Bacardi & Co. Ltd

Trademark Trial and Appeal Board

Jul 2, 1997

EX (T.T.A.B. Jul. 2, 1997)

Paper No. 16
THIS DISPOSITION IS NOT CITABLE CEW
AS PRECEDENT OF THE TTAB JULY 2, 1997
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Bacardi & Company Limited
___________
Serial No. 74/532,347
___________
William R. Golden, Jr., Kelley, Drye & Warren for applicant.
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Sams, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Bacardi & Company Limited has filed a trademark
application to register the mark, LITTLE HAVANA1 for “rum
and rum specialty drinks.”
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(3) of the Trademark Act, 15
U.S.C. 1052(e)(3),2 on the ground that applicant’s mark is

1 Serial No. 74/532,347, in International Class 33, filed June 2, 1994,
based on a bona fide intention to use the mark in commerce.
2 The amendments to Section 2 of the Trademark Act of 1946 made by
Public Law 103-183, 107 Stat. 2057, The North American Free Trade
Serial No. 74/532,347
2
primarily geographically deceptively misdescriptive in
connection with its proposed goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
In order for registration to be properly refused under
Section 2(e)(3), it is necessary to show that (i) the mark
sought to be registered is the name of a place known
generally to the public; and that (ii) purchasers are likely
to believe, mistakenly, that the goods or services sold
under applicant’s mark have their origin in or are somehow
connected with the geographic place named in the mark. In
re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
See also, In re California Pizza Kitchen, Inc., 10 USPQ2d
1704 (TTAB 1988), citing In re Societa Generale des Eaux
Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed.
Cir. 1987).
Mark Conveys Primarily Geographic Connotation
With regard to the first prong of the test, we find
that the primary significance of LITTLE HAVANA is

Enactment Act, apply to applications filed on or after December 8, 1993.
Prior to these amendments, the prohibitions against registration on the
grounds that a mark is primarily geographically descriptive or that a
mark is primarily geographically deceptively misdescriptive were
contained in Section 2(e)(2) of the Act. Under the law as amended, the
prohibition against registration on the ground that a mark is primarily
geographically deceptively misdescriptive is contained in Section
2(e)(3) of the Act, which is applicable to the case herein. The legal
standard for determining this issue has not changed, although marks
found to be primarily geographically deceptively misdescriptive are no
Serial No. 74/532,347
3
geographical. There is no dispute that LITTLE HAVANA is a
well-known Hispanic community, substantially populated with
émigrés from Cuba and Cuban-Americans, which is neither
remote nor obscure, and which is located in Miami, Florida.
The Examining Attorney submitted excerpts from seven
articles contained in the NEXIS database to establish the
geographic significance of LITTLE HAVANA.3
Additionally, the Examining Attorney contends that, as
HAVANA is a principal city in Cuba, LITTLE HAVANA also
connotes Havana, Cuba. The Examining Attorney states in his
brief (p. 8) “[t]he addition of the word ‘Little’ qualifies
the word so that it may refer to either a part of a section
of the city of Havana, Cuba, or the section of the city of
Miami, Florida, known as ‘Little Havana.’” We agree that
the record supports the conclusion that the term HAVANA is
primarily geographic and connotes the city of Havana, Cuba.
However, the record contains no evidence establishing either
that there is a section of Havana, Cuba, referred to as
LITTLE HAVANA, or that the relevant public in the United
States would understand the phrase LITTLE HAVANA to refer to
Havana, Cuba. Thus, we conclude that LITTLE HAVANA has a
geographical connotation distinctly different from HAVANA,

