Applicant’s have provided “no reason to believe that the public strictly limits its association of [Havana] to the geographic region's traditional products [cigars].” Id.; see also In re SF Investments, Inc., Serial Nos. 78645616, 78645618, at 12 (T.T.A.B. Jan. 24, 2008) (refusing registration of SMITHFIELD COLLECTION on grounds of geographic descriptiveness; “Because Smithfield [, Virginia] is noted for the curing and production of ham, consumers would naturally believe that mail order and online retail store services featuring other related food products such as meat, seafood, and poultry [under the SMITHFIELD COLLECTION mark] also emanate from Smithfield,” Virginia, even though they in fact do not). Crucially, as explained in SF Investments, under the related goods doctrine, the issue is not whether the related goods are in fact produced in the same geographic location as the primary

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goods. Rather, marks will be refused registration as geographically deceptive when related goods are sold in and associated with the geographic location identified in the mark, even if the specific goods in the mark are not produced in that place, id. at 11-12, and even if the public is aware that the goods are not actually manufactured in that location, see Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 U.S.P.Q.2d 1691, 1694-95 (T.T.A.B. 1996). Again, the focus is on whether consumers “would be likely to make the requisite goods/place association.” Id. at 1695; see Save Venice, 259 F.2d at 1355 (“registrability of a geographic mark may be measured against the public's association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there”) (emphasis added); In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1145 (TTAB 1993) (product may be found to originate from a place, even though product is manufactured elsewhere). The related goods test is especially appropriate when the goods are complementary, that is, when they are commonly used together. See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:26 (4th ed. 2008), and cases cited therein. It is difficult to imagine more complementary products than cigars and the listed cigar accessories, which (other than lighters) are used exclusively in connection with cigars, are sold and advertised in the same stores and publications as cigars, and the same companies sell both cigars and cigar accessories. Given the close association between Havana and its famous cigars, it is difficult to imagine any goods that more clearly meet the test of “derivative ‘related goods’ carrying a distinctive geographic mark [that] would likely confuse consumers as to the source of the ‘related goods,’” Save Venice, 259 F.3d at 1355, than Havana-marked cigar accessories. Here, Applicant does not dispute that Havana is renowned for cigars and that this renown would be material to consumer purchases of Applicant’s HAVANA COLLECTION cigars. See

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Anncas, 88 U.S.P.Q.2d at 1793; Guantanamera Cigars Co., 86 U.S.P.Q.2d at 1479-80. Yet, Applicant has submitted no evidence that this false goods/place association will be material to consumers when they purchase cigars, but not when those same consumers purchase cigar accessories under the same mark from the same company, including in the same stores. Applicant’s arguments that the false designation would be immaterial to consumers is meritless. These unsupported allegations are directly contradicted by Applicant’s own advertising, which directly fosters a false association with Havana, and Applicant’s admission that it selected the mark because of the association of Havana with Cuban cigars. Applicant in fact relies solely on allegations in its Answer and unsubstantiated attorney argument regarding consumer awareness: 1) of the embargo; 2) whether Cuba is known as a source of cigar-related accessories, and 3) of Xikar’s reputation. App. Mem. at 5-6. No competent evidence is submitted in support of any of these claims.8 Notably, Applicant has expressly repudiated, under oath, any factual basis for the improper attorney argument, masquerading as fact, that consumers are “presumed to be aware of the trade embargo,” App. Mem. at 5, or the bizarre attorney claim that consumers will associate HAVANA COLLECTION for cigar accessories with “a certain way of living, an exultation of the spirit, a joie de vivre that has nothing to do with cigars,” but rather with Ernest Hemingway “fishing for marlin with Fidel Castro or drink[ing] daiquiris with his wife, Mary.” Id. at 7 (emphasis added); See Goldstein Decl. Ex. 5 (App. Resp. to Int. Nos. 1, 6, 7: “Applicant adopted the mark ... because the word

8

Applicant’s only purported “evidence” for these assertions is Wikipedia, Ex. A, and a two-line, online promo blurb, Ex. B, App. Mem. at 5-6, neither of which is competent evidence. See Embotelladora Aga del Pacifico, SA de CV v. Jose Alfonso Serrano Gonzalez, Opposition No. 91175952, at 4 (T.T.A.B. Dec. 3, 2008) (Board “will not take judicial notice of evidence from Wikipedia or other sources which are available only online”); In re IP Carrier Consulting Group, 84 U.S.P.Q.2d 1028, 1032 (T.T.A.B. 2007). Even if considered, Ex. B proves nothing of relevance. That Exhibit B appears on the website of a person that Habanos S.A. has used as an expert on an unrelated topic in a different proceeding does not alter the relevance or admissibility of the two-line post.

