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

Proceeding

ESTTA270221 03/04/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 91185180

Party

Defendant NICARAGUA TOBACCO IMPORTS, INC.

Correspondence Address

Submission

Jose Gutman Fleit, Gibbons, Gutman, Bongini, PL 551 N.W. 77th Street Boca Raton, FL 33487 UNITED STATES [email protected] Opposition/Response to Motion

Filer's Name

Jose Gutman

Filer's e-mail

[email protected]

Signature

/Jose Gutman/

Date

03/04/2009

Attachments

0_Applicant's Response Brief 30409.pdf ( 22 pages )(94384 bytes ) 1_Applicant's Response Brief and Exhibits.pdf ( 8 pages )(1457810 bytes ) 2_Applicant's Response Brief and Exhibits.pdf ( 4 pages )(1978354 bytes ) 3_Applicant's Response Brief and Exhibits.pdf ( 9 pages )(870916 bytes ) 4_Applicant's Response Brief and Exhibits.pdf ( 13 pages )(2575537 bytes ) 5_Applicant's Response Brief and Exhibits.pdf ( 19 pages )(678028 bytes ) 6_Applicant's Response Brief and Exhibits.pdf ( 12 pages )(366433 bytes )

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ____________________________________ / TATUAJE CIGARS, INC.

Opposition No. 91185180

Opposer,

Appl. Ser. No.: 77/359,141

v. NICARAGUA TOBACCO IMPORTS, INC.,

Mark: TATTOO

Applicant. ____________________________________ /

APPLICANT’S RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT Applicant Nicaragua Tobacco Imports, Inc., (“Applicant”), through its undersigned counsel, hereby responds to the Summary Judgment Motion of Opposer Tatuaje Cigars, Inc., (“Opposer”) in its Opposition of the Mark TATTOO. (“Applicant’s Mark”).

I. Introduction Applicant is a well established producer and distributor of cigars that routinely develops and promotes new in-house brands of cigars for sale to the general public. Applicant had identified, without actual knowledge of Opposer’s mark TATUAJE, the mark TATTOO for cigar products. The USPTO Examiner approved the mark TATTOO for registration. Once the Applicant’s mark was published for opposition, Opposer attempted to contact Applicant regarding the Applicant’s application and the Applicant was contacted by an associate of both the Applicant and Opposer regarding the Application for the mark TATTOO. This was Applicants first actual knowledge of Opposer’s mark. -1-

The Applicant investigated Opposer’s product after this contact. Upon investigation, the Applicant noticed that Opposer’s cigars marketed under the “TATUAJE” brand were contained in boxes bearing the “TATUAJE” Mark. The Applicant further noticed that the boxes containing Opposer’s products also had other marks adjacent to the “TATUAJE” mark, including the term “Puros Cubanos,” which translates to “Pure Cubans,” and a stylized “tobacco leaf stick” logo that has been established by the Cuban Government as an indicator of Genuine Cuban Cigars. The Applicant was confused by these markings since the sale of Genuine Cuban Cigars is illegal in the United States. The Applicant realized that this was clearly a deceptive sales practice by the Opposer to cause purchasers to believe that these products were Genuine Cuban Cigars, a distinction that, if true, would raise their demand and value among cigar aficionados.

II. Stipulated Facts 1) Applicant agrees that Spanish is a commonly spoken and understood language in the United States. 2) Applicant agrees that the goods and services specified in the Federal Registration for the TATUAJE mark are similar to the subject trademark application for TATTOO 3) The Applicant agrees that the channels of trade commonly used for the goods specified in the Federal Registration for the TATUAJE mark are similar to the channels of trade commonly used for the goods specified in the subject trademark application for TATTOO.

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III. Contested Facts The Applicant asserts that Summary Judgment is improper in this case due to the number of outstanding contested facts that require further fact finding and adjudication. The contested facts in this matter by issue are listed below and discussed in detail thereafter.

A. Contested Facts Concerning No Confusing Similarity The Applicant asserts there are contested underlying facts to support a finding of confusing similarity between Applicant’s mark TATTOO and Opposer’s mark TATUAJE, and in particular underlying facts to be used in a proper analysis under the Doctrine of Foreign Equivalents. These facts include: a) Whether the connotations of TATTOO and TATUAJE are sufficiently similar, given the multiple translations of TATUAJE into English (and also the multiple translations of TATTOO into Spanish), to cause confusion to an observer in the marketplace. b) Even assuming a sufficient similarity of connotation between TATTOO and TATUAJE, would a consumer stop and think to translate TATUAJE into TATTOO when encountering the mark TATTOO as they appear in their channels of commerce before the consumer made a purchase decision. c) Whether the “Sight and Sound” of TATTOO and TATUAJE are sufficiently similar, even when considered in conjunction with any similarity in their connotation, to be likely to cause confusion.

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B. Contested Facts concerning Affirmative Defense of “Unclean Hands” 1) Does Opposer’s use of “Puros Cubanos,” which translates to “Pure Cubans,” in close proximity to and in conjunction with the “Tatuaje” mark on their product unfairly deceives consumers to believe that Opposer’s products are “Pure Cuban” tobacco cigars? 2) Does Opposer’s use of the stylized “tobacco leaf stick” logo established by the Cuban Government to identify genuine Cuban cigars, as used in conjunction with the term “Puros Cubanos,” and in close proximity to and in conjunction with the “Tatuaje” mark on their product, unfairly deceives consumers to believe that Opposer’s products are “Pure Cuban” tobacco cigars? 3) Does Opposer’s specimen provided to the USPTO with Opposer’s Statement of Use to obtain Opposer’s registration of its mark Tatuaje, misrepresent Opposer’s actual use of its mark Tatuaje such that any registration resulting therefrom should not be given any legal force; where Opposer’s use of its mark Tatuaje at the time of its Statement of Use was actually used in close proximity to and in conjunction with the term “Puros Cubanos” and in close proximity to and in conjunction with the stylized leaf logo established by the Cuban Government to identify genuine Cuban cigars, thereby unfairly deceiving consumers to believe that Opposer’s product is a “Pure Cuban” tobacco cigar product from Cuba?

IV. Background Statement of Facts A. Applicant Background, Selection and Promotion of Mark Applicant Nicaragua Tobacco Imports, Inc., has been in the business of producing and importing cigars for 7 years. Affidavit of Alberto Gutman, Exhibit A, Paragraph 1. Applicant is listed as the owner of 24 trademark applications for tobacco cigars and associated products. Id. at Paragraph 3 and Trademark Electronic Search System printout, Exhibit B. Applicant currently owns 11 trademark registrations for Cigars and Cigar Products. Id. Identifying and -4-

promoting new brand names for tobacco cigars has been a routine part of Applicants business for 7 years. Affidavit of Alberto Gutman, Exhibit A, Paragraph 1. Applicant identified and began development of the TATTOO name as a mark for tobacco cigars in December 2007 without knowledge of Opposer’s brand. Affidavit of Alberto Gutman, Exhibit A, Paragraph 4. Applicant filed the currently opposed intent-to-use trademark application for the TATTOO mark that same month. The Applicant then expended considerable effort over the following six months to develop a product to be marketed under the TATTOO brand and to register a related Internet domain name, “tattoocigars.com.” Id. At paragraphs 56 and 15. The intent-to-use trademark application that is the subject of this opposition was approved by the Examiner, who performed a search of the Trademark records using the word TATTOO, which should have uncovered the Opposer’s registration. See, Exhibit K, XSearch Search Summary for U. S. Serial No: 77359141. After expending considerable effort over six months to develop the TATTOO product and to attempt to secure the trademark, Applicant received what were thought to be unsolicited telephone sales calls from Peter Johnson of Tatuaje Cigars. Affidavit of Alberto Gutman, Exhibit A, Paragraph 9. Despite Opposer’s assertion to the contrary, Applicant was completely unfamiliar with Tatuaje Cigars. Applicant did not return these calls from the unknown caller. Id. Opposer then contacted Applicant through Jonathan Drew, a person known to the Applicant. Jonathan Drew explained the Opposer’s position and concerns regarding the TATTOO mark. Id. at paragraph 10.

After discussions in settlement negotiations with Opposer, the Applicant sought to investigate the TATUAJE brand. Applicant visited Opposer’s web site “tatuajecigars.com” and found only one store listed in the Miami area that sells Tatuaje cigars, “SABOR HAVANA CIGARS.” This store is far from Miami’s “Little -5-

Havana” area and is not located in a geographic area that cigar aficionados would visit to investigate cigars. Id. at paragraph 21.