longer eligible for registration under the provisions of Section 2(f) of
the Act, subject to certain grandfather provisions.
3 The NEXIS search report submitted by the Examining Attorney indicates
that he searched the database for LITTLE HAVANA within four words of
MIAMI and found 1,582 stories. We presume that the seven stories in the
record are a representative sample.
Serial No. 74/532,347
4
the former referring to the community in Miami, Florida, and
the latter referring to the city in Cuba.
We are not persuaded that LITTLE HAVANA is not
primarily geographic in connotation by applicant’s
contentions that HAVANA “evokes the image of a pre-Castro,
free-wheeling lifestyle that would appeal to the purchasers
of aged, fine rum”; or that applicant is “internationally
renowned for being the originator of the light style of
Cuban rum, aged and carefully blended, which became a
favorite in the United States after Prohibition and
continues to gain in popularity today.” (Applicant’s brief,
p. 3.) See, In re Bacardi & Company Limited, ___ USPQ2d ___
(TTAB, Serial No. 74/534,987 et.al., May 27, 1997).
Applicant has submitted absolutely no evidence to establish
on this record that the relevant purchasers would make such
an association with the term HAVANA or that such an
association would extend to the composite mark LITTLE
HAVANA.4
Goods/Place Association
There is strong evidence in this case that Havana,
Cuba, is a geographic location for which rum is a
significant product so that consumers are likely to make a

4 Even if applicant had established an association between HAVANA and a
particular lifestyle, such association would not contradict the primary
geographic significance of HAVANA, as the association may be made
precisely because of the primary significance of HAVANA as a city in
Cuba.
Serial No. 74/532,347
5
goods/place association between HAVANA and rum products.5
Thus, if the primary geographic connotation of applicant’s
mark was Havana, Cuba, we would conclude that a goods/place
association has been established and, thus, purchasers are
likely to believe that rum products sold under such a mark
originate in Havana, Cuba. However, that is not the case
herein and we conclude that the Examining Attorney has not
established a goods/place association between LITTLE HAVANA
in Miami, Florida, and rum products.
In this regard, the Examining Attorney states (brief,
p. 9):
How would people perceive the mark in relation to
the goods if the mark refers to the Little Havana
section of the city of Miami, Florida? Because
applicant has no specific location from which its
rum products originate, in that it is a
diversified company; and applicant’s goods are
distributed in the United States from Miami, which
includes the Little Havana section that is known
for its Cuban-American and Cuban émigré community;
and applicant uses the same formulae, ingredients,
and know-how in producing its product as it
developed in Havana, Cuba; purchasers would make
an association between the location known as
Little Havana, a part of Miami, and applicant’s
rum products. It may be believed that applicant’s
rum is either produced, bottled, processed,
rebottled, stored, or aged in Little Havana,
Miami. Purchasers would believe that Little
Havana in Miami is one of the places of origin of
the goods and be deceived because the goods are
neither produced nor distributed through the
Little Havana section of Miami.

5 The Examining Attorney has submitted evidence from dictionaries,
encyclopedias and gazetteers indicating that Havana, Cuba, is a major
city which produces a variety of goods, among which “rum” is listed as a
significant product. Further, applicant has alleged that its family
name, Bacardi, is widely associated with rum that is historically from
Cuba and that U.S. consumers associate a certain popular style of rum as
originating in Cuba.
Serial No. 74/532,347
6
We find the Examining Attorney’s contention to be primarily
conjecture. First, it does not automatically follow that,
because rum is a product closely associated with Cuba, the
same association extends to LITTLE HAVANA simply because it
is substantially a Cuban-American/Cuban émigré community.
The record does not establish such an association on this
basis, nor does it establish any basis for concluding,
regardless of any connection in the minds of purchasers
between Cuba and LITTLE HAVANA, that purchasers would
associate rum products with LITTLE HAVANA in Miami, Florida.
Likewise, the fact that applicant’s product was developed
and originally produced in Cuba does not establish an
association between rum products and LITTLE HAVANA.
It is a general principle that, absent a genuine issue
that the term is remote or obscure, or that its primary
significance is other than geographic, a goods/place
association may be presumed from the fact that applicant’s
goods come from the place named in the mark. See, In re
California Pizza Kitchen, Inc., supra at 1706, citing In re
Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). In
the case before us, applicant admits that its goods are
manufactured in several specified countries outside the
United States, other than Cuba, and that its goods enter the
United States through Miami, where applicant’s importer and
Serial No. 74/532,347
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national distributor is located, but not the LITTLE HAVANA
section thereof. Thus, we cannot presume that a goods/place
association exists herein based on a conclusion that the
goods originate in the place named in the mark, since
applicant’s goods do not originate in LITTLE HAVANA.6
Because we conclude that the Examining Attorney has not
established a goods/place association between LITTLE HAVANA
and the rum products identified in this application, we find
that the Examining Attorney has not established that the
mark herein is primarily geographically deceptively
misdescriptive in connection with the identified goods under
Section 2(e)(3) of the Act.
Applicant’s Allegation of Extenuating Circumstances
While we have concluded that the Examining Attorney has
not established that the mark herein is primarily
geographically deceptively misdescriptive and, thus, the
refusal to register is reversed, we feel compelled to
address several of applicant’s arguments which are not well-
taken so that there is no misunderstanding about the basis
for our decision herein.
In particular, applicant’s contention, essentially,
that extenuating circumstances warrant reversal of the
refusal to register forms no basis for our reversal herein.