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‘Havana’ is associated with ... Cuban cigars”; “Applicant does not know any particulars regarding Applicant’s customer’s knowledge of the Cuban embargo.”9 “Applicant has no direct knowledge concerning [the above-quoted statements from App. Mem. 7], which are taken from an argument advanced by Applicant’s counsel”). How Applicant’s attorneys can claim that Applicant’s use of “Havana” “has nothing to do with cigars,” when Applicant advertises that its goods “achieve the classic ambience of the Havana cigar,” Goldstein Decl. Ex. 10 (emphasis added), is a mystery. In any event, the Board has repeatedly rejected these unsupported “embargo” and “lifestyle” arguments for other “Havana” marks. See, e.g., Boyd Gaming, 57 U.S.P.Q.2d at 1945-47; Bacardi I, 48 U.S.P.Q.2d at 1034, 1035 n.13; Bacardi II, 1997 T.T.A.B. Lexis 169, at *2 (“unsupported contention that the mark [HAVANA STYLE] ‘evokes the image of a preCastro, free wheeling lifestyle’”); BJIP, Inc., Serial No. 75/529,080, at 8-10; Ricardo Arregui, Serial No. 74/540,041, at 5 n.2. Applicant’s deliberate and false promotion of an association between Applicant’s goods and Havana and Havana cigars in its advertising, on its website, and by prominent display of “Cuba” and Habana” on its goods is powerful and additional support of the materiality of the goods/place association. See Guantanamera Cigars Co., 86 U.S.P.Q.2d at 1479 (“Applicant evidently believed that the use of Cuban tobacco is a material factor in the decision to purchase a cigar because it included the false claim “Genuine Cuban Tobacco” on its product packaging”, constituting additional evidence supporting materiality finding); The Scotch Whiskey Ass’n v. Consolidated Distilled Prod., Inc., 210 U.S.P.Q. 639, 642 (N.D. Ill. 1981) (geographic deceptiveness reinforced by “the label [which] displays a castle and refers to a Scottish island”). 9

Applicant also stated what it “believes” about consumer knowledge of the embargo, which is not evidence. Int. Resp. No. 6.

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That Applicant has chosen HAVANA COLLECTION out of the universe of possible names for its cigar-related accessories that are not from Havana or Cuba – “the quintessential cigar city,” in Applicant’s words – is itself highly relevant to discerning materiality. No reason exists other than to seek to have consumers link its non-Havana product with Havana’s fame and reputation for great cigars. Indeed, Applicant admits this reason – “Applicant adopted the mark HAVANA COLLECTION because the word “Havana” is associated with … Cuban cigars.” Goldstein Decl. Ex. 5 (App. Resp. to Int. No. 1) (emphasis added). This deliberate, false association between Applicant’s goods and Havana will function in precisely the desired manner, leading consumers who might not otherwise purchase Applicant’s goods to do so. See In re Perry Mfg. Co., 12 U.S.P.Q.2d 1751, 1752 (T.T.A.B. 1989) (“[W]e can fathom no reason for a North Carolina manufacturer, with no connection to New York, to adopt a mark incorporating the words ‘New York’ and the New York skyline other than an attempt to appeal to the consumer’s desire for clothing connected with New York and its fashion image and industry.”). Applicant’s other section 2(e)(3) arguments are seriously misplaced. In United States Playing Card Co. v. Harbro, 81 U.S.P.Q.2d 1537 (T.T.A.B. 2006), there was no evidence that: the applicant fostered a false association between its goods and Las Vegas beyond the mark itself; playing cards are inextricably linked to casino gambling the way cigar accessories are linked to cigars; or casino gambling and playing cards are advertised, marketed, and sold together, including under the same marks. Applicant’s reliance on other registered marks that use “Havana,” particularly in the absence of any evidence of use, App. Mem. at 7-8; App. Ex. E, simply ignores the Board’s rejection of the same argument in Anncas, 88 U.S.P.Q.2d at 1793; see also In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001) (third party registrations have “little persuasive

