Coporacion Habanos, S.A. and Empresa Cubana del Tabaco, dba Cubatabacov.Cigar King, LTD

Trademark Trial and Appeal Board

Jun 12, 2013

No. 92053245 (T.T.A.B. Jun. 12, 2013)

Baxley Mailed: June 12, 2013

Cancellation No. 92053245

Corporacion Habanos, S.A. and
Empresa Cubana del Tabaco,
dba Cubatabaco

v.

Cigar King, Ltd.

Before Kuhlke, Wolfson, and Masiello,
Administrative Trademark Judges.

By the Board:

In the above-captioned proceeding, petitioners seek
cancellation of respondent’s registrations for the marks
HAVANA SOUL and HABANA LEON, both for “[c]igars made with
Cuban seed tobacco” in International Class 34.1 As grounds
for cancellation, petitioners allege: (1) that the
involved marks are geographically deceptive under Trademark
Act Section 2(a), 15 U.S.C. Section 1052(a), and primarily
geographically deceptively misdescriptive under Trademark

1 Registration No. 3207740 for the HAVANA SOUL mark issued
February 13, 2007, and alleges June 30, 2005 as the date of first
use anywhere and date of first use in commerce. The registration
includes a disclaimer of HAVANA.
Registration No. 3207741 for the HABANA LEON mark issued
February 13, 2007, and alleging June 30, 2005 as the date of
first use anywhere and date of first use in commerce. The
registration includes a disclaimer of HABANA.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92053245

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Act Section2(e)(3), 15 U.S.C. Section 1052(e)(3), “for lack
of the requisite nexus with Havana, Cuba or Cuba;” (2) that
the involved marks are deceptive under Trademark Act
Section 2(a), 15 U.S.C. Section 1052(a), and merely
descriptive under Trademark Act Section 2(e)(1), 15 U.S.C.
Section 1052(e)(1); (3) that, because the terms “‘Havana’
and ‘Habana,’ when used on or in connection with cigars,
are indications of geographical origin or source, which do
not correspond to the place in which respondent’s
“identified goods are, will be, or lawfully could be,
fabricated, manufactured, or produced,” the registrations
should be cancelled under Articles 23-28 of the General
Inter-American Convention for Trade Mark and Commercial
Protection, 46 Stat. 2907 (“IAC”) and Trademark Act
Sections 44(b) and (h), 15 U.S.C. Sections 1126(b) and
(h);” and (4) fraud based on respondent’s amendments to the
identifications of goods in the applications for the
involved registrations. Respondent, in its answer, denied
the salient allegations of the petition to cancel and set
forth affirmative defenses and a counterclaim seeking
cancellation of petitioners’ pleaded Registration No.
1970911. The Board dismissed the counterclaim in an August
11, 2011 order.
Cancellation No. 92053245

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In a July 2, 2012 order, the Board granted in part and
denied in part petitioners’ motion to compel discovery. In
that order, respondent was allowed until August 1, 2012 to:
(1) conduct a thorough search of its records for responsive
documents that are responsive to all of petitioners’
document requests except request no. 28; (2) serve amended
responses to petitioners’ document requests (other than
request no. 28), which accurately reflect respondent’s
document production, as necessary; (3) serve supplemental
responsive documents as necessary upon petitioners with
responsive documents labeled or organized to correspond
with the request to which each document is responsive;
(4) serve new copies of any website printouts that it
produced in response to petitioners’ document requests that
include both the date on which they were accessed and the
URLs of the websites from which they were printed; (5)
produce either (a) an index in which it identifies the
request to which each document already produced in
discovery is responsive or (b) new copies of documents
already produced in discovery which indicate the request to
which each document is responsive; and (6) serve amended
responses under oath and without objection to petitioners’
interrogatories, including complete responses to
interrogatory nos. 9-13.
Cancellation No. 92053245

4
On August 15, 2012, petitioners filed a motion for
sanctions, including entry of judgment, based on
respondent’s failure to comply with the Board’s July 2,
2012 order. The motion has been fully briefed.
After respondent’s copy of the Board’s August 16, 2012
order was returned as undeliverable by the U.S. Postal
Service, the Board, on October 12, 2012, issued an order
where it noted respondent’s attorney’s new correspondence
address and reset time for briefing the motion for
sanctions.2
In support of the motion for sanctions, petitioners
contend that judgment should be entered against respondent
because it wholly failed to comply with the July 2, 2012
order. In the alternative, petitioners ask that the Board
strike respondent’s affirmative defenses, preclude
respondent from introducing evidence, and require full
compliance with the July 2, 2012 order.
The substance of respondent’s brief in response
consists in its entirety of the following.

2 In that order, the Board noted that respondent included the new
correspondence address in the signature blocks of its motion
(filed January 25, 2012) to extend time to respond to
petitioner’s motion to compel and its brief in response (filed
February 6, 2012) to petitioner’s motion to compel, and that
respondent did not properly amend its correspondence address in
this proceeding by filing a separate change of correspondence
address in this case. The Board further stated that, because the
July 2, 2012 order was not returned to the Board as
undeliverable, respondent was presumed to have received that
order.

Cancellation No. 92053245

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1. Registrant conducted a thorough search of its
records for responsive documents.