Opposer asserts that “it is a virtual certainty that Applicant had actual knowledge of Opposer’s rights as well.” Motion for Summary Judgment, page 3, third paragraph. Despite the “small world” that forms the cigar industry, Applicant does not know all of the participants, especially a participant with one retailer located in the cigar aficionado rich Miami area.

B. Opposer’s Unclean Hands Opposer, and its predecessor in interest Mr. Peter Hassell Johnson, as early as 2006, and to the present time, have been using the trademark TATUAJE on cigar boxes with the mark being visible to consumers in close proximity to and in conjunction with a stylized “tobacco leaf stick” logo and the term “PUROS CUBANOS”. Affidavit of Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, I, and L. The term “PUROS CUBANOS” means “PURE CUBANS”. Affidavit of Alberto Gutman, Exhibit A, paragraph 30. The placement of the words “PUROS CUBANOS” on the cigar box and in close proximity to the trademark TATUAJE, as shown in Exhibits F, I, and L, is aimed to create an image in the consumer’s mind that the TATUAJE cigar box contains PURE CUBAN tobacco cigars. The Cuban Government, by its commercial enterprise HABANOS, S.A., has engaged in a trademark strategy since 1993 to certify products as being genuine and legitimate by locating in close proximity to, and in conjunction with, its cigar trademarks a stylized “tobacco leaf stick” logo and optionally also the term “HABANOS”. Affidavit of Alberto Gutman, Exhibit A, paragraph 29; and see also Exhibits R and S. Also see Declaration of Jose Gutman, Exhibit M, paragraph 2; and see also Exhibit N, on page 6, fourth paragraph. The trademark TATUAJE located on Opposer’s cigar box in close proximity to the same stylized “tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS” is aimed by Opposer to unfairly deceive consumers to believe that -6-

Opposer’s cigar product sold under the trademark TATUAJE is a “Pure Cuban” tobacco cigar product from Cuba. Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure Cuban” tobacco cigars and they are not from Cuba. Affidavit of Alberto Gutman, Exhibit A, paragraph 28; and see also Exhibit T. This intentional tactic by Opposer is intended to deceive consumers regarding the geographic origin, character, quality, composition, and/or source of the Opposer’s cigars sold under the trademark TATUAJE. This continuous deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE for at least nearly four years (since 2006 to present), precludes Opposer from seeking relief from this Board under the equitable doctrine of “unclean hands”. Additionally, due to this continuous deceptive, or deceptively misdescriptive, use of its mark TATUAJE for at least nearly four years (since 2006 to present), and subject to Applicant completing its discovery on Opposer, there is a continuous pattern of this deceptive use that, is reasonable to infer, was likely ongoing as early as 2004 (on or about when Mr. Peter Hassell Johnson was granted the registration of the trademark TATUAJE) and as early as 2003 (on or about when Mr. Peter Hassell Johnson submitted its specimen of actual use along with the application for registration of its trademark TATUAJE). Opposer’s specimen provided to the USPTO did not show the deceptive certification marks, i.e., the stylized “tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS”. Opposer’s specimen, and signed application, provided to the USPTO, and being relied upon by the USPTO up until the date of registration of the mark Tatuaje, misrepresented Opposer’s actual use of its mark Tatuaje thereby precluding Opposer from now seeking relief from this Board under the equitable doctrine of “unclean hands”.

C. Opposer’s Misrepresentations to Applicant Applicant contacted Opposer and discussed a settlement to the dispute regarding the TATTOO mark. Affidavit of Alberto Gutman, Exhibit A, Paragraph 13. Opposer and Opposer’s Attorney, in communications directly to the Applicant and in their Motion for Summary Judgment, continue to falsely assert -7-

that since it is the owner of a registered trademark for “TATUAJE,” it also “already owns trademark rights in the mark TATTOO.” Opposer’s Motion for Summary Judgment, Exhibit J, e-mail from Brian Swain to Applicant, first paragraph; also referred to in Motion for Summary Judgment, page 3, section “B” second paragraph and last paragraph continuing onto page 4. This is clearly a misrepresentation since Opposer owns no rights in TATTOO itself. Although Applicant disagrees with the validity of the assertion presented in the instant Opposition proceeding, the most Opposer can assert is that TATTOO could be found confusingly similar to its TATUAJE mark whereby Opposer could halt others from using the TATTOO mark.

D. Discovery Conference Agreements Opposer’s motion for Summary Judgment mentions an agreement made during the discovery conference in this action. Opposer’s Motion for Summary Judgment, page 4, first full paragraph. In response to Opposer’s transmitted case law, the Applicant did not supply further legal research to Opposer since the cases Opposer sent to Applicant’s attorneys already explained the legal theories the Applicant intended to rely upon.

V. Argument A. Proper Analysis for the Doctrine of Foreign Equivalents Opposer asserts that the TATTOO mark is confusingly similar to the “TATUAJE” mark primarily based upon a similarity of connotation as recognized under the Doctrine of Foreign Equivalents. Motion for Summary Judgment, pages 7-8. Opposer asserts that “it is likely that a significant portion of American consumers would stop and translate Opposer’s Mark into its English equivalent” and that “[t]he translated meaning of TATUAJE is not obscure.” Id.

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Applicant asserts that Opposer’s arguments misstate the analysis to be performed under the Doctrine of Foreign Equivalents and also misstate certain facts concerning the translation of TATUAJE and TATTOO. To begin, the Applicant agrees with Opposer’s assertion that Spanish is a commonly understood language in the United States. However, the Applicant disagrees with Opposer’s assertions regarding the uncontestable facts underlying the analysis required under the Doctrine of Foreign Equivalents. The Doctrine of Equivalents is used to evaluate the similarity of connotation between foreign word and English word marks. Palm Bay Imports v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 1377, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005). “When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” Id. Words from modern languages are generally translated to English under the doctrine of foreign equivalents, but the doctrine “is not an absolute rule and should be viewed merely as a guideline.” Id.

Even when determining similarity of connotation under the Doctrine of Foreign Equivalents, a complete inquiry into the likelihood of confusion between a foreign word mark and an English word mark requires one to “consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression.” In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).

1. Issues of Fact concerning whether “consumers would stop and translate TATUAJE upon seeing the TATTOO mark Opposer seems to assert that simply because Spanish is a commonly understood and spoken language in the United States, “a significant portion of American consumers would stop and translate Opposer’s Mark into its English equivalent.” Opposer’s Motion for Summary Judgment, page 7, last paragraph. The Applicant asserts that this is not the proper test to apply under the Doctrine -9-

of Foreign Equivalents. The Applicant further asserts that a proper analysis using test required under the Doctrine of Foreign Equivalents requires resolution of disputed underlying facts. The Applicant asserts that TATUAJE is not common Spanish word and that a Spanish speaking consumer would not typically “stop and translate” the word mark TATUAJE into English. See, Affidavit of Alberto Gutman, paragraphs 2 and 16.

2. Translation of TATUAJE and the meaning of TATTOO The Opposer asserts that “it is indisputable that ‘tattoo’ is the English equivalent of the Spanish word ‘tatuaje.’” Opposer’s Motion for Summary Judgment, page 7, third full paragraph under section “i.” In contrast to the Opposer’s assertion, the Applicant points out that “tatuaje” has multiple meanings in Spanish each with its associated separate translations and that “tattoo” also has multiple meanings in English, which each translate into different Spanish word or phrases.

a. TATUAJE has several meanings in Spanish and translations into English The Opposer asserts that “it is indisputable that ‘tattoo’ is the English equivalent of the Spanish word ‘tatuaje.’” Opposer’s Motion for Summary Judgment, page 7, third full paragraph under section “i.” Opposer supplies several simplified online dictionary translations for “tatuaje.” Opposer’s Motion for Summary Judgment, Declaration of Brennan C. Swain, paragraph 2, referring to Motion’s Exhibit H. In contrast to Opposer’s assertion, the Spanish word “tatuaje” has at least two meanings, “1. the action and effect of tattooing,” and “2. circle or mark that is left around the wound from a gun fired in very close proximity.” Affidavit of

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Alberto Gutman, Exhibit A, Paragraph 18. Therefore, “tatuaje” refers to either a “tattoo” or to a “gun powder burn.” These two meanings show that the Spanish word “tatuaje” has a broader meaning than the English word “tattoo.” In English, “the action and effect of tattooing” and a “gun powder burn” are two very different things. The Applicant asserts that comparing “tattoo” to “gun powder burn” yields quite dissimilar connotations, resulting in “tatuaje” and “tattoo” not being “synonyms, much less exact synonyms.” In re Buckner Enterprises Corp., 6 USPQ2d 1316, 1317 (TTAB 1987). In Buckner, the Board evaluated the similarity of meaning between the marks PALOMA and DOVE. The meaning of PALOMA was found to include “dove” and “pigeon.” In comparing “pigeon” to the mark DOVE, the terms were found to be not exact synonyms. In comparing these two marks, it was held that “the Board must apply an equally stringent test in judging similarity of meaning between a foreign word (paloma) and an English word (dove) as it would between two English words (e.g. pigeon and dove).” Id.