18

value”; “Board must decide each case on its own merits”); see also T.B.M.P. § 704.03(b)(1)(B) (“probative value [of third-party registrations] is limited, particularly when … there is no evidence of actual use of the mark shown in the registration”).10 Applicant’s claim that these other registrations show “how restrictive opposers’ rights in their registered marks should be,” App. Mem. at 7, is unintelligible. Notably, the Board denied Opposers’ Rule 56(f) request to seek discovery concerning Applicant’s reliance on these registrations, Order, at 18, indicating that the Board agreed that these registrations are irrelevant.11 III.

APPLICANT IS NOT ENTITLED TO SUMMARY JUDGMENT ON THE SECTION 2(d) CLAIM Applicant fares no better in its scattershot, meritless arguments that there is no likelihood

of confusion between its application and Opposers’ registered HABANO/S marks or Cubatabaco’s prior pending HABANOS certification mark application. These arguments are unsupported by evidence, misstate the law, and ignore the related goods doctrine. Thus, Applicant asserts that the “question of likelihood of confusion is one of law,” App. Mem. at 7, but then omits the crucial remainder of the sentence in the two cases it cites : “based on underlying facts.” China Healthways Institute Inc. v. Xiaoming Wang, 83 U.S.P.Q.2d 1123, 1125 (Fed. Cir. 2007); (emphasis added); M2 Software Inc. v. M2 Communications Inc., 78 U.S.P.Q.2d 1944, 1946 (Fed. Cir. 2006) (“based on findings of relevant underlying facts”)

10

Most of these marks were registered based on one Examiner’s misunderstanding that cigars made from “Cuban seed tobacco” originated in Cuba, and, in light of Anncas, 88 U.S.P.Q.2d at 1793, are vulnerable to cancellation on that basis. Several of the marks are on the Supplemental Register and several are not for cigars or cigar accessories. Applicant is wrong that any of these marks are immune from cancellation, including for abandonment, fraud, and deceptiveness under section 2(a). Opposers have already petitioned to cancel two of the marks, HAVANA SUNRISE and HAVANA BLEND, and expect to proceed against others. 11 Applicant’s only identified witness admitted that he had no involvement in selecting the submitted registration, before Applicant’s counsel objected to any further questions on this topic. Van Keppel Dep. at 28:8-31:1.

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(emphasis added). du Pont likewise emphasizes that likelihood of confusion is evidence-based. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362 (C.C.P.A. 1973) (“Only the facts can do that [determine likelihood of confusion]. In every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.” Decision made only “after a thorough review of the entire record”). Here, Applicant has provided virtually no competent evidence to support its motion. By contrast, Opposers have, at this preliminary discovery stage, prior to any expert reports or testimony, submitted more than sufficient evidence to create a genuine issue of material fact. Applicant concedes that the similarity or dissimilarity of the marks and nature of the goods are the central considerations here. App. Mem. at 10. Focusing on these two factors, there is, at a minimum, a clear fact dispute as to likelihood of confusion between Cubatabaco’s HABANOS certification mark and HAVANA COLLECTION in a direct comparison of the marks, under the doctrine of foreign equivalents, and under the related goods test. See In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed. Cir. 2004) (addressing primarily these two factors); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002). First, HAVANA and HABANOS, both in standard character, are very similar “in their entireties as to appearance, sound, connotation and commercial impression,” one of the central factors of comparison for likelihood of confusion. du Pont, 476 F. 2d at 1361; see Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371-72 (Fed. Cir. 2005). As noted, the terms “Havana(s)” and “Habano(s)” are both used widely and interchangeably within the cigar industry and among cigar consumers, including in the United States, to refer to 100% Cuban origin cigars. Goldstein Decl. Exs. 1-3, 15-17, 20. Addition of

