Kuba Kuba

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

77099522

LAW OFFICE ASSIGNED

LAW OFFICE 111

MARK SECTION (no change) ARGUMENT(S) Applicant submits the following response to the Office Action dated September 8, 2009. Identification of Goods Contrary to prior assertions, Applicant does not intend to the use the mark in connection with cigars made from Cuban seed tobacco or Cuban seed tobacco. The identification of goods has been amended accordingly. Refusal to Register The Examining Attorney refuses registration on the basis of primarily geographically descriptiveness under Section 2(e)(2). Applicant respectfully disagrees and submits that its mark cannot be characterized as being geographic, primarily or otherwise, but is rather a distinctive, coined term that functions solely as a trademark. Applicant incorporates by reference all relevant arguments and evidence from its prior responses. Applicant submits that a prima facie case of primary geographic descriptiveness has not been established. A primarily geographically descriptive mark is one (i) that is a name of a place known generally to public, and (ii) that public would believe goods or services for which mark is sought to be registered originate in that place. See In re California Innovations Inc., 66 USPQ2d 1853 (Fed. Cir. 2003); In re London & Edinburgh Ins. Group Ltd., 36 USPQ2d 1367 (TTAB 1995) citing In re Societe Generale des Eaux Minerales de Vittel S.A., 3 USPQ2d 1450 (Fed. Cir. 1987). Applicant's mark is simply not geographic. Applicant adopted its distinctive KUBA KUBA mark while, in part, drawing from the overall look and feel of the culture of the Kuba Kingdom. Applicant submitted preliminary information on the Kuba Kingdom, people, and culture in Exhibit 4 in its amendment dated November 26,2007. Applicant now provides further information on the Kuba Kingdom, people and culture to support the nature of the KUBA KUBA mark. The Kuba Kingdom existed during the 16th century through to about the 19th century in Southeastern Congo, now present day Zaire. See Exhibit A. The Kuba Kingdom existed on a continent of Africa. The art of the Kuba Kingdom is recognized in

many circles for its ornate characteristics. See Exhibit B. The people of the Kuba Kingdom were traders, farmers, fishermen, and hunters. See Id; see also Exhibits C through K. Moreover, a purchaser of Applicant's goods would not likely make a goods-place association. The term Kuba may be used to refer generally to the look and feel of the culture and people of the Kuba Kingdom. Kuba Kuba is not a place. In the absence of the Examining Attorney agreeing with Applicant's analysis, Applicant asserts that even if geographic significance is associated with "Kuba Kuba" such significance is of so little significance it could only be minor, obscure, and unconnected with Applicant's goods in view of the nature of the KUBA KUBA mark. Applicant's mark is not a misspelling of the term Cuba, nor does Cuba have any relevance to the nature, characteristics, or meaning of the KUBA KUBA mark. Incidentally, the record remains devoid of any evidence that the term "Kuba" is a misspelling of, or relates to, the term "Cuba." Conclusion In view of the foregoing, Applicant submits that the application is in condition for acceptance and requests passage of the mark to publication.

EVIDENCE SECTION EVIDENCE FILE NAME(S) ORIGINAL PDF FILE CONVERTED PDF FILE(S) (32 pages)

evi_38104110134-183820891_._KUBA_EXHIBITS.PDF \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0002.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0003.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0004.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0005.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0006.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0007.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0008.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0009.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0010.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0011.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0012.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0013.JPG

\\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0014.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0015.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0016.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0017.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0018.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0019.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0020.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0021.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0022.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0023.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0024.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0025.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0026.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0027.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0028.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0029.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0030.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0031.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0032.JPG \\TICRS\EXPORT6\IMAGEOUT6\770\995\77099522\xml1\ROA0033.JPG DESCRIPTION OF EVIDENCE FILE

printouts of Internet search for Kuba Kingdom.

GOODS AND/OR SERVICES SECTION (current) INTERNATIONAL CLASS

034

DESCRIPTION

Cigars, tobacco and related products, namely, cigarettes, cigar boxes, lighters, holders, ashtrays, cigar bands, cigar cutters, humidors, and cigar tubes FILING BASIS

Section 1(b)

GOODS AND/OR SERVICES SECTION (proposed) INTERNATIONAL CLASS

034

DESCRIPTION

Cigars, tobacco and related products, namely, cigarettes, cigar boxes, lighters, holders, ashtrays, cigar bands, cigar cutters, humidors, and cigar tubes FILING BASIS

Section 1(b)

SIGNATURE SECTION DECLARATION SIGNATURE

The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.