The Applicant further asserts that the multiple meanings of the Spanish word “tattoo” reduce the strength of the “similarity of connotation” between the TATUAJE mark and the TATTOO mark. The Applicant asserts that the strength of the “similarity of connotation” between these marks and the overall analysis of the likelihood of confusion between these marks therefore at least involves disputed facts concerning the translation that a consumer would use when viewing the TATUAJE mark, if in fact such a translation is even made.

b. TATTOO has Several Meanings and Translations into Spanish In evaluating the similarity of connotation between TATTOO and TATUAJE, it is also relevant to consider the several meanings that the word “tattoo” has in the English language. One dictionary identifies the following definitions of “tattoo:” “1: a rapid rhythmic rapping. 2 a: a call sounded shortly before taps as notice to go to quarters. b: outdoor military exercise given by - 11 -

troops as evening entertainment.” VERB “transitive verb: to beat or rap rhythmically on: drum on. intransitive verb: to give a series of rhythmic taps”. In addition, the final definitions are “1 : the act of tattooing : the fact of being tattooed 2 : an indelible mark or figure fixed upon the body by insertion of pigment under the skin or by production of scars.” Affidavit of Alberto Gutman, Exhibit A, Paragraph 17.

c. Multiple Translations Leave Factual Issues Regarding The Similarity Of Connotation The Applicant asserts that these multiple meanings for “tattoo” similarly show that the meaning of “tattoo” in English is broader than the meaning of the Spanish word “tatuaje.” For reasons similar to those enumerated above with regards to the multiple meanings of the word “tatuaje,” the Applicant asserts that the comparison between TATUAJE and TATTOO show that these terms do not have synonymous meanings and therefore there are at least contested issues of fact regarding which meaning of “tattoo” and “tatuaje” a consumer would use when encountering these terms as trademarks.

B. Dissimilar Sight and Sound at Least Leave Disputed Issue of Fact The “confusing similarity” analysis further requires an analysis of the similarity of the “sight and sound” of the mark, even when comparing similarity of connotation under the Doctrine of Foreign Equivalent. The Applicant asserts that the sight and sound of TATUAJE and TATTOO are quite different and that no likelihood of confusion would exist based on the sight and sound of these marks alone. TATUAJE has seven (7) letters while TATTOO has six (6) letters clearly forming two syllables. The Applicant’s pronunciation of TATUAJE uses three (3) syllables to create “ta-tüa-je,” as is the common pronunciation by Spanish speakers. Affidavit of Alberto Gutman, Exhibit A, Paragraph 20. The Applicant points out that in the common Spanish pronunciation of “tatuaje,” the second syllable of TATUAJE

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ends in an “ah” sound while the second syllable of “tattoo” clearly ends in an ‘oo” sound. The Applicant admits that the sound of a mark is not generally limited to the common pronunciation of a word. However, the Applicant asserts that under the Doctrine of Foreign Equivalents, the consumer is recognizing a foreign word and translating it to its English equivalent. The Applicant asserts that in recognizing this translation, a speaker of the foreign language is very likely to place in his or her mind the common pronunciation of a foreign word to be translated than would the case when comparing marks based on English or coined terms. The Opposer apparently uses a pronunciation of TATUAJE that has four syllables, dividing the word into “TA-TU” and “A-JE.” The Applicant asserts that a pronunciation of TATUAJE with four syllables as opposed to the obvious 2 syllables of TATTOO further reduces the similarity of the sound of these marks. With regards to similarity of sight, the Applicant asserts that TATUAJE and TATTOO are quite different in sight as is readily noticed by observation. The Opposer only asserts that the first syllables of the two words, which only contain three (3) letters, are similar in sight. Opposers Motion for Summary Judgment, page 8, penultimate paragraph, section “ii.” The remaining four (4) letters of TATUAJE, over half of the Opposer’s mark, therefore differ from the remaining three (3) letters of TATTOO.

C. Unclean Hands 1) Opposer’s use of “Puros Cubanos,” in close proximity to and in conjunction with the “Tatuaje” mark on their product unfairly deceives consumers to believe that Opposer’s product is a “Pure Cuban” tobacco cigar product. Opposer has been using its mark TATUAJE in connection with its cigar products, on information and belief as early as its date of its application for trademark registration of the mark in the USPTO, and currently continues to - 13 -

similarly use its mark, in close proximity to and in conjunction with the words “Puros Cubanos”, as shown in the attached Exhibits F, I and L. Affidavit of Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, l, and L. The photo images shown in Exhibits F, I and L represent views of the Opposer’s cigar box as offered for sale and sold by Opposer at least as early as the year 2006. Exhibit F shows a photo image of Opposer’s cigar box as currently offered for sale and sold by a local cigar retail store in Miami. Affidavit of Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, I, and L. As illustrated in Exhibits F, I, and L, the words “Puros Cubanos” are prominently visible in close proximity to the Opposer’s mark TATUAJE on the same side of the cigar box containing Opposer’s cigars. Note in particular that the photo image shown in Exhibit I also includes a signature on the box. This is the signature of Peter Johnson who was the applicant and registrant of the trademark TATUAJE. The words “Puros Cubanos” translate from Spanish to English as “Pure Cubans”. Affidavit of Albereto Gutman, Exhibit A, paragraph 30. The indication of these words on Opposer’s cigar box and in close proximity to Opposer’s trademark TATUAJE is that the cigars contained in the box and sold under the trademark TATUAJE are “Pure Cuban” tobacco cigars. That is, the Opposer sells its Tatuaje cigars as pure Cuban tobacco cigars from Cuba. Cigars from Cuba are world known for being of high quality tobacco and craftsmanship. Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure Cuban” tobacco cigars. These cigars are not from Cuba since selling Cuban cigars is illegal in the United States. Affidavit of Alberto Gutman, Exhibit A, paragraphs 28. Opposer’s affirmative designation of its cigar product as being “PURE CUBANS” is an intentional tactic by Opposer to unfairly deceive consumers to - 14 -

believe that Opposer’s product sold under the trademark TATUAJE is a “Pure Cuban” tobacco cigar product. That is, the trademark TATUAJE located in close proximity to the words “PUROS CUBANOS” is aimed by Opposer to deceive customers and consumers regarding the geographic origin, character, quality, composition, and/or source of the Opposer’s cigars sold under the trademark TATUAJE. This continuous deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE for at least nearly four years (since 2006 to present), precludes Opposer from seeking relief from this Board under the equitable doctrine of “unclean hands”. 2) Opposer’s use of the stylized “tobacco leaf stick” logo, also used in conjunction with the term “Puros Cubanos”, and in close proximity to and in conjunction with the “Tatuaje” mark on their product, unfairly deceives consumers to believe that Opposer’s product is a “Pure Cuban” tobacco cigar product from Cuba. Opposer has been using its mark TATUAJE in connection with its cigar products as early as 2006, and currently continues to similarly use its mark, in close proximity to and in conjunction with a “tobacco leaf stick” logo, as shown in the attached Exhibits F, I, and L. Affidavit of Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27, describing Exhibits F, I and L. In the photo images shown in Exhibits F, I, and L, the “tobacco leaf stick” logo is prominently visible (on the left side of the words “Puros Cubanos”) in close proximity to the Opposer’s mark TATUAJE on the same side of the cigar box containing Opposer’s cigars. Id.

