Corporacion Habanos, S.A.v.Guantanamera Cigars Company

Trademark Trial and Appeal Board

Feb 29, 2008

No. 91152248 (T.T.A.B. Feb. 29, 2008)

Mailed:
February 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Corporacion Habanos, S.A.

v.

Guantanamera Cigars Company
_____

Opposition No. 91152248 to application
Serial No. 76256068 filed on May 14, 2001
_____

David B. Goldstein of Rabinowitz, Boudin, Standard, Krinsky
& Lieberman, P.C. for Corporacion Habanos, S.A.

Frank Herrera of Frank Herrera, P.A. for Guantanamera Cigars
Company.
______

Before Hairston, Zervas and Cataldo, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

In a separate decision, we have decided the merits of
opposer's Trademark Act Section 2(e)(3), 15 U.S.C.
§ 1052(e)(3), claim asserted in this case. In this order,
we rule on the numerous objections made by each party to the
other’s evidence submitted by notice of reliance. We have
opted to issue a separate order because of the large number
of evidentiary objections.
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91152248
2
Opposer's Evidentiary Objections

We rule as follows on opposer's objections to applicant's
exhibits submitted with applicant's notice of reliance.1
a. Exhibit 1. After opposer submitted portions of Mr.
Montagne’s discovery deposition with its notice of
reliance, applicant submitted Mr. Montagne’s entire
discovery deposition. Applicant did not indicate why
in fairness the entire deposition should be
considered so that opposer's submission would not be
misleading. See Trademark Rule 2.120(j)(4), 37
C.F.R. §2.120(j)(4). Applicant also did not submit
any of the exhibits to Mr. Montagne’s discovery
deposition. In order to correct any misimpressions
created by the portions of Mr. Montagne’s testimony
submitted by opposer, such as with respect to any
meaning of the term “guantanamera” not favorable to
opposer, and because opposer submitted many of the
deposition exhibits with its notice of reliance, we
exercise our discretion as permitted by Trademark
Rule 2.120(j)(4) and consider Mr. Montagne’s entire
discovery deposition. Opposer's objection is
overruled.

b. Exhibit 2. Opposer's objection to applicant's
submission of less than the entire file history of
the application involved in this proceeding is
overruled; the file history of applicant’s
application is automatically of record pursuant to
Trademark Rule 2.122(b), 37 C.F.R. §2.122(b).

c. Exhibits 6, 7, 8, 13, 25, 32, 38 and 40. Opposer's
objections to various Internet printouts are
sustained because such printouts may not be
authenticated through the notice of reliance
procedure. Applicant has not authenticated them
through the testimony of a person who can properly
authenticate and identify the materials. See TBMP
§ 704.08 (2d ed. rev. 2004); Alfacell Corp. v.
Anticancer Inc., 71 USPQ2d 1301, 1302 n.3 (TTAB
2004).

1 We have not received a response from applicant regarding the
objections made by opposer to applicant's evidence. Thus, while
we have not treated opposer's objections as conceded, we have
ruled on opposer's objections without the benefit of any
arguments by applicant on the propriety of opposer’s objections.
Opposition No. 91152248
3
d. Exhibit 9. Opposer’s objection to applicant's
submission of applicant's supplemental responses to
opposer's first set of interrogatories is sustained;
except under one limited circumstance which is
inapplicable here, a party may not introduce its own
responses to discovery requests by a notice of
reliance. Trademark Rule 2.120(j)(5), 37 C.F.R.
§ 2.120(j)(5).

e. Exhibits 10 and 34. Opposer's objection to both
exhibits is sustained because applicant has not
provided a translation of these exhibits which are in
Spanish. Opposer's objection to Exhibit 34 is also
sustained because it comprises a brochure, and there
is no evidence that the brochure is available to the
general public in libraries or of general circulation
among members of the public. Trademark Rule
2.122(e), 37 C.F.R. § 2.122(e); Daggett & Ramsdell,
Inc. v. Procter & Gamble Co., 275 F.2d 955, 125 USPQ
236, 238 (CCPA 1960).

f. Opposer's objection on the grounds of relevance to
(a) certain third-party registrations from the
Office’s TESS database submitted as Exhibits 11, 12,
16, 35 and 36, and (b) pages from an English language
dictionary to show that “guantanamera” is not in the
dictionary, submitted as Exhibit 33, are overruled.
We have given, however, appropriate weight to the
registrations and the dictionary pages in our
deliberations.

g. Exhibit 28. Opposer's objection to copies of
photographs of applicant's goods is sustained; the
Trademark Rules do not allow for the introduction of
such evidence pursuant to a notice of reliance.