20

the common word “collection” (which Applicant disclaimed) to Applicant’s mark does not alter the overall similar commercial impression created by the dominant HAVANA/HABANOS portion of the marks. See, e.g.,Veuve Clicquot, 396 F.3d at 1372; In re Chatam Int’l, 380 F.3d at 1343; (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical”); Hewlett-Packard, 281 F.3d at 1266; TMEP § 1207.01(b)(iii) (citing cases). Second, under the doctrine of foreign equivalents, HAVANA and HABANOS, when applied to cigars and related goods, and certainly on summary judgment, have almost identical meanings, and are plainly confusingly similar. See Statement of Facts, Point 7 (“Habano” translated as Havanan, Havana, of Havana, or a Havana or Cuban cigar); id. Points 3, 7 (both “Havana” and “Habanos” are commonly used to refer to a Cuban cigar);12 see, e.g., Continental Nut Co. v. Cordon Bleu, Ltee, 494 F.2d 1397, 181 U.S.P.Q. 647 (C.C.P.A. 1974); In re Thomas, 79 U.S.P.Q.2d 1021, 1024 (T.T.A.B. 2006) (MARCHE NOIR for jewelry held likely to be confused with BLACK MARKET MINERALS for retail jewelry store services); In re American Safety Razor Co., 2 U.S.P.Q.2d 1459, 1460 (T.T.A.B. 1987). As in Thomas, the addition of a common word like “collection” or “minerals” does not alter the likelihood of confusion. The HABANOS mark, and the registered HABANOS UNICOS DESDE 1492 and LA CASA DEL HABANO marks are regularly advertised in United States cigar consumer magazines, including in conjunction with the renowned COHIBA cigar mark, whose logos Applicant affixes to its cutters, on Opposers’ websites, and on all packaging of Opposer Habanos S.A.’s Cuban origin cigars. See Statement of Facts, Point 7. Thus, United States cigar

12

It is difficult to discern how Applicant believes it is helped because the term Habano means a Havana cigar or a Cuban cigar, both meaning a cigar from Cuba. App. Mem. at 11. As noted, supra, n.8, the Board cannot take judicial notice of Wikipedia, Applicant’s sole source for claiming that Habanos “sometimes” has an additional meaning of “cigars in general.” App. Mem. at 12; App. Ex. H, .

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consumers are highly likely to be exposed to both the HABANOS certification mark and Applicant’s HAVANA COLLECTION mark, as well as the two cited registered marks. Third, the Examiner initially (and correctly) found that there “may be a likelihood of confusion” between Applicant’s mark and the HABANOS certification mark. Applicant’s suggestion that the HABANOS application should not block its application under section 2(d) because the PTO has not yet approved that application, App. Mem. at 12, is simply a non sequitur. As the Examiner noted, if the HABANOS “application matures into a registration, the examining attorney may refuse registration ... under Section 2(d).” Application File. Applicant’s unprecedented theory that a later-filed application is entitled to registration while a potentially blocking application is pending turns the Lanham Act’s priority rules upside down, and, of course, is without case support. 13 The Examiner withdrew its section 2(d) finding after Applicant deleted “cigars” from its application, without analyzing the related goods test. As addressed, supra, concerning Opposers’ section 2(e)(3) claim, cigar consumers so closely associate cigars with cigar accessories that the likelihood of confusion between HABANOS and HAVANA COLLECTION necessarily will extend from cigars to Applicant’s cigar accessories. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979) (in likelihood of confusion analysis, “[r]elated goods are those products which would be reasonably thought by the buying public to come from the same source if sold 13

Applicant relies on the prior Examiner’s refusal to register the HABANOS certification mark based on his flawed analysis that a certification mark that is geographically descriptive (as are numerous certification marks) is somehow “generic” for goods from that place. App. Mem. at 12. The PTO, through a new Examiner, has now withdrawn that flawed ground for refusal (and has raised different grounds for refusal, irrelevant here, which Cubatabaco will soon address). Goldstein Decl. Ex. 15. Applicant’s reliance on the CHABLIS case, Institut National des Appellations D’Origine v. Vintners Int’l Co., Inc., 22 U.S.P.Q.2d 1190 (Fed. Cir. 1992), shows a fundamental misunderstanding both of that case and of certification marks generally. CHABLIS was denied registration as a certification mark because it was found to be generic of a type of wine, not as a description of goods from a particular geographic area. By contrast, as the PTO regularly acknowledges, and as all evidence shows, the term “Habanos” specifically identifies cigars from Cuba, and therefore is registrable as a certification mark.