A number of years before Opposer’s date of first use of its mark TATUAJE, the stylized “tobacco leaf stick” logo trademark was established and has been in notorious use, by the Cuban Government and its commercial enterprise HABANOS, S.A., in close proximity and in conjunction with its most valuable tobacco cigar trademarks to certify its genuine Cuban cigar trademarks worldwide. Declaration of Jose Gutman, Exhibit M, paragraph 2, and see also Exhibit N, for example on page 5, second paragraph. Exhibit N is a copy of a - 15 -

paper dated November 22 and 23, 2007, and presented by Mr. Adargelio Garrigo de la Grana, who was at the time the legal Director of Habanos, S.A., and the trademark attorney for Cubatabaco, a governmental enterprise of the Cuban Government, and a 50% owner of Habanos, S.A. This paper details the Cuban Government’s trademark strategy to certify legitimate use of its most valuable trademarks used in connection with sales of Cuban tobacco cigars. The Cuban Government’s certification mark includes the stylized “tobacco leaf stick” logo trademark. It also includes the word HABANOS. Declaration of Jose Gutman, Exhibit M, paragraph 2; and see also Exhibit N, for example at bottom of page 4, and also see page 6, fourth paragraph. The paper, on page 6, fourth paragraph, refers to the stylized “tobacco leaf stick” logo trademark as the “tobacco leaf of Vuelta Abajo appellation of origin, the best in the world.” See also Exhibit R, which shows an example of the stylized “tobacco leaf stick” logo as registered by HABANOS, S.A., in USPTO Registration No. 2,177,837. Affidavit of Alberto Gutman, Exhibit A, paragraph 29. See also Exhibit S which shows an example of the Cuban Government’s use of its certification mark in close proximity and in conjunction with one of its valuable tobacco cigar trademarks. Affidavit of Alberto Gutman, Exhibit A, paragraph 29. A direct comparison of the stylized “tobacco leaf stick” logo mark located to the left side of the word HABANOS as shown in Exhibits R and S, against the Opposer’s use of the stylized “tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS”, as shown in Exhibits F, I, and L, highlights the striking similarity of these two marks. The indication of the stylized “tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS” on Opposer’s cigar box and in close proximity to Opposer’s trademark TATUAJE is that the cigars contained in the box and sold under the trademark TATUAJE are “Pure Cuban” tobacco cigars. That is, the Opposer sells its Tatuaje cigars as pure Cuban tobacco cigars from Cuba. Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure - 16 -

Cuban” tobacco cigars. These cigars are not from Cuba. Affidavit of Alberto Gutman, Exhibit A, paragraph 28. Opposer’s affirmative designation of its cigar product with the stylized “tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS” and in close proximity and in conjunction with its trademark TATUAJE is an intentional tactic by Opposer to unfairly deceive consumers to believe that Opposer’s cigar product sold under the trademark TATUAJE is a “Pure Cuban” tobacco cigar product. That is, the trademark TATUAJE located in close proximity to the stylized “tobacco leaf stick” logo mark to the left of the words “PUROS CUBANOS” is aimed by Opposer to deceive customers and consumers regarding the geographic origin, character, quality, composition, and/or source of the Opposer’s cigars sold under the trademark TATUAJE. This continuous deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE for at least nearly four years (since 2006 to present), precludes Opposer from seeking relief from this Board under the equitable doctrine of “unclean hands”. 3) It is reasonable to infer that Opposer’s specimen and application provided to the USPTO to obtain Opposer’s registration of its mark Tatuaje, misrepresented Opposer’s actual use of its mark Tatuaje thereby precluding Opposer from seeking relief from this Board under the equitable doctrine of “unclean hands”. The continuous deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE for at least nearly four years (since 2006 to present), as discussed above, demonstrates a continuous pattern of deceptive use that, subject to Applicant completing its discovery on Opposer, is reasonable to infer, was likely ongoing as early as April 27, 2004 (on or about when Mr. Peter Hassell Johnson was granted the registration of the trademark TATUAJE) and as early as June 15, 2003 (on or about when Mr. Peter Hassell Johnson submitted its specimen of actual use along with the application for registration of its trademark TATUAJE.

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Opposer’s specimen of actual use of its mark TATUAJE that was submitted to the USPTO was required to show Opposer’s actual use of its mark in connection with its tobacco cigar box. Opposer’s specimen of actual use of its mark TATUAJE in connection with Opposer’s tobacco cigar box did not show the “tobacco leaf stick” logo or the words “PUROS CUBANOS”. Declaration of Jose Gutman, Exhibit M, paragraph 3; and see also Exhibit P. Mr. Peter Hassell Johnson, as the Owner, signed the Trademark Application for TATUAJE on June 15, 2003. Declaration of Jose Gutman, Exhibit M, paragraph 3; and see also Exhibit O and Exhibit Q. Mr. Peter Hassell Johnson made a statement in its signed Trademark Application with Declaration as follows: “[t]he applicant is submitting or will submit one specimen for each class showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n) Tatuaje Cigar box lid and cigar band.” (Emphasis added.) By Peter Hassell Johnson providing the specimen of a Tatuaje Cigar box lid along with the signed Trademark Application with Declaration, he made an affirmative statement that represented to the USPTO while the application was pending at the USPTO up until the time of registration of the trademark TATUAJE that the actual use of the trademark TATUAJE in connection with the cigar box did not include in close proximity to the mark TATUAJE the “tobacco leaf stick” logo and the words “PUROS CUBANOS”. Mr. Peter Hassell Johnson in the Trademark Application and the submitted specimen of actual use made an affirmative statement relied upon by the USPTO until the date of registration of the trademark TATUAJE (in June 2004), and in view of Opposer’s continuous pattern of deceptive use of the trademark TATUAJE from as early as 2006, it is reasonable to infer, that this affirmative statement misrepresented to the USPTO, while the application was pending at the USPTO up until the time of registration of the trademark TATUAJE, the actual use of the trademark

- 18 -

TATUAJE in connection with the cigar box. The signed Declaration warned Mr. Peter Hassell Johnson that “willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, . . .; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.” See also Exhibit Q. Due to the material misrepresentation and false statement in the application signed by Mr. Peter Hassell Johnson, as is reasonable to infer and subject to the Applicant completing its discovery on Opposer, the Opposer is therefore precluded from seeking relief from this Board under the equitable doctrine of “unclean hands”. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed Cir. 1986), (applicant submitted a specimen label that was not then in use) (“Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application. . . . ”[T]he obligation which the Lanham Act imposes on an applicant is that he will not make knowingly inaccurate or knowingly misleading statements in the verified declaration forming a part of the application for registration.””); also see General Car & Truck Leasing Sys. Inc. v. General Renta-Car Inc., 17 USPQ2d 1398, 1491 (S.D. Fla. 1990), and Medinol v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003), (the objective standard to determine deceptive intent is whether the applicant “knew or should have known” that a statement is materially incorrect. Fraud can occur without subjective intent.); and also see Bose Corporation v. Hexawave, Inc., Opposition No. 91/157,315, (“a use statement in a Section 8/9 renewal is a material representation; without use on all of the goods, the affidavit of continued use would not have been accepted.” “[P]roof of specific intent to commit fraud is not required.”), and further see Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (June 30, 2008) (precedential) (“false claims of use of the mark on goods or services, wherever they may appear, . . . are essential to the integrity of the application and registration process.” It did not matter that the statement of - 19 -

goods and services was not a “verified statement" of goods and services such as in a statement of use.). Based on the above, the Applicant respectfully requests that the Opposer’s Motion for Summary Judgment be dismissed.