6 We disagree with the Examining Attorney’s conclusion that applicant’s
goods originate in Miami. The fact that applicant’s goods are
manufactured in more than one location does not, alone, lead us to
Serial No. 74/532,347
8
Applicant states that it began its rum-producing business in
Cuba and intends to resume producing rum in Cuba, and to use
the proposed marks herein in connection with such rum, as
soon as legally and politically possible. Applicant
explains its history and relationship to Cuba, stating that
“applicant is presently owned by descendants of Don Facundo
Bacardi, who over a century ago in Cuba originated a recipe
and process for the distillation and manufacture of rum that
is sold under the BACARDI name and mark” and that “[o]n
October 14, 1960, the Cuban properties of applicant’s
predecessor were unlawfully expropriated”; that applicant is
a well-known producer of Cuban rum, which is now produced
elsewhere according to the same formulae and processes that
have been handed down over the past 130 years in the Bacardi
family; that applicant originated the “light style of rum,
aged and carefully blended” that applicant alleges is
popular in the United States; and that applicant intends to
produce rum in Cuba, where applicant’s rum business began,
“[w]hen the President of the United States, pursuant to the
Cuban Democracy Act of 1992, 22 U.S.C.A. Section 6007(b),
certifies that a democratic government has been re-
established in Cuba such that the U.S. trade embargo with
Cuba is lifted”. Applicant submitted no evidence in support
of its statements.

conclude that the mere importation and distribution of applicant’s goods
determines the place of origin of applicant’s goods.
Serial No. 74/532,347
9
Applicant states, in its brief, that:
to refuse to allow intent-to-use applications
. . . because of the current embargo, unfairly
prejudices companies . . . that adhere to U.S.
law. Cuban state-run trading companies, many of
which operate out of facilities confiscated by
Castro from pre-Castro Cuban free enterprises, are
unfairly favored, because they are presumably
permitted to register such marks in the United
States on an ‘intent-to-use’ basis or under treaty
rights even though they cannot have a present bona
fide intent to use those marks in interstate
commerce within the United States as the embargo
does not permit such usage. Such a policy
unfairly favors the anti-democratic, Communist-
controlled business entities in Cuba, by
permitting them, in effect, to register marks that
arguably evoke the rich heritage of Cuban history
and culture, while denying the expatriate Cuban
businesses that helped build that heritage from
registering marks . . . that evoke a pre-Castro,
Cuban lifestyle. Such a policy is contrary to the
Cuban Democracy Act, which is intended to promote
the adoption of a democratic government in Cuba.
Applicant asserts that “[i]n view of recent events, it is
quite possible that the policy of the U.S. government as
expressed in federal law will be effective and within [the]
thirty months [that an intent-to-use applicant is permitted
after allowance in which to use a mark] democracy will be
re-established in Cuba” and, thus, the Examining Attorney’s
refusal to register would be moot.7
We find applicant’s position to be unpersuasive as it
is based on a number of misconceptions. First and foremost,