2. Registrant has no other responsive documents.

Registrant voluntarily takes the sanction of
having all of its affirmative defenses stricken
with the exception of the affirmative defense
that Petitioners lack standing.3

Registrant also voluntarily accepts that it will
not be able to rely upon certain documents
requested but not produced as evidence in this
matter relating to the first two elements of
Petitioners’ 2(e)(3) claim.

Registrant merely requests that it be given the
opportunity to post a defense that
Petitioners’[sic] lack standing and to defend
against the third and final element of the
Petitioners’ [Section] 2(e)(3) claim.4

In reply, petitioners contend that respondent still
has not complied with four of the six enumerated
requirements set forth in the July 2, 2012 order and has
offered no explanation for its continuing refusal to

3 “Lack of standing is not an affirmative defense. Standing is
an element of petitioners’ claim.” Blackhorse v. Pro Football
Inc., 98 USPQ2d 1633, 1637 (TTAB 2011).

4 The elements of a primarily geographically deceptively
misdescriptive refusal under Section 2(e)(3) are as follows:
(a) the primary significance of the mark is a
generally known geographic location;
(b) the consuming public is likely to believe the
place identified by the mark indicates the origin of
the goods bearing the mark (i.e., that a goods-place
association exists), when in fact the goods do not
come from that place; and
(c) the misrepresentation would be a material factor
in the consumer's decision to purchase the goods.
Corporacion Habanos S.A. v. Guantanamera Cigars Co., 102 USPQ2d
1085 (TTAB 2012) (citing In re California Innovations, 329 F.3d
1334, 66 USPQ2d 1853, 1856-57 (Fed. Cir. 2003)).

Cancellation No. 92053245

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comply; that respondent admits that it should be
sanctioned, but makes no arguments as to why its proposed
lesser sanctions are appropriate and why entry of judgment
is not; and that respondent’s assertion that it has
conducted a thorough search of its records and has found no
other responsive documents is “dubious.”
Trademark Rule 2.120(g)(1) states, in relevant part,
as follows: "If a party fails to comply with an order of
the Trademark Trial and Appeal Board relating to discovery,
… the Board may make any appropriate order, including any
of the orders provided in Rule 37(b)(2) of the Federal
Rules of Civil Procedure…."
Respondent did not allege that it did not receive the
July 2, 2012 order. Under the circumstances herein, it was
incumbent upon respondent to comply fully and promptly with
that order or to timely file a request for reconsideration
thereof. Instead of complying with the July 2, 2012 order
in a timely manner, respondent made only a three-months
late, de minimis effort to comply with the July 2, 2012
order. In particular, respondent did not: (1) serve
amended responses to petitioners’ document requests to the
extent required, which accurately reflect respondent’s
Cancellation No. 92053245

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document production, as necessary;5 (2) serve new copies of
any website printouts that it produced in response to
petitioners’ document requests that include both the date
on which they were accessed and the URLs of the websites
from which they were printed; (3) prepare and serve either
(a) an index in which it identifies the request to which
each document already produced in discovery is responsive
or (b) new copies of documents already produced in
discovery which indicate the request to which each document
is responsive; and (4) serve amended responses under oath
and without objection to petitioners’ interrogatories,
including complete responses to interrogatory nos. 9-13.
We construe respondent’s response to the motion for
sanctions as affirmatively stating it will not provide the
discovery that the Board required in the July 2, 2012
order. While accepting the lesser sanctions, respondent
has deliberately prevented petitioner from obtaining
information to present its case. Respondent has evaded and
frustrated petitioners’ attempts to secure discovery. The
parties agree that entry of sanctions against respondent is

5 The record in this case indicates that respondent’s document
production consists of eighteen pages of documents from its own
records and 127 pages of printouts of website excerpts that were
the results of an Internet search made by an unspecified person
at an unspecified time. The website excerpts are not identified
by either the URLs for the websites at issue or the date(s) on
which the websites were accessed.

Cancellation No. 92053245

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warranted in this case. However, respondent’s deliberate
failure to comply in full with the Board’s order has
secured for respondent the sanction of judgment.
Although entry of judgment as a sanction for failure
to comply with an order compelling discovery is a harsh
remedy, it is justified where no less drastic remedy would
be effective, and there is a strong showing of willful
evasion. See Unicut Corp. v. Unicut, Inc., 222 USPQ 341,
344 (TTAB 1984). We believe that situation exists here.
In this case, respondent was under a Board order to take
certain specific actions to supplement its discovery by
August 1, 2012. Further, respondent was warned of the
possible result of noncompliance with the order.
Respondent has been represented by counsel since the filing
of its answer in this proceeding. We note that
respondent's brief in response to the motion for sanctions
did not set forth reasons for respondent's inability to
comply with the Board order by August 1, 2012.
Respondent's willful noncompliance with the July 2, 2012
order and deliberate action to impair petitioner’s ability
to present its case after having been advised of the
possible consequences warrants entry of the sanction
requested by petitioners.
Cancellation No. 92053245

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In view thereof, the motion for entry of sanctions
under Trademark Rule 2.120(g)(1) is granted. The petition
to cancel is granted, judgment is hereby entered against
respondent, and Registration Nos. 3207740 and 3207741 will
be cancelled in due course.