Close but No Cigar – GRAN HABANO Refused as Geographically Misdescriptive

“I never smoke to excess – that is, I smoke in moderation, only one cigar at a time,” Mark Twain once said about cigar smoking, a vice that many still share today. American cigar aficionados rejoiced when the Obama administration officially began to reestablish relations with Cuba in January of 2015, including provisions that allow $100 worth of alcohol or tobacco per traveler to be imported into the country. Cuban cigars are generally considered the gold standard in the USA, despite competition from around the world. Thus, it may come as little surprise that the Trademark Trial and Appeal Board (TTAB) refused registration for GRAN HABANO for cigars when the manufacturer is from Miami, Florida.

Says it all, really.
Up in Smoke – The TTAB Opinion

On October 13, 2015, the TTAB released its non-precedential opinion refusing registration of the GRAN HABANO mark for “cigars made from Cuban seed tobacco,” because it is geographically misdescriptive. Section 1052(e)(3) of the Lanham Act states that no trademark will be issued if the mark, when used on or in connection with the goods of the applicant, is “primarily geographically deceptively misdescriptive” of the goods. A mark is geographically deceptively misdescriptive if:

  1. The primary significance of the mark is a generally known geographic location;
  2. The goods or services do not originate in the place identified in the mark;
  3. Purchasers would be likely to believe the goods or services originate in the geographic place identified in the mark; and
  4. The misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services.
Primary Significance

Havana, Cuba’s largest city and a major port in the West Indies, is the political, economic, and cultural center of Cuba. Applicant Santa Cruz Tobacco Co., Inc. (SC Tobacco) did not deny these facts, choosing instead to argue that consumers will ignore the translation of GRAN HABANO (The Great Havanan) and that “habano” has another, non-geographic meaning.

Smokey~

Gran Habano packaging

SC Tobacco’s argument that most customers in the USA are not Latin or native Spanish speakers who will translate the mark was entirely unpersuasive. The TTAB noted that understanding Spanish is not limited to native speakers, as 12.3% of the USA population speaks Spanish at home, and tens of millions of people have learned Spanish in school, emphasizing that around 70% of students choose Spanish as their foreign language course. Further, because SC Tobacco’s target consumer is in the general adult population, and is not limited to Spanish-speaking adults, the TTAB found that a “substantial portion of consumers” are likely to translate the mark. SC Tobacco’s second argument, that “habano” is also a descriptive cigar industry term referring to a “specific type of wrapper for cigars,” was summarily overcome as the TTAB found the primary significance to be Havana, Cuba. So, because most consumers would automatically translate GRAN HABANO to “The Great Havanan” (or at least something Havana, in this author’s case), and the relative obscurity of the industry usage, the primary significance of the mark was Havana, Cuba.

Origin

This seemed like the strongest argument for SC Tobacco, because their cigars are made from genuine “Cuban seed tobacco.” Thus, at first glance, it seems reasonable to find that the cigars “originated” from Havana, Cuba based on the stock of the seed. Unfortunately for SC Tobacco, the TTAB had already answered this question in a previous, precedential decision – finding an “insufficient connection between Cuban seed tobacco,” and Havana, particularly because “the record in this case shows that cigars from Cuban seed tobacco share few, if any, qualities or characteristics of genuine or 100% Cuban cigars.” Thus, because SC Tobacco manufactures in Florida, with leaf production and manufacturing facilities located in Central and South America, the seed “[being] descended from the original tobacco seed grown in Cuba prior to the Cuban Revolution in 1962,” was too tenuous a relationship for Cuba to be the “origin” of the goods.

Goods/Place Association & Materiality

Because Cuba is “highly regarded for its premium cigars,” the TTAB was not persuaded by SC Tobacco’s claims that its consumers are too sophisticated to believe the cigars originated there. Again, because SC Tobacco’s application did not limited its market to sophisticated consumers, focusing on the general adult population, and considering the renown of Cuban cigars, the TTAB was not convinced. Further, although the TTAB acknowledged that consumers are aware of the USA embargo on Cuba, the “precedent [was] clear that such policy measures must not influence [their] findings.” Altogether, the Board concluded that SC Tobacco had not overcome the examining attorney’s objections, e.g., that consumers were likely to associate the cigars with Cuba.

Tempted yet?

Lastly, the Board found that the misrepresentation (association with Cuba) would be a material factor in consumers’ decision to buy SC Tobacco’s cigars. Despite several declarations submitted by SC Tobacco regarding the preference for Central and South American cigars among factions of the cigar‑smoking public, and the fact that some of the cigar‑smoking public is accustomed to being exposed to brands that include terms that “evoke Cuban heritage,” the TTAB was unconvinced. Again, because the trademark application was not limited to a subset of consumers, that subset represented by the declarations submitted, the Board found that the general cigar smoking population would find the association with Cuba to be material. In fact, because there was “strong evidence of record that Havana, Cuba is associated with highly-desirable premium tobacco products,” it “create[d] a presumption of materiality for purchasers.” And the only way to rebut such a finding would be “objective proof that cigars from Havana have ‘no particular quality, reputation or other characteristic’ supporting this status.” Definitely some difficult facts to snuff out.

Use the Ashtray: Ending Thoughts

So what can businesses take away from this? At least two things: (1) do not choose a geographic term for your mark unless your goods or services are legitimately associated with that place, and (2) tailor any TTAB arguments to the target consumers from your application – arguing that your consumers are only Spanish-speaking or “sophisticated” when your application is for the general public will be unsuccessful. Lastly, know that geographic marks are generally unregistrable on the main register for being descriptive, unless you can show secondary meaning. If not, you may be able to acquire a certification mark, which are marks used with products to certify regional or other origin, material, manufacture, quality, accuracy, or other characteristic of the goods. However, a certification mark must be made available without discrimination to certify the goods of any person who maintains the standards or conditions that the mark certifies, so it is nowhere near as strong as a mark on the principal register. To “roll” things up, we all know what Sigmund Freud said about the subject, “sometimes a cigar is just a cigar.”

Groucho Marx with his signature cigar – Courtesy of Vimbly http://www.vimbly.com/blog/7-of-films-most-infamous-cigar-smokers/

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