Date: March 4, 2009

___/Jose Gutman/_________ Jose Gutman ___/Jeffrey N. Giunta/______ Jeffrey N. Giunta Fleit, Gibbons, Gutman, Bongini, & Bianco, PL 551 N.W. 77th Street Boca Raton, FL, 33487 Phone: (561) 989-9811 Fax: (561) 989-9812 e-mail: [email protected] Attorneys for Applicant

- 20 -

Exhibit Index

Exhibit A: Affidavit of Alberto Gutman Exhibit B: Affidavits of Alphonso Alvarez, Rolando Guttierez, and Mauricio Martinez Exhibit C: Merriam-Webster Dictionary Entry for “Tattoo” Exhibit D: REAL DICCIONARIO – “Tatuaje” Exhibit E: Wordreference.com English-Spanish entry for “Tattoo” Exhibit F: Pictures of Opposer’s TATUAJE Cigar Box Exhibit G: Receipt for box of TATUAJE cigars Exhibit H: REAL DICCIONARIO – “Puro” and “Natural de Cuba” Exhibit I: Internet Advertisement for TATUAJE cigars Exhibit J: Listing of Applicant’s Trademark Applications and Registrations Exhibit K: Trademark Examiner’s search for subject Application “Tattoo” Exhibit L: [Jeff added this exhibit.] Exhibit M: Declaration of Jose Gutman Exhibit N: Habanos S.A. Trademark Strategy paper by Adargelio Garrido de la Grana Exhibit O: Tatuaje Record at USPTO Website Exhibit P: Tatuaje Specimen at USPTO Exhibit Q: Tatuaje Application at USPTO Exhibit R: Habanos & Tobacco Leaf Stick Logo. Trademark Registration No. 2,177,837 Exhibit S: Example of Actual Use By Habanos, S.A., of the Certification Mark Exhibit T: Photo Image of Bottom of TATUAJE Cigar Box

CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of the foregoing APPLICANT’S RESPONSE TO OPPOSER’S MOTION FOR SUMMARY JUDGMENT has been served on Brennan C. Swain by mailing said copy on March 4, 2009, via First Class Priority Mail, postage prepaid to:

Jeffer Mangels Butler & Marmaro LLP Attn: Brennan C. Swain 1900 Avenue of the Stars, 7th Floor Los Angeles, CA 90067 Date: March 4, 2009

___/Jose Gutman/_________ Jose Gutman ___/Jeffrey N. Giunta/______ Jeffrey N. Giunta Fleit, Gibbons, Gutman, Bongini, & Bianco, PL 551 N.W. 77th Street Boca Raton, FL, 33487 Phone: (561) 989-9811 Fax: (561) 989-9812 e-mail: [email protected]

- 21 -

Exhibit A: Affidavit of Alberto Gutman

Exhibit B: Affidavit of Alphonso Alvarez, Rolando Guttierez, and Mauricio Martinez

Exhibit C: Merriam-Webster Dictionary Entry for “Tattoo”

tattoo - Definition from the Merriam-Webster Online Dictionary

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Main Entry: 1tat—too Pronunciation: \ta-ɑtü\ Function: noun Inflected Form(s): plural tattoos Etymology: alteration of earlier taptoo, from Dutch taptoe, from the phrase tap toe! taps shut! Date: circa 1627 1 : a rapid rhythmic rapping 2 a : a call sounded shortly before taps as notice to go to quarters b : outdoor

military exercise given by troops as evening entertainment

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APA Style tattoo. (2009). In Merriam-Webster Online Dictionary. Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo

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Main Entry: 3tattoo Function: transitive verb Etymology: Tahitian tatau, noun, tattoo Date: 1769 1 : to mark or color (the skin) with tattoos 2 : to mark the skin with (a tattoo)

— tat—too—er noun \-ɑtü-ist\ noun — tat—too—ist

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Main Entry: 2tattoo Function: verb Date: 1780 transitive verb : to beat or rap rhythmically on : drum on intransitive verb : to give a series of rhythmic taps

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Exhibit D: REAL DICCIONARIO – “Tatuaje”

Real Academia Española. Diccionario Usual.

Page 1 of 1

REAL "ACADEMIA "ESPAÑOLA" FKEEKQPCTKQ"FG"NC"NGPIWC"GURCłQNC"/"XkiÈukoc"ugiwpfc"gfkekÒp"

" *Fgn"ht0"vcvqwcig+0" o0"CeekÒp"{"ghgevq"fg"vcvwct0"

" "

o0"Egteq"q"ugÐcn"swg"swgfc"cntgfgfqt"fg"wpc"jgtkfc"rqt"ctoc"fg"hwgiq" fkurctcfc"fgufg"ow{"egtec0" Real Academia Española © Todos los derechos reservados

http://buscon.rae.es/draeI/SrvltGUIBusUsual?TIPO_BUS=1&LEMA=tatuaje

2/23/2009

Exhibit E: Wordreference.com English-Spanish entry for “Tattoo”

tattoo - English-Spanish Dictionary - WordReference.com

Page 1 of 1

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Look up: Ver También: t ast elessness t ast ing t ast y t at t at t er t at t ered t at t ers t at t ing t at t le t at t let ale t at t oo t at t ooing t at t ooist t at t y t aught t aunt t aunt ing t aunt ingly t aupe Taurus t aut

Links: Abreviaturas Pron. Symbols Como buscar Foros Apoyar WR Hacer enlace a WR Añadir WR a favoritos Suggestions Subscribers: Log In

tattoo:

English-Spanish

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English definition | in French | in Italian | in Portuguese conjugator | in context | images

Pocket Oxford Spanish Dictionary © 2005 Oxford University Press: 1

tattoo /tæ'tu:/ sustantivo (pl -toos) 1. 2.

(picture) tatuaje m (display) espectáculo militar con música

2 tattoo verbo transitivo -toos, -tooing, -tooed tatuar(conj. )

Subscribe to the Oxford Concise or Unabridged dictionary for more translations, meanings and examples.

From the Diccionario Espasa Concise © 2000 Espasa Calpe:

tattoo [tæ 't

]

I

verbo transitivo tatuar

II

nombre 1 tatuaje 2 Mil espectáculo militar

From the WordReference Supplement © 2009 WordReference.com:

tattoo:

Compound Forms: tattoo artist nm tatuador tattoo artist nmf artista del tatuaje Report an error.

Forum discussions with the word(s) "tattoo" in the title: El tattoo no es tabú Gang tattoo removal program I am a cartoonist and a tattoo designer as well LLEDAD for a tattoo.... sag (in a tattoo) tap/tattoo and tap/palm tattoo parlor They won't let me get a tattoo.... To get a tattoo To tattoo upon/over/on Ask in the forums yourself. Visit the Spanish-English Forum.

'tattoo' also found in these entries: Spanish: tatuar - tatuaje In other languages: French | Italian | Portuguese | German | Russian | Polish | Romanian | Czech | Greek | Turkish | Chinese | Japanese | Korean Add WordReference search box to your Google homepage: Google.com Español: Universal:

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http://www.wordreference.com/es/translation.asp?tranword=tattoo

2/23/2009

Exhibit F: Pictures of Opposer’s TATUAJE Cigar Box

Exhibit G: Receipt for box of TATUAJE cigars

Exhibit H: REAL DICCIONARIO – “Puro” and “Natural de Cuba”

Real Academia Española. Diccionario Usual.

Page 1 of 2

" *Fgn"ncv0"rwtwu+0" cfl0"Nkdtg"{"gzgpvq"fg"vqfc"og|enc"fg"qvtc"equc0" cfl0"Swg"rtqegfg"eqp"fgukpvgtÈu"gp"gn"fgugorgÐq"fg"wp"gorngq"q"gp"nc" CfokpkuvtcekÒp"fg"Lwuvkekc0" cfl0"Swg"pq"kpenw{g"pkpiwpc"eqpfkekÒp."gzegrekÒp"q"tguvtkeekÒp"pk"rnc|q0" cfl0"Ecuvq."clgpq"c"nc"ugpuwcnkfcf0" cfl0"Nkdtg"{"gzgpvq"fg"korgthgeekqpgu"oqtcngu0"Guvg"nkdtq"eqpvkgpg"wpc"oqtcn" rwtc0" cfl0"Ogtq."uqnq."pq"ceqorcÐcfq"fg"qvtc"equc0" cfl0"Fkejq"fgn"ngpiwclg"q"fgn"guvknq<"Eqttgevq."gzcevq."clwuvcfq"c"ncu"ng{gu" itcocvkecngu"{"cn"oglqt"wuq."gzgpvq"fg"xqegu"{"eqpuvtweekqpgu"gzvtcÐcu"q" xkekqucu0" cfl0"Fkejq"fg"wpc"rgtuqpc<"Swg"wuc"guvg"ngpiwclg"q"guvg"guvknq0"Guetkvqt"rwtq0" o0"Ekicttq"jgejq"fg"jqlcu"fg"vcdceq"gptqnncfcu"{"nkcfq"ukp"rcrgn0" o0"eqnqs0"Ecuvkiq."ucpekÒp0" " nqe0"cfx0"

"

" nqe0"cfx0"Uwocogpvg."gzegukxcogpvg."c"hwgt|c"fg0" " nqe0"xgtd0"eqnqs0"Korqpgt"c"cniwkgp"wpc"ucpekÒp"q"wp"ecuvkiq0" 凛"X0"" " " " " "

http://buscon.rae.es/draeI/SrvltObtenerHtml?origen=RAE&LEMA=puro&SUPIND=0&CA... 3/4/2009

Real Academia Española. Diccionario Usual.

