Oa Kuba Kuba

UNITED STATES PATENT AND TRADEMARK OFFICE SERIAL NO:

77/099522

MARK: KUBA KUBA

*77099522*

CORRESPONDENT ADDRESS: JOHN W. GOLDSCHMIDT, JR. DILWORTH PAXSON LLP 1735 MARKET STREET 3200 MELLON BANK CENTER PHILADELPHIA, PA 19103-7595

APPLICANT: Drew Estate

RESPOND TO THIS ACTION: http://www.uspto.gov/teas/eTEASpageD.htm GENERAL TRADEMARK INFORMATION:

http://www.uspto.gov/main/trademarks.htm

Jonathan Drew, Inc. d/b/a

CORRESPONDENT’S REFERENCE/DOCKET NO: 07-1008 CORRESPONDENT E-MAIL ADDRESS:

OFFICE ACTION TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE. ISSUE/MAILING DATE: This Office action is in response to applicant’s communication filed on March 9, 2009. It is called to applicant’s attention that two recently issued decisions by the Trademark Trial & Appeal Board directly affect this application. In the case of Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB, 2008), the trademark “Guantanamera” for tobacco, namely, cigars was refused registration under Trademark Act § 2(e)(3), and in the case of Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB, 2008), (decided September 26, 2008), the trademark “Havana Club” for cigars made from Cuban seed tobacco was also refused registration under Trademark Act § 2(e)(3). Correspondingly, a trademark containing a recognized geographical location relating to Cuba for cigars would be primarily geographically deceptively misdescriptive. Here, applicant’s mark contains the word Kuba, a misspelling of the word Cuba. Whether the recitation of goods lists applicant’s product as “cigars made from Cuban seed tobacco” or “cigars”, the mark would be unregistrable under Trademark Act § 2(e)(3), nonetheless. The reason for this is that “there is an insufficient connection between Cuban seed tobacco, which is descended from tobacco seeds taken from Cuba many decades age, and [Cuba] to support a finding that cigars made from Cuban seed tobacco come from or originate in [Cuba]” (Anncas, 1793). Correspondingly, applicant’s mark is

unregistrable under Trademark Act § 2(e)(3), whether the goods are identified as cigars, tobacco, and cigarettes or cigars made from Cuban seed tobacco, Cuban seed tobacco, and cigarettes made from Cuban seed tobacco. Therefore, the following actions are instituted: The refusal to register the mark under Trademark Act § 2(e)(2) has been withdrawn. Registration is refused because the applied-for mark consists of or includes geographically deceptive and primarily geographically deceptively misdescriptive matter in relation to the identified goods. Trademark Act Sections 2(a) and 2(e)(3), 15 U.S.C. §1052(a), (e)(3); see In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003); In re Cal. Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §§1210, 1210.01(b)-(c). A mark is geographically deceptive and primarily geographically deceptively misdescriptive if the following is shown: (1) The primary significance of the mark is a generally known geographic place or location; (2) The goods for which applicant seeks registration do not originate in the geographic place identified in the mark; (3) Purchasers would be likely to make a goods-place association; that is, purchasers would be likely to believe that the goods originate in the geographic place identified in the mark; and (4) The misrepresentation regarding the geographic origin of the goods is material to the purchaser’s decision to buy the goods in question. In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003); In re Cal. Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1859 (Fed. Cir. 2003); TMEP §1210.01(b)-(c). Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. The amendment to the recitation of goods submitted March 9, 2009, in which the reference to Cuban seed tobacco was deleted, has been accepted. Applicant submitted March 9, 2009, information that Kuba refers to an extinct kingdom located in Africa in Zaire, now the Democratic Republic of the Congo. Applicant asserts that its mark would engender an impression of the culture of the Kuban Kingdom, rather than Cuba, so that its mark would not be geographically misdescriptive of Cuba. Applicant’s assertion is unpersuasive. The primary significance to the purchasing public of a mark is to be considered under the test to determine whether a mark is primarily geographically deceptively misdescriptive. An applicant’s desire that its mark engender another meaning beyond that of its primary meaning in relation to the goods it identifies, so that its primary meaning is obscured, has little bearing upon the issue. See: In re South Park Cigar Inc., 82 USPQ2d 1507 (TTAB, 2007). Because the word “Kuba” has a meaning other than the wordCuba, does not detract from the primary impression of the word as that of an island in the Caribbean. “Kuba” is a misspelled version of the geographical word “Cuba” and as used as a source indicator for tobacco products is unregistrable.

/David C. Reihner/, Examining Attorney Law Office 111, 571-272-9392 571-273-9111 fax.

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail [email protected]. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses. If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.