22

under the same mark”) (internal quotations omitted); Save Venice, 259 F.3d at 1355. Here, of course, it is virtually certain that consumers who buy cigar accessories under one mark would believe that cigars sold under the same mark came from the same source. Although third party registrations are generally of little probative value on the issue of likelihood of confusion because they fail to show use in the market, AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406 (C.C.P.A. 1973), such registrations are probative to show the relatedness of goods, see, e.g., Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81 U.S.P.Q.2d 1887, 1892-93 (T.T.A.B. 2007). Here, Applicant’s original application, Opposers’ two cited registrations, and many of the third party registrations submitted by Applicant are for cigars and cigar accessories, including the same accessories as Applicant. App. Ex. E, F; App. Mem. at 8. Applicant’s jumble of remaining miscellaneous arguments are meritless. It asserts that its mark is strong and unique, App. Mem. at 10, when clearly HAVANA COLLECTION is neither. As noted, it submits no evidence of the sophistication of its buyers. Id. The directory of the names of retail tobacconists, which has nothing to do with cigar or cigar accessory trademarks or USPTO applications or registrations, is irrelevant. App. Ex. I. Its claim that Havana is not known for any of Applicant’s goods, App. Mem. at 13, besides being false as shown, is irrelevant to the section 2(d) issue, which is addressed to source, not location, and it is not disputed that Habanos S.A. is a source of the identical cigar accessories as Applicant. See Statement of Facts, Points 4-5; App. Ex. F. Its reliance on marks for completely unrelated goods or services, in different classes, that use the term “Havana,” App. Mem. at 13-14; App. Ex. J, is likewise irrelevant, particularly in the absence of any evidence of use, and Applicant is unable to cite a single case suggesting otherwise. Veuve Clicquot, 396 F.3d at 1373 (“The probative value

23

of third party trademarks depends entirely upon their usage.”); Nett Designs, 236 F.3d at 1342; American Leisure Prod., 474 F.2d at 1406 (“We have frequently said that little weight is to be given [third party] registrations in evaluating whether there is likelihood of confusion.”). Applicant’s ipse dixit hyperbole that denial of registration would “cause a loss of confidence in the administrative judicial system,” is frivolous, particularly in light of the Board’s recent HAVANA CLUB decision, and Applicant’s deliberate and false association of its mark with Havana, Cuba and Havana cigars. See Anncas, 88 U.S.P.Q.2d at 1793 (“it is well established that even if some prior registrations have some characteristics similar to applicant’s, the USPTO's allowance of such prior registrations does not bind the Board”). CONCLUSION For the reasons stated herein, and on the prior papers and proceedings had herein, Applicant’s motion for summary judgment should be denied and Opposers’ cross-motion for summary judgment on its section 2(e)(3) claim should be granted. Dated: November 17, 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 true and correct copies of the foregoing OPPOSERS’ BRIEF IN OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT AND IN SUPPORT OF OPPOSERS’ CROSS-MOTION FOR SUMMARY JUDGMENT and Declarations and Exhibits in support thereof were served on Applicant by mailing, postage prepaid, said copy on November 17, 2009, via U.S. first-class mail, and a copy was sent by electronic mail, to: J. David Wharton, Reg. No. 25,717 STINSON MORRISON HECKER LLP 1201 Walnut St, Suite 2800 Kansas City, MO 64106-2159 [email protected] Attorneys for Applicant /David B. Goldstein/ DAVID B. GOLDSTEIN

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, ) ) Opposition No. 91186534 v. ) Serial No. 77273188 ) XIKAR, INC., ) ) Applicant. ) ) DECLARATION OF DAVID B. GOLDSTEIN IN SUPPORT OF OPPOSERS’ OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY JUDGMENT AND OPPOSERS’ CROSS-MOTION FOR SUMMARY JUDGMENT DAVID B. GOLDSTEIN, an attorney admitted to practice before the Courts of the State of New York and, inter alia, the United States District Courts of the Southern District of New York and the District of the District of Columbia, declares under penalty of perjury as follows: 1.