Page 2 of 2

" " " " " "

" Real Academia Española © Todos los derechos reservados

http://buscon.rae.es/draeI/SrvltObtenerHtml?origen=RAE&LEMA=puro&SUPIND=0&CA... 3/4/2009

Real Academia Española. Diccionario Usual.

Page 1 of 1

" cfl0"Pcvwtcn"fg"Ewdc0"W0"v0"e0"u0" " "

cfl0"Rgtvgpgekgpvg"q"tgncvkxq"c"guvg"rcÌu"fg"CoÈtkec0" Real Academia Española © Todos los derechos reservados

http://buscon.rae.es/draeI/SrvltGUIBusUsual?LEMA=cubano&origen=RAE

3/4/2009

Exhibit I: Internet Advertisement for TATUAJE cigars

Exhibit J: Listing of Applicant’s Trademark Applications and Registrations

Record List Display

1 of 2

http://tess2.uspto.gov/bin/showfield?f=toc&state=4010%3Arl7e85.1.1&p...

United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help

Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Mar 4 04:05:48 EST 2009

Please logout when you are done to release system resources allocated for you. List At:

to record:

OR

24 Records(s) found (This page: 1 ~ 24)

Refine Search Current Search:

S1: (Nicaragua Tobacco Imports)[OW] docs: 24 occ: 72

Serial Number Reg. Number

Word Mark

Check Status Live/Dead

1

78899717

3222884

CUPIDO

TARR

LIVE

2

78242915

2973248

LA CAROLINA

TARR

LIVE

3

78242906

2934273

VEGAS DE TABACALERA ESTELI TARR

LIVE

4

78242904

SALAZAR Y HNOS

TARR

DEAD

5

78242899

2953846

BECK

TARR

LIVE

6

78241785

2973241

ARTE CUBANO

TARR

LIVE

7

78241747

2973240

CUBAN CRAFTERS

TARR

LIVE

8

78230529

3142814

420'S

TARR

LIVE

9

77429139

3584394

DON QUIJOTE

TARR

LIVE

10 77361657

ONEOFF CIGARS

TARR

LIVE

11 77421758

CONTRABAND

TARR

LIVE

12 77410795

CIGUARD

TARR

DEAD

J.L. SALAZAR Y HERMANOS

TARR

LIVE

14 77510706

DOMINO

TARR

LIVE

15 77510705

DOMINO PARK

TARR

LIVE

16 77510698

LA FLOR DE ALBA

TARR

LIVE

17 77358959

TONY ALVAREZ

TARR

DEAD

CUBAN COPY

TARR

LIVE

EL LAGUITO

TARR

DEAD

EL FENICIO

TARR

LIVE

NICARAGUA HABANOS

TARR

LIVE

J.L. SALAZAR

TARR

LIVE

23 77359141

TATTOO

TARR

LIVE

24 77421759

BOUTIQUE PREMIUM CIGARS

TARR

LIVE

13 77361662

18 77361556

3549231

3526800

19 77359142 20 77361550

3523588

21 77359144 22 77270508

3494999

3/4/2009 10:48 AM

Record List Display

2 of 2

http://tess2.uspto.gov/bin/showfield?f=toc&state=4010%3Arl7e85.1.1&p...

| .HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY

3/4/2009 10:48 AM

Exhibit K: Trademark Examiner’s search for subject Application “Tattoo”

*** User:mpappas *** # Total Dead Marks

Marks

Live

Live

Status/

Viewed

Viewed

Search

Docs

Images

Duration

Search

01

13070

N/A

0

0

0:04

*tat${"oue"}*[bi,ti] and live[ld]

02

585

N/A

0

0

0:03

tat${"oue"}*[bi,ti] and live[ld]

03

84

0

84

52

0:02

2 and "034"[cc]

04

372

N/A

0

0

0:01

*tat$oo*[bi,ti] and live[ld]

05

415

N/A

0

0

0:02

*tat$u*[bi,ti] and live[ld]

06

24

0

24

18

0:01

*tat$ew*[bi,ti] and live[ld]

07

159

0

159

92

0:02

(4 5) and "034"[cc]

08

22

0

22

12

0:02

tattoo[fm] and live[ld]

Session started 3/31/2008 2:17:46 PM Session finished 3/31/2008 2:24:40 PM Total search duration 0 minutes 17 seconds Session duration 6 minutes 54 seconds Defaut NEAR limit=1ADJ limit=1

Sent to TICRS as Serial Number: 77359141

Exhibit L: Web Archive of Retailer Offer of Opposer’s Cigars

Tower Cigars

Page 1 of 2

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Exhibit M: Declaration of Jose Gutman

Exhibit N: Habanos S.A. Trademark Strategy paper by Adargelio Garrido de la Grana

Habanos SA: Trademarks and GIs Working together

My name is Adargelio Garrido de la Grana. I am the legal Director of Habanos S.A., and Cubatabaco’s attorney for matters related to the industrial property. Habanos SA is a Cuban company, owned on a fifty-fifty per cent by Cubatabaco and Altadis SA (an Spanish–French company). Cubatabaco is the owner of the Cuban appellations of origin. I. ITRODUCTIO Who Are We?
Habanos, S.A., was founded on September 14, 1994.
On February 4, 2000, Habanos, S.A., became a joint venture, with Cubatabaco, a Cuban governmental enterprise, holding 50 percent of its shares and Altadis, S.A., the largest company in the world that markets tobacco products, holding the other 50 percent.
Habanos, S.A., is the world leader selling premium cigars. It • • • • • • •

has a portfolio of 32 active brands; has more than 6000 brands registered throughout the world; uses Cuban tobacco denominations of origin in trade, since it is the onl y Cuban exporter; has a network of sales outlets with over 25 exclusive distributors; has a network of franchises with more than 120 sales outlets—Houses of Habanos—throughout the world; has estimated annual sales of around US $200 million; and is selling in 179 countries.

As may be imagined, the brands and exclusive exploitation of the Cuban tobacco denominations of origin are our main assets, whose worth is calculated at billions of dollars. As you know, Geographical indications are objectively recognized in the identification of certain products coming from a region, city or country where there are certain natural and human factors which make them different from others, but those products finally reach the market identified by a trademark. That is, the geographical indications and trademarks reach the market together, through a product which promotes the coincidence of both.

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Now, I will present our experience in managing the trademarks and appellations of origin of Cuban cigars, with regard to creating a single product identity.

II. THE EXPERIECE OF CUBA CIGAR TRADEMARKS AD GEOGRAPHICAL IDICATIOS 2.1 Cuban tobacco appellations of origin The origin of Habanos can be traced back to 1492, when Christopher Columbus arrived on the shores of the large island of Cuba. 1492 is certainly a celebrated year in World History, but particularly for us, the Great Discovery was the Habano. Habanos, at that time, consisted on tobacco leaves roughly rolled into a shape and the Indians called it “Cohiba”. These cigars were smoked by the natives; being the “Cohibas” the ancestors of the Habanos. Why Habanos’ quality? The quality of the Habano comes from a combination of four factors. The characteristic of the soil is one of these factors. It plays a key role in the differentiation of this product. The varieties in the kinds of Cuban black tobacco are others. It is very important in the differentiation of the Habano. Other and a very important element is the climate, which is a result of Cuba’s geographical location. Climatic conditions also influence in the cigar-manufacturing process. Many people even say that the Habanos you smoke in Cuba taste different from the ones you smoke elsewhere. The last factor is the know-how of our farmers and cigar-makers, with the latter creating veritable masterpieces. It has been proved that, when one of these factors is missing, it’s impossible to make a Habano. Five different types of leaves are required to make a Habano: The long filler: the inner part, which it is a blend of three leaves with three different characteristics: Ligero: for strength and flavour Seco: for aroma Volado: for good combustion The binder: this leaf secures and wraps the long filler leaves. Long filler and binder together form the “Bunche”.

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The wrapper: this leaf dresses the Habano and determines its appearance.