7 As applicant notes, the provisions establishing and defining the terms
of the trade sanctions, or “embargo,” against Cuba can be found in the
Trading With The Enemy Act, 50 U.S.C.A. App. § 16(b)(1), the Cuban
Democracy Act, 22 U.S.C.A. 6001 et. seq. and the Cuban Asset Control
Regulations, Chapter 31 C.F.R. Part 515.
Serial No. 74/532,347
10
we have found the primary geographic connotation of
applicant’s mark to be LITTLE HAVANA in Miami, Florida,
rather than Havana, Cuba. Thus, the issues surrounding
applicant’s ability or inability to manufacture its goods in
Cuba, and the existence of trade sanctions against Cuba, are
irrelevant to our consideration in this case.
Similarly, we see no basis for applicant’s allegations
of prejudice. A so-called Cuban state-run trading company
applying to register in the United States the marks herein
on the basis of a bona fide intention to use such marks in
commerce, in connection with the identified goods herein,
would be subject to the same examination and same refusals
to register as applicant. The fact that such company would
likely indicate its intention for its identified goods to
originate in HAVANA, Cuba, would result in the refusal,
based on the geographic significance of the marks, being
made under Section 2(e)(2), rather than, as herein, under
Section 2(e)(3). Presumably, the sanctions contained in the
relevant laws and regulations pertaining to Cuba would
present the same problems to any intent-to-use applicant
(i.e., the uncertainty that the required use of the mark in
commerce between the United States and Cuba could occur
within the timeframe mandated in the Trademark Act so that
the intent-to-use application could mature into a
registration).
Serial No. 74/532,347
11
The Cuban Asset Control Regulations (“the
Regulations”), at 31 C.F.R. 515.527, permit certain
transactions with respect to the filing of trademark
applications and maintenance of trademark registrations.
Certain special procedures pertaining to such transactions
are detailed in the Regulations; however, in all other
respects, the procedural and substantive provisions of the
Trademark Act and relevant law and regulations must be met.8
Finally, we note that, to the extent applicant is
arguing that substantive examination of an application
should be deferred until a statement of use is filed,
applicant’s position is not well-taken. While it is not the
case herein, even if an uncertain future event could render
a substantive refusal moot, the Examining Attorney is
required to conduct, to the fullest extent possible, a
substantive examination of an application, regardless of
whether it is based upon Sections 1(a), 1(b) or 44 of the
Act, prior to passing the application to publication for
opposition. See, In re Parfums Schiaparelli Inc., 37 USPQ2d
1864 (TTAB 1995); and In re American Psychological
Association, 39 USPQ2d 1467 (Comm’r. 1996). Thus, the

8 Thus, for example, the most likely statutory basis for filing a
trademark application, subject to the Regulations, would be under
Section 44 of the Act, based on a foreign filing or registration in a
country that is a party to the Paris Convention and/or the World Trade
Organization. Further, an existing registration, which is subject to
the Regulations, would be subject to the maintenance provisions in
Sections 8 and 9 of the Act, permitting a showing of nonuse due to
special circumstances.
Serial No. 74/532,347
12
Examining Attorney properly considered the issue of
geographic descriptiveness during his examination of the
subject applications. Further, applicant admitted that, at
the time of filing the applications and during the
examination thereof, it was legally precluded from producing
the identified products in Cuba. Therefore, the Examining
Attorney properly considered those facts, rather than
considering applicant’s allegations of possible future
occurrences and, while reversed by this Board, his refusal
under Section 2(e)(3) of the Act, on the ground that the
marks herein are primarily geographically deceptively
misdescriptive in connection with the identified goods was
timely.
Serial No. 74/532,347
13
Decision: The refusal under Section 2(e)(3) of the Act
is reversed.
J. D. Sams
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board