I am a member of Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C.,

counsel to Opposers CORPORACION HABANOS, S.A. (hereinafter “Habanos, S.A.”) and EMPRESA CUBANA DEL TABACO d.b.a. CUBATABACO (hereinafter “Cubatabaco”) (together “Opposers”). I submit this declaration in support of Opposers’ Opposition to Applicant’s Motion for Summary Judgment and Opposers’ Cross-Motion for Summary Judgment on its section 2(a), 2(e)(3) claim in the above-captioned proceeding 2.

Annexed hereto are certain exhibits referred to in Opposers’ Brief in Opposition

to Applicant’s Motion for Summary Judgment and in Support of Opposers’ Cross-Motion for Summary Judgment Motion. Many of the images of Applicant’s goods are being submitted herein in color, and I note that when these images are printed in black and white the clarity,

including the wording on the images of the goods, is often difficult to discern. Other exhibits referenced therein are annexed to the Declaration of Ana Lopez Garcia, filed herewith. 3.

Annexed hereto as Exhibit 1 are true and correct copies of the entry, or excerpts

from the entry, for “Havana” in the following encyclopedias, dictionaries and The Columbia Gazetteer of North America which are relevant to show that Havana is a well-known location in Cuba (the capital of Cuba), that “Havana” has long meant and currently means a cigar made in Cuba and/or from tobacco grown in Cuba, namely from: (a) The Columbia Gazetteer of North America (Saul B. Cohen ed. 2000), republished at www.bartleby.com, printed on September 7, 2007; (b) The Encyclopedia Britannica Online, http://www.britannica.com, printed on September 21, 2007; (c) Random House Webster’s Dictionary, at 331 (4th ed. 2001); (d) The Random House Dictionary of the English Language, at 877 (2d ed. Unabridged 1983); (e) Webster’s New Collegiate Dictionary, at 525 (1977); (f) The Oxford English Dictionary, at 123 (1933, 1970); (g) Webster’s New Geographical Dictionary, at 492 (1988); (h) The World Book Encyclopedia, at 86-87 (1993); (i) The New Encyclopaedia Britannica, at 544 (15th ed. 1988). 4.

Annexed hereto as Exhibit 2 are true and correct copies of excerpts from

consumer-oriented English-language cigar books published or sold in the United States, which use the terms “Havana(s)” or “Havana cigar(s)” to mean cigars manufactured in Cuba from Cuban tobacco, including in the book titles, which are relevant to show that these terms are widely used and understood in the United States to mean a cigar from Cuba, and that Havana, Cuba is renowned for the production of cigars: (a) Richard B. Perelman, Perelman’s Pocket Cyclopedia of Havana Cigars, at 1-3, 29-34 (3d ed. 2005); (b) Gerard Pere et Fils, Havana Cigars, at Foreward (1997); (c) Min Ron Nee, An Illustrated Encyclopedia of Post-Revolution

2

Havana Cigars, at 193 (2003); (d) Anwer Bati, The Cigar Companion, at 31-33, 38, 66, 76-77, 196 (1993). 5.

Annexed hereto as Exhibit 3 are true and correct copies of: (a) excerpts of articles

referring to “Havana(s)” or “Havana cigars” as cigars from Cuba, and/or discussing production of cigars in Havana, from the United States cigar consumer magazines Cigar Aficionado, and the Cigar Aficionado website, www.cigaraficionado.com, Smoke, and the Smoke website, www.smokemag.com, and Smokeshop, and the Smokeshop websites, www.smokeshop.com, and www.gosmokeshop.com, which are relevant to show that these terms are widely used and understood in the United States to mean a cigar from Cuba, and that Havana is renowned for the production of cigars; and (b) printouts of news articles published in United States newspapers after 2003, and retrieved from the Westlaw database NPMJ (Major Newspapers) (and a printout from Westlaw of the newspapers included in the NPMJ database), referring to “Havana(s)” or “Havana cigar(s)” as cigars from Cuba, which are relevant to show that these terms are widely used by the general media widely understood in the United States to mean a cigar from Cuba. 6.