2.1.1 Measures to protect the prestige of the cigar coming from Cuba In view of the recognized prestige of the tobacco coming from Cuba, in the early of XIX Century, the international tobacco market began to be invaded by different kinds of products that used names of Cuban origin in one way or another. At the beginning, the geographical name “Habana” was acknowledged internationally as identifying the origin of the best cigars in the world. It is said that the origin of its use is linked to the port of Havana, from which the prestigious cigars were shipped. Therefore, ever and since the last century, Cuban cigar-makers have included the word “Habana” in the design and advertising of all their trademarks, so that the origin of the well-known cigars in the world would be recognized. For its part, the word “Habano”—the term used for the very best cigars made in Cuba—stemming from “Habana.” It began to be used in the Spanish-speaking countries in the 1920s. Now, the term “Habano” is an example of a social or historic appellation of origin, for it has achieved recognition on its own merits, rather than as the name of a region, locality or country. Early in the 20th century, Cuban authorities—aware of the danger— they began taking measures to protect this product. They include the following:
the creation of the National Warranty Seal of Origin, in 1912, to protect the product’s Cuban origin;
the creation of the National Commission of Advertising and the Defense of Habano Cigars, in 1927;
the signing of bilateral agreements with several countries to protect our appellations, among them, those signed with France and Germany—which are still in force—and especially important;
the creation of the Revista Tabacalera Habano (Habano Cigar Magazine), in 1935; in addition to containing the name “Habano” in its title, this publication has always used this term when referring to Cuban cigars; and
the protection of 18 appellations of origin—including Cuba, Habana, Habanos, Vuelta Abajo, San Luis, San Juan y Martínez, Vuelta Arriba, Remedios, El Corojo and Cuchillas de Barbacoa, according to the Lisbon Agreement. The Cuba’s decision for signing the Lisbon Agreement was a key for the protection of our intangible assets, because, even though the Agreement has a limited operating range, being a signatory of it implies respect and recognition, even, in non-member countries. Since the above was proved insufficient, a legal offensive to protect our products’ appellations of origin begun in 1981. Lawsuits were brought to Europe, our main

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market, because many infringing products were sold there. Now, we are bringing suits in other continents, as well. We concentrate on the well-known appellations of origin (Cuba, Habanos, Habana and Vuelta Abajo). The first lawsuit we brought was in France, on February 17, 1981. It was against the Neos Handzame Company, from Belgium, due to the sales of Cubanitos trademark cigars in France. We have also brought other lawsuits in Belgium, France, Germany and Spain. The most important ones were the suits we won against Gloria de Cuba and Wilde Havana trademarks. The latter had the largest sales on the non premium market.We also obtained favorable decisions in France, with courts ordering Aramis to withdraw its Havana trademark of perfume as well as another company that was using in perfume the denomination Cuba. The protection of the term Habanos, as Appellation of Origin, Trademark or Certification Trademark is the following one:

Registrations

Applications Total

As Appellation of Origin 26 countries ( 25 members of Lisbon + Dominican Rep.) 29 ( 27 UE + Uruguay + Ecuador) 55

As a trademark

As a certification trademark

27 (Members OAMI)

2 ( USA + Canada)

62

2

35

2.1.2 Marketing Strategy Linked to the Protection of Appellations of Origin Along with the lawsuits, a marketing strategy was drawn up in the ’80s for supporting and complementing our efforts to obtain legal protection. Our first decision was to establish our communications strategies based on the Habano appellation of origin, the reasons are as follows:
it was a unique product;
the Habano denomination of origin had to be protected against the danger of becoming a generic term; and,
because it was a rather all-encompassing term, it was being applied to all of the cigars made in Cuba. From the communications point of view and as one more steps along the path toward consolidating the corporate image of the product, in 1991 it was decided to unify the various versions of the logo and design for Habano that existed in other languages and to use just one: Habanos. Thus, from then on, Habanos logo has the same image all over the world. This meant to make two changes at the same time. One was to eliminate the word “cigar”; the other was to use the Spanish term “Habanos.” The transition from the translation to the Spanish term was to be made over a period of up to ten years.

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Since that period, we have established a unique corporate image of our Appellation of Origin Habanos: The Smoke image. In 1993, we created a stick with the Habanos Appellation of Origin in order to include it in all the packaging of our products. At the end of this year 2007 it will be create the Consejo Regulator of the Habanos Appellation of Origin and the other Cuban Tobacco Appellations of Origin, which will agglutinate all the physical and juridical peoples that are part of the agricultural and industrial chain of the Habanos, in order to developing even more the this appellation of origin.

2.2 Cuban Cigar Trademarks The first Cuba cigar private factory was established in 1796. Very soon the quantity of small workshops for making cigars increased. In the 1830-40’s these small factories became prosperous workshops, which were frequently visited by agents and traders of New York, Philadelphia, London, Paris, Hamburg, among others, requesting large quantities of the famous Habano. The end of the Spanish Monopoly propitiated a boom in the cigar business. Being the property of individuals, the workshops started to diversify their offers, trying to please the large demand for Cuban cigars. This period marks the origin of the first Habano trademark: “Hijas de Cabañas & Carvajal”. 2.2.1 Trademark classifications According to the period of creation, we can classify our trademarks in two groups: Pre-Revolution trademarks: Montecristo, Partagás, Romeo y Julieta, H.Upmann, Por Larrañaga, Hoyo de Monterrey, etc. Post-Revolution trademarks: Cohiba, Cuaba, Trinidad, Vegas Robaina, San Cristóbal de La Habana, etc. According to the importance in the market, for several years, we have classified the 32 trademarks that we sell in that moment—keeping in mind how well known they are and their market presence—as follows: Global trademarks. This group of trademarks includes the ones that are present all over the world. They are Cohiba, Montecristo, Romeo y Julieta, Partagás, Hoyo de Monterrey, H.Upmann and José L. Piedra. Multilocal trademarks. These trademarks you may find them in most of countries. They are: Bolivar, Fonseca, Guantanamera, H. Upmann, Punch, Vegas Robaina and Quintero.

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Local trademarks. These trademarks are found in just a few countries. They include Por Larrañaga, Cabañas, Belinda, Sancho Panza, Los Status De Luxe, Troya, La Gloria Cubana, J. Cano, Quai D’Orsay, Juan Lopez, Rafael González, Vegueros, Diplomáticos, Ramón Allones, San Luis Rey and Gispert. iche trademarks. These are trademarks that were created recently and they were given a special treatment, for allowing us to become them well known trademarks. We include in this group Trinidad, which is a name of a Cuban city and UNESCO has declared thereof as a part of world heritage; Cuaba, is the name of a Cuban tree that catches fire easily and it was used by the Cuban Indians for lighting their pipes (cojibas or cohibas); and San Cristóbal de La Habana, which bears our capital’s first name. Bearing in mind that we are talking about a large number (32) of trademarks, our best resources are used to invest mainly in promoting those that are in the global and niche groups. The trademarks include in the multilocal and local groups are promote by our distributors. All the above mentioned Habanos trademarks are made with tobacco leaf of Vuelta Abajo appellation of origin, the best in the world. These trademarks are considered as premium cigar trademarks. 2.2.2The Defense of Cuban Cigar Trademarks Taking into account the notoriety of our brands there is in the market much kind of infringements. Infringements come in the form of both registration requests and use in certain countries. In both cases, we find trademarks that are the same or similar to ours, either phonetically or in terms of image. Among all our trademarks, Cohiba although it is the most well-known trademark of cigars in the world, it is, without any doubt, the most frequently attacked. Many courts and patent offices have recognized that this trademark is well known, and, in many cases, they have declared it as a renown trademark.. For example: Similar Words The request filed in the Dominican Republic to protect the name “Cojimar” in Class 34 and “Chibas” in class 25 in Spain are an example of a request to register a word similar to “Cohiba.” Similar Designs There are many examples of requesting for or the uses of the design of the Cohiba trademark for other appellations, for example, the use of the word Espléndidos, for a German restaurant, which we finally came to an agreement. Cohiba is a cigar trademark in which most of companies try to register or use in all kinds of products and services.

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Foreign courts (in Spain, France, Dominican Republic, Mexico and Taiwan…) have recognized that COHIBA is a well known trademark. But, the main Decision was the judgment of the Southern District Court of New York on March 6, 2004, because COHIBA was recognized as a well known trademark in the United States even when it never was sold in that market because of blockade regulations. Another infringement that it has become quite common in some markets in recent years is the marketing of counterfeit products. The most import thing to take into consideration in this kind of infringement is that when somebody uses a trademark linked with an appellation of origin, it is also counterfeiting the appellation of origin.