RESPONSE SIGNATURE

/Philip J. Foret/

SIGNATORY'S NAME

Philip J. Foret

SIGNATORY'S POSITION

Attorney of Record, Reg. No. 51,689

DATE SIGNED

03/09/2009

AUTHORIZED SIGNATORY

YES

FILING INFORMATION SECTION SUBMIT DATE

Mon Mar 09 18:42:21 EDT 2009

TEAS STAMP

USPTO/ROA-38.104.110.13420090309184221133269-7709 9522-4303813e21d64ee78bcc dbdf3f0236ca0b4-N/A-N/A-2 0090309183820891402

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. 77099522 has been amended as follows: ARGUMENT(S) In response to the substantive refusal(s), please note the following: Applicant submits the following response to the Office Action dated September 8, 2009. Identification of Goods

Contrary to prior assertions, Applicant does not intend to the use the mark in connection with cigars made from Cuban seed tobacco or Cuban seed tobacco. The identification of goods has been amended accordingly. Refusal to Register The Examining Attorney refuses registration on the basis of primarily geographically descriptiveness under Section 2(e)(2). Applicant respectfully disagrees and submits that its mark cannot be characterized as being geographic, primarily or otherwise, but is rather a distinctive, coined term that functions solely as a trademark. Applicant incorporates by reference all relevant arguments and evidence from its prior responses. Applicant submits that a prima facie case of primary geographic descriptiveness has not been established. A primarily geographically descriptive mark is one (i) that is a name of a place known generally to public, and (ii) that public would believe goods or services for which mark is sought to be registered originate in that place. See In re California Innovations Inc., 66 USPQ2d 1853 (Fed. Cir. 2003); In re London & Edinburgh Ins. Group Ltd., 36 USPQ2d 1367 (TTAB 1995) citing In re Societe Generale des Eaux Minerales de Vittel S.A., 3 USPQ2d 1450 (Fed. Cir. 1987). Applicant's mark is simply not geographic. Applicant adopted its distinctive KUBA KUBA mark while, in part, drawing from the overall look and feel of the culture of the Kuba Kingdom. Applicant submitted preliminary information on the Kuba Kingdom, people, and culture in Exhibit 4 in its amendment dated November 26,2007. Applicant now provides further information on the Kuba Kingdom, people and culture to support the nature of the KUBA KUBA mark. The Kuba Kingdom existed during the 16th century through to about the 19th century in Southeastern Congo, now present day Zaire. See Exhibit A. The Kuba Kingdom existed on a continent of Africa. The art of the Kuba Kingdom is recognized in many circles for its ornate characteristics. See Exhibit B. The people of the Kuba Kingdom were traders, farmers, fishermen, and hunters. See Id; see also Exhibits C through K. Moreover, a purchaser of Applicant's goods would not likely make a goods-place association. The term Kuba may be used to refer generally to the look and feel of the culture and people of the Kuba Kingdom. Kuba Kuba is not a place. In the absence of the Examining Attorney agreeing with Applicant's analysis, Applicant asserts that even if geographic significance is associated with "Kuba Kuba" such significance is of so little significance it could only be minor, obscure, and unconnected with Applicant's goods in view of the nature of the KUBA KUBA mark. Applicant's mark is not a misspelling of the term Cuba, nor does Cuba have any relevance to the nature, characteristics, or meaning of the KUBA KUBA mark. Incidentally, the record remains devoid of any evidence that the term "Kuba" is a misspelling of, or relates to, the term "Cuba." Conclusion In view of the foregoing, Applicant submits that the application is in condition for acceptance and requests passage of the mark to publication.

EVIDENCE Evidence in the nature of printouts of Internet search for Kuba Kingdom. has been attached. Original PDF file: evi_38104110134-183820891_._KUBA_EXHIBITS.PDF Converted PDF file(s) (32 pages) Evidence-1 Evidence-2 Evidence-3 Evidence-4 Evidence-5 Evidence-6 Evidence-7 Evidence-8 Evidence-9 Evidence-10 Evidence-11 Evidence-12 Evidence-13 Evidence-14 Evidence-15 Evidence-16 Evidence-17 Evidence-18 Evidence-19 Evidence-20 Evidence-21 Evidence-22 Evidence-23 Evidence-24 Evidence-25 Evidence-26 Evidence-27 Evidence-28 Evidence-29 Evidence-30 Evidence-31 Evidence-32 CLASSIFICATION AND LISTING OF GOODS/SERVICES Applicant proposes to amend the following class of goods/services in the application: Current: Class 034 for Cigars, tobacco and related products, namely, cigarettes, cigar boxes, lighters, holders, ashtrays, cigar bands, cigar cutters, humidors, and cigar tubes 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)).

Proposed: Class 034 for Cigars, tobacco and related products, namely, cigarettes, cigar boxes, lighters, holders, ashtrays, cigar bands, cigar cutters, humidors, and cigar tubes 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)). SIGNATURE(S) Declaration Signature I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration. Response Signature Signature: /Philip J. Foret/ Date: 03/09/2009 Signatory's Name: Philip J. Foret Signatory's Position: Attorney of Record, Reg. No. 51,689 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: 77099522 Internet Transmission Date: Mon Mar 09 18:42:21 EDT 2009 TEAS Stamp: USPTO/ROA-38.104.110.134-200903091842211 33269-77099522-4303813e21d64ee78bccdbdf3 f0236ca0b4-N/A-N/A-20090309183820891402