Annexed hereto as Exhibit 4 is a true and correct copy of Exhibits 9 and 10

(Applicant’s advertisements in Cigar Aficionado, Cigar Magazine, Cigar Press, Smokeshop and Tobacconist Magazine, and advertisement preparation materials for same) to the Deposition of Applicant’s president and founder, Kurt Van Keppel, taken on October 13, 2009 in Kansas City, Missouri in the above-captioned proceeding (“Van Keppel Dep.”), which show that Applicant regularly advertises its HAVANA COLLECTION cigar accessories in Cigar Aficionado, Smokeshop and other U.S. consumer cigar magazines. Exhibit 4 also shows that Applicant’s slogan in its cigar magazine advertising for its HAVANA COLLECTION goods is “capturing the spirit of Havana one cigar at a time.”

3

7.

Annexed hereto as Exhibit 5 is a true and correct copy of Applicant’s Responses

to Opposers’ First Set of Interrogatories to Applicant in the above-caption proceeding, dated September 10, 2009. 8.

Annexed hereto as Exhibit 6 is a true and correct copy of a certified translation of

the French phrase “à la Havane” from The LanguageWorks, Inc., dated November 16, 2009, which is relevant to show that the French phrase “à la Havane” translates in English as “to Havana” or “in Havana” as in “fabriqué à la Havane,” or “made in Havana.” 9.

Annexed hereto as Exhibit 7 are true and correct copies of excerpts from Exhibit 7

(Applicant’s advertisement from Applicant’s website) and Exhibit 13 (Applicant’s advertisement used by Applicant’s salepersons) to the Van Keppel Dep., which show that Applicant’s HAVANA COLLECTION carrying cases prominently display the word “Cuba.” 10.

Annexed hereto as Exhibit 8 are true and correct copies of excerpts from Exhibit 8

(Applicant’s magazine advertisements), Exhibit 9 (Applicant’s magazine advertisements) and Exhibit 13 (Applicant’s advertisement used by Applicant’s salepersons) to the Van Keppel Dep., which show that several versions of Applicant’s HAVANA COLLECTION lighters prominently display the word “Cuba” or “Habana.” 11.

Annexed hereto as Exhibit 9 are true and correct copies of excerpts from Exhibit 7

(Applicant’s advertisement from Applicant’s website), Exhibit 8 (Applicant’s magazine advertisements), Exhibit 11 and Exhibit 13 (Applicant’s advertisement used by Applicant’s salepersons) to Van Keppel Dep., which prominently display Applicant’s HAVANA COLLECTION cigar cutters with the words “Habana” or “à la Havane.” 12.

Annexed hereto as Exhibit 10 are true and correct copies of excerpts from Exhibit

7 (Applicant’s advertisement from Applicant’s website) to Van Keppel Dep., which show that

4

Applicant claims on its web site that its HAVANA COLLECTION cigar accessories “achieve the classic ambience of the Havana cigar,” refer to “the quintessential cigar city, Havana,” and have a “Havana signature,” with images of its HAVANA COLLECTION goods prominently displaying “Habana” “à la Havane,” and “Cuba.” 13.

Applicant has produced documents, APP 0336-39 marked “Highly Confidential

Attorneys Eyes Only,” which contain 2006-09 sales data for HAVANA COLLECTION cigar cutters, lighters and cases, showing that sales have been overwhelmingly through cigar retailers, with a very small percentage over the internet (94% of HAVANA COLLECTION cigar cutters, over 98% of HAVANA COLLECTION cigar lighters, and over 96% of HAVANA COLLECTION cigar cases). Yesterday, November 16, 2009, Applicant served Applicant’s Supplemental Responses to Opposers’ First Set of Interrogatories to Applicant, dated November 16, 2009, a true and correct copy of which is annexed hereto as Exhibit 11, which, although contradicting Applicant’s own sales data, confirms that the overwhelming majority of HAVANA COLLECTION cigar accessories are sold through retail cigar stores (claiming that “[a]pproximately 85% of Applicant’s sales of cigar cutters … [and] approximately 93% … of [its] cigar lighters … are through retailers”, and the remainder over the internet). Should Applicant seek to impeach its own sales data in subsequent filings, Opposers will file APP0336339 under seal. 14.