III. A QUESTIO AS COCLUSIO. Just to finish, I would like to talk about Who Influences to Whom? Does the Trademark Influence the Geographical Indication, or vice versa? I think that, generally, geographical indications influence trademarks, so that the creation of a trademark linked to a geographical indication gives the trademark great probability of success. We have examples of cigar trademarks that attained world fame linked to the Habano appellation of origin and whose fame declined when they change the origin. The case would be different if the trademark was born outside the area protected by the geographical indication—or even in a group of products different from those protected by the geographical indications—and then were added to the products protected by it. I should emphasize that trademarks which are related to geographical indications may be considered privileged, especially in the case of appellations of origin that are internationally known. Naturally, when I say that the trademark is largely boosted by the geographical indication, this is not absolute, because we cannot forget the role that marketing plays in the birth of a new trademark. If a trademark that is protected by a geographical indication is launched on the market without a good marketing strategy, it is doomed to failure. We have examples of this, too: Caney (named for one of the typical houses of Cuban Indians) Siboney (named for one of the three Cuban tribes of Indians and also for a famous song written by the Cuban composer Ernesto Lecuona) For certain strategic reasons, the names of these two trademarks didn’t stick in clients’ minds; as a result, they are no longer sold. So, according to our experience, these kind of products with a connection between Trademarks and Geographical Indications, should have very linked both strategies: It means, the Trademark strategy and the Geographical Indication strategy.

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That is the reason why, from the point of view of communication, we will continue in two ways: (1) to maintain our institutional campaigns (dedicated only to the Appellation of Origin Habanos) and (2) advertising our trademarks including the Appellation of Origin Habanos’ stick. So, when we communicate trademarks we also communicate the Habanos Appellation of Origin and the same in the contrary way. On the other hand, as I already said, we always use the same logo of our Habanos Appellation of Origin in all of our packaging, because the product is the most important advertising.

Adargelio Garrido de La Grana 22 & 23 of November 2007 Agadir, Marruecos

8

Exhibit O: Tatuaje Record at USPTO Website

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Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Typed Drawing Word Mark Translations Goods and Services Mark Drawing Code Serial Number Filing Date Current Filing Basis Original Filing Basis Published for Opposition Registration Number Registration Date Owner

TATUAJE The foreign wording in the mark translates into English as "TATTOO". IC 034. US 002 008 009 017. G & S: Cigars. FIRST USE: 20030527. FIRST USE IN COMMERCE: 20030527 (1) TYPED DRAWING 78262622 June 15, 2003 1A 1A February 3, 2004 2836665 April 27, 2004 (REGISTRANT) Johnson, Peter Hassell INDIVIDUAL UNITED STATES 2169 Stanley Hills Drive Los Angeles CALIFORNIA 90046 (LAST LISTED OWNER) TATUAJE CIGARS, INC. CORPORATION CALIFORNIA 2169 STANLEY HILLS DRIVE LOS ANGELES CALIFORNIA 90046

Assignment Recorded Type of Mark Register Live/Dead Indicator

ASSIGNMENT RECORDED TRADEMARK PRINCIPAL LIVE

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Exhbit P: Tatuaje Specimen at USPTO

Document Description: Specimens Mail / Create Date: 15-Jun-2003 Previous Page

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General trademark information: Please e-mail [email protected], or telephone either 571-272-9250 or 1-800-786-9199. Technical help: For instructions on how to use TDR, or help in resolving technical glitches, please e-mail [email protected]. If outside of the normal business hours of the USPTO, please email Electronic Business Support, or call 1-800-786-9199. Questions about USPTO programs: Please e-mail USPTO Contact Center (UCC).

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Exhibit Q: Tatuaje Application at USPTO

Document Description: Application Mail / Create Date: 15-Jun-2003 Previous Page

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PTO Form 1478 (Rev 4/2000) OMB Control #0651-0009 (Exp. 08/31/2004)

Trademark/Service Mark Application, Principal Register, with Declaration Serial Number: 78262622 Filing Date: 06/15/2003

The table below presents the data as entered. Input Field MARK

Entered TATUAJE

OWNER NAME

Johnson, Peter, Hassell

INTERNAL ADDRESS

Unit # 204

STREET

1025 North Kings Road

CITY

West Hollywood

STATE

CA

ZIP/POSTAL CODE

90069

COUNTRY

USA

PHONE

310-365-3842

FAX

323-650-9163

EMAIL

[email protected]

AUTHORIZED EMAIL COMMUNICATION

Yes

LEGAL ENTITY TYPE

INDIVIDUAL

COUNTRY OF CITIZENSHIP

United States

CORRESPONDENCE

NAME

Johnson, Peter, Hassell

FIRM NAME

DBA Havana Cellars

INTERNAL ADDRESS

Unit # 204

STREET

1025 North Kings Road

CITY

West Hollywood

STATE

CA

ZIP/POSTAL CODE

90069

COUNTRY

USA

EMAIL

[email protected]

AUTHORIZED EMAIL COMMUNICATION

Yes

GOODS AND/OR SERVICES DESCRIPTION TEXT

Cigars

FILING BASIS

Section 1(a)

FIRST USE ANYWHERE DATE

05/27/2003

FIRST USE IN COMMERCE DATE

05/27/2003

SPECIMEN FILE NAME(S)

\\ticrs\EXPORT5\IMAGEOUT5\782\626 \78262622\xml1\APP0002.JPG

SPECIMEN DESCRIPTION

Tatuaje Cigar box lid and cigar band.

ADDITIONAL STATEMENTS TRANSLATION

The foreign wording in the mark translates into English as Tattoo.

SIGNATURE INFORMATION SIGNATURE

/peterhjohnson/

SIGNATURE DATE

06/15/2003

SIGNATORY NAME

Peter Hassell Johnson

SIGNATORY POSITION

Owner

PAYMENT NUMBER OF CLASSES

1

NUMBER OF CLASSES PAID

1

SUBTOTAL AMOUNT

335

TOTAL AMOUNT

335

RAM SALE NUMBER

548

RAM ACCOUNTING DATE

06/16/2003

FILING INFORMATION SUBMIT DATE

Sun Jun 15 18:28:39 EDT 2003

TEAS STAMP

USPTO/BAS-66311215320030615182839079046 -78262622-200e27841c 4eadbc4847f6176cb4e2 f2e-CC-548-200306151 81333375426

PTO Form 1478 (Rev 4/2000) OMB Control #0651-0009 (Exp. 08/31/2004)

Trademark/Service Mark Application, Principal Register, with Declaration Serial Number: 78262622 Filing Date: 06/15/2003 To the Commissioner for Trademarks: MARK: TATUAJE The applicant, Peter, HassellJohnson, a citizen of United States, residing at Unit # 204, 1025 North Kings Road, West Hollywood, CA USA 90069, requests registration of the trademark/service mark shown on the drawing page in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended. The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists below the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. International Class : Cigars In International Class : the mark was first used at least as early as 05/27/2003, and first used in commerce at least as early as 05/27/2003, and is now in use in such commerce. The applicant is submitting or will submit one specimen for each class showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n) Tatuaje Cigar box lid and cigar band.. Specimen - 1 "The foreign wording in the mark translates into English as Tattoo." A fee payment in the amount of $335 will be submitted with the application, representing payment for 1 class(es). Declaration 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. Section 1001, and that such willful false statements, and the like, 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. Section 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; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true. Signature: /peterhjohnson/ Date: 06/15/2003 Signatory's Name: Peter Hassell Johnson Signatory's Position: Owner Mailing Address: Johnson, Peter, Hassell Unit # 204 1025 North Kings Road West Hollywood, CA 90069 RAM Sale Number: 548 RAM Accounting Date: 06/16/2003 Serial Number: 78262622 Internet Transmission Date: Sun Jun 15 18:28:39 EDT 2003 TEAS Stamp: USPTO/BAS-663112153-20030615182839079046-78262622200e27841c4eadbc4847f6176cb4e2f2e-CC-548-20030615181333375426

TDR Home This document may be displayed as a PDF file containing images without text. You may view online or save the entire document by clicking on the file download icon in the upper right corner of this page. [required PDF viewer] FAQ: Are you seeing only the first page of this PDF document? If you need help:








General trademark information: Please e-mail [email protected], or telephone either 571-272-9250 or 1-800-786-9199. Technical help: For instructions on how to use TDR, or help in resolving technical glitches, please e-mail [email protected]. If outside of the normal business hours of the USPTO, please email Electronic Business Support, or call 1-800-786-9199. Questions about USPTO programs: Please e-mail USPTO Contact Center (UCC).

NOTE: Within any e-mail, please include your telephone number so we can talk to you directly, if necessary. Also, include the relevant serial number or registration number, if existing.

Exhibit T: Photo Image of Bottom of TATUAJE Cigar Box