h. Exhibits 37 and 39. Opposer's objection is
sustained; these exhibits consist of two declarations
which were submitted with the summary judgment
motions. Evidence submitted in connection with a
summary judgment motion is of record only for
purposes of that motion. To be considered at final
hearing, the evidence must be properly introduced
during the appropriate testimony period. See TBMP
§ 528.05(a) (2d ed. rev. 2004). Further, although
Trademark Rule 2.123(b), 37 C.F.R. § 2.123(b),
provides in relevant part that “[b]y written
agreement of the parties, the testimony of any
witness or witnesses of any party, may be submitted
in the form of an affidavit by such witness or
Opposition No. 91152248
4
witnesses,” no stipulation has been submitted to
allow opposer to submit the testimony of its
witnesses by affidavit or declaration.

Applicant's Evidentiary Objections

We rule as follows on applicant's objections to thirty-
two of opposer's exhibits submitted with opposer's notice of
reliance:
a. Objections to evidence based on relevancy are
overruled; unless the evidence is subject to another
objection which we have sustained, we have given the
evidence appropriate weight in our deliberations.

b. Objections regarding evidence for which applicant has
waived any objection based on authentication in the
stipulation filed on September 25, 2006 are overruled
because of applicant's waiver.

c. Objections based on hearsay are overruled because
opposer's exhibits have not been offered for the
truth of the matters contained therein, or because
applicant has not explained the basis for its
objection.

d. Objections to the extent that documents come from the
Wikipedia website are overruled. See In re Total
Quality Group, Inc., 51 USPQ2d 1474, 1475-1476 (TTAB
1999) (providing that the weight given to information
retrieved from the Internet must be carefully
evaluated because the source is often unknown); In re
IP Carrier Consulting Group, 84 USPQ2d 1028, 1032
(TTAB 2007) (“the Board will consider evidence taken
from Wikipedia so long as the non-offering party has
an opportunity to rebut that evidence by submitting
other evidence that may call into question the
accuracy of the particular Wikipedia information”).
We have given the Wikipedia documents the weight they
are due.

e. Objections regarding evidence submitted with
opposer's notice of reliance which is duplicative of
evidence submitted as an exhibit to a testimony
deposition or which is in the record by operation of
the Trademark Rules are overruled.

Opposition No. 91152248
5
Additionally, applicant's objections to the following
exhibits are overruled: (a) Exhibit 9, opposer's
application for the mark GUANTANAMERA, because applicant has
relied on it in arguing that a translation of the term was
not needed in applicant's application; (b) Exhibit 10,
because it is also an exhibit to Mr. Morejon’s deposition;
(c) Exhibit 11, online entries from The Columbia Gazetteer
(other than the entry regarding Pete Seeger, which is
discussed below), because The Columbia Gazetteer is a
standard reference work; (d) Exhibit 20, a definition from a
Spanish language dictionary, because a corrected copy of the
entire exhibit has been filed with applicant's consent and
the corrected copy contains an English translation;
(e) Exhibit 18, because opposer indeed has included a
statement identifying the document in its notice of reliance
in accordance with Trademark Rule 2.122(e); and (f) Exhibits
21 and 22 because the exhibits are from a Spanish language
dictionary and opposer's claims involve the meaning of a
Spanish word.
The following objections are sustained:
a. Applicant's objection to (a) Exhibit 28, a document
from reference.com showing an entry for “Guantanamo,”
and (b) the second document in Exhibit 38 entitled
“Mambo Kings” from wikipedia.org, because web pages are
not self-authenticating and opposer has not contended
these documents are subject to the stipulation between
the parties regarding authentication.

b. Applicant's objections to Exhibits 4 and 8, because
opposer has not provided a statement indicating the
Opposition No. 91152248
6
relevance of the exhibit as required by Trademark Rule
2.122(e).

c. Applicant's objection to the entry from the online
version of The Columbia Encyclopedia for “Pete Seeger,”
one of five entries from The Columbia Gazetteer or The
Columbia Encyclopedia submitted as a part of
Exhibit 11, because opposer did not list this document
in its notice of reliance. Trademark Rule 2.122(e).
We do, however, take judicial notice of this entry for
“Pete Seeger.” See University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983); In re CyberFinancial.Net Inc., 65 USPQ2d
1789, 1791 n.3 (TTAB 2002).

In addition, we do not consider opposer's notice of
reliance exhibit 43, which applicant has not objected to;
the notice of reliance procedure does not extend to such
evidence (a dvd containing an excerpt of the song entitled
“Guantanamera” sung by Pete Seeger and excerpts from two
movies.)

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