Annexed hereto as Exhibit 12 are true and correct copies of excerpts from the

U.S. consumer and trade cigar magazines Cigar Aficionado, Smokeshop and Smoke (2008-09), which are relevant to show that consumer and trade cigar magazines regularly promote and cover cigar accessories together with advertising and coverage of cigars. Almost every issue of these

5

magazines contain advertisements of cigar accessories, and most issues contain news or other coverage of cigar accessories. 15.

Annexed hereto as Exhibit 13 are true and correct copies of a sample of

Applicant’s semi-annual catalog, from Fall 2007 and Fall 2008, showing its HAVANA COLLECTION cigar cases displaying the word “Cuba,” its lighters displaying the word “Cuba” or “Habana,” and its cigar cutters displaying the words “Habana” or “à la Havana.” 16.

Annexed hereto as Exhibit 14 are true and correct copies of: (1) the registration

certificate of Registration No. 1,970,911, LA CASA DEL HABANO & Design, dated April 30, 1996, and printed from TDR on November 16, 2009, and the TARR Report of said mark, printed on November 16, 2009, showing that the mark is in full force and effect and owned by Opposer Cubatabaco, and that a Section 8 & 9 Declaration for Renewal of the mark has been accepted by the USPTO; and (2) the registration certificate of Registration No. 2,177,837, HABANOS UNICOS DESDE 1492 & Design, dated August 4, 1998, and printed from TDR on November 16, 2009, and the TARR Report of said mark, printed on November 16, 2009, showing that the mark is in full force and effect and owned by Opposer Habanos, S.A., and that a Section 8 & 9 Declaration for Renewal of the mark has been accepted by the USPTO. 17.

Annexed hereto as Exhibit 15 are true and correct copies of: (1) the TARR Report

for Opposer Cubatabaco’s application for the certification mark HABANOS, Serial No. 77157193 in International Class A for cigars, printed on November 16, 2009; (2) USPTO Office Actions, dated August 21, 2008 and June 19, 2009, for HABANOS, Serial No. 77157193, available on TDR; and (3) excerpts from Response to USPTO Office Action, dated August 10, 2008, for HABANOS, Serial No. 77157193, available on TDR.

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18.

Annexed hereto as Exhibit 16 are true and correct copies of excerpts from the

Deposition on Written Questions of Manuel Garcia Morejon, taken on May 15, 2007 in the matter of Corporacion Habanos, S.A. v. Anncas, Inc., Opposition No. 91165519, including Exhibits 1, 5, 6, 7 and excepts from Exhibits 3 and 8. 19.

Annexed hereto as Exhibit 17 are true and correct copies of: (1) advertisements in

the United States consumer cigar magazine Smoke displaying Opposers’ HABANOS, HABANOS UNICOS DESDE 1492, and LA CASA DEL HABANO marks; and (2) printouts on November 16 and 17, 2009, from Opposers’ websites, www.habanos.com and www.lacasadelhabano.cu, prominently displaying Opposers’ HABANOS, HABANOS UNICOS DESDE 1492, and LA CASA DEL HABANO marks. The magazine covers are not included because of electronic file size. 20.

Annexed hereto as Exhibit 18 are true and correct copies of the entry for “habano”

in: (1) Larousse’s English-Spanish Dictionary, at 362 (Unabridged ed. 1994): and the American Heritage Spanish Dictionary: English / Spanish, at 277 (2d ed., 2001), which is relevant to show that the term “Habano” (and its plural “Habanos”) is translated in leading dictionaries as “Havanan, Havana, of Havana,” a “Havana [cigar]” or a “Cuban cigar.” 21.

Annexed hereto as Exhibit 19 is a true and correct copy of a certified translation

of the entry for “habano” in the Real Academia Española’s Diccionario de la Lengua Española, (22nd ed. 2001) (republished at http://buscon.rae.es), original entry in Spanish printed on November 13, 2007, which is relevant to show that “habano” means “[b]elonging or related to Havana…” and the primary meaning of the noun “habano” is a “[p]ure cigar produced on the island of Cuba with leaves of the plant from that country.”

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