Corporation Cimex, S.A.v.DM Enterprises & Distributors Inc.

Trademark Trial and Appeal Board

Nov 17, 2008

No. 91178943 (T.T.A.B. Nov. 17, 2008)

Brown Mailed: November 17, 2008

Opposition No. 91178943

Corporation Cimex, S.A.

v.

DM Enterprises & Distributors
Inc.

Before Holtzman, Cataldo and Ritchie de Larena,
Administrative Trademark Judges.

By the Board:

DM Enterprises & Distributors, Inc. (“applicant”) has
filed an application seeking registration on the Principal
Register of the mark shown below for “coffee” in
International Class 30. The application was filed on May
14, 1999, alleging February 13, 1994, as both the date of
first use anywhere and the date of first use in commerce.1

1 The term CUBITA has been translated in the application as
“little Cuba.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91178943
2
Corporacion Cimex, S.A. (“opposer”), a Cuban company,
has opposed registration of applicant's mark. In its
notice of opposition, opposer has alleged that it has a
pending application in the United States to register the
mark shown below on the Principal Register for “roasted
coffee” in International Class 30, and that its ability to
register this mark will be “interfered” with if applicant
is allowed to register its mark.

Opposer’s application Serial No. 77252382 was filed on
August 10, 2007 under Section 44(e) of the Trademark Act,
and the involved application has been cited by the
trademark examining attorney as a potential bar to
registration of opposer’s mark. As grounds for opposition,
opposer has alleged that it has priority over applicant
based upon Article 7 of the General Inter-American
Opposition No. 91178943
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Convention for Trademark and Commercial Protection of
Washington, 1929 (“Pan American Convention”), 46 Stat.
2907, and since applicant’s mark has “interfered with”
opposer’s ability to register its mark, opposer can prevail
as a matter of law. Additionally, opposer alleges that
applicant's mark is primarily geographically deceptively
misdescriptive within the meaning of Trademark Act §2(e)(3)
and deceptive within the meaning of Trademark Act §2(a).
Applicant answered the amended notice of opposition by
denying the salient allegations contained therein.
After a number of stipulated requests to extend the
discovery and trial dates, opposer filed a timely motion
for summary judgment on the ground that applicant’s mark is
an “interfering mark” and that opposer has priority over
applicant based on Article 7 of the Pan American
Convention. Applicant filed a cross-motion for summary
judgment based upon opposer’s alleged lack of standing to
bring this opposition proceeding in light of the on-going,
United States embargo with Cuba, the terms of which,
according to applicant are “embodied in the Cuban Asset
Control Regulations, 31 C.F.R. § 515.201 et. seq.” The
motions for summary judgment have been fully briefed.

Opposition No. 91178943
4
Summary judgment is an appropriate method of disposing
of cases at the Board in which there are no genuine issues
of material fact in dispute, thus leaving the case to be
resolved as a matter of law. See Fed. R. Civ. P. 56(c). A
party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317
(1986). The nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the
undisputed facts, must be viewed in the light most
favorable to the nonmoving party. See Opryland USA, Inc.
v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1992).
Based on the instant record and the arguments of the
parties in this case, we find that, as discussed below,
opposer has met its burden of demonstrating that there are
no genuine issues of material fact regarding opposer’s
standing to oppose registration of application Serial No.
75697908 or as to its right to prevail under Article 7 of
the Pan American Convention.

Opposition No. 91178943
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I. Background:
By way of background, the United States is a party to
the Pan American Convention with several Latin American
nations, including Cuba. As defined, the Pan American
Convention pertains to trademarks, trade names, unfair
competition, and false indications of geographical origin
or source. The beneficiaries under the Pan American
Convention are defined as (1) nationals of contracting
states, and (2) domiciled foreigners who own a
manufacturing or commercial establishment or an
agricultural development in any of the contracting states.
See British American Tobacco Co. v. Phillip Morris Inc., 55
USPQ2d 1585 (TTAB 2000).
Consistent with the Supreme Court's decision in
Bacardi Corporation of America v. Domenech, 311 U.S. 150,
161, 47 USPQ 350, 355 (1940), the Board notes that the Pan
American Convention is self-executing, and therefore became
U.S. law upon ratification, requiring no special
implementing legislation. Moreover, since the Pan American
Convention has the same force as a federal statute and
provides remedies independent of the Lanham Act, the Board
remains an appropriate forum for opposer to assert priority
under Article 7 in this proceeding. See Diaz v. Servicios
Opposition No. 91178943
6
De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1328 (TTAB
2007).
II. Summary Judgment as to Opposer’s Standing:
Having once again recognized the Board as an
appropriate forum to bring such matters, we now consider
the issue of opposer’s standing. In considering opposer’s
standing, which we note forms the basis for applicant’s
cross-motion for summary judgment, it is well-settled that
to establish standing, opposer must show that it has a
“real interest” in the outcome of the proceeding; that is,
that it has a direct and personal stake in the outcome of
the opposition. See Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025-26 (Fed. Cir. 1999). Thus, standing only
requires that a party opposing registration has a good
faith belief that it is likely to be damaged by the
registration. See Lipton, Inc. v. Ralston Purina Co., 670
F.2d 1024,213 USPQ 185, 189 (CCPA 1982).
Opposer, with its motion for summary judgment,
submitted evidence that it filed an application, now
suspended, for the mark CUBITA and design with the U.S.
Patent and Trademark Office for “roasted coffee” in
International Class 30. That evidence included a copy of
an Office action in which applicant’s mark was cited as a
potential basis for refusal of opposer’s application,
Opposition No. 91178943
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Serial No. 77252382. Alone, the fact that applicant’s mark
was cited as a potential bar to registration of opposer’s
pending application, supported by a copy of the attached
Office action, clearly provides an adequate basis to find
that there is no genuine issue as to opposer’s standing.
See Hartwell Co. Shane, 17 USPQ2d 1569 (TTAB 1990).
Nevertheless, applicant argues in its motion for
summary judgment that opposer is a Cuban entity and given
the existing embargo between the United States and Cuba,
opposer lacks standing to pursue an opposition proceeding
at the Board. In support, applicant cites the decision in
Havana Club Holdings, S.A. v. Galleon, S.A., 203 F.3d 116,
53 USPQ2d 1609, 1618 (2d Cir. 2000). However, in that
case, which involved a false designation of geographic
origin claim, the Court clearly held that Section 211(b) of
the Omnibus Consolidated and Emergency Supplemental
Appropriations Act of 19992 did not apply to that case
because the involved claim was not based on the ownership

2 In pertinent part, Section 211(b) provides as follows:
No U.S. court shall recognize, enforce or otherwise validate any
assertion of treaty rights by a designated national or its
successor-in-interest under sections 44(b) or (e) of the
Trademark Act of 1946 (15 U.S.C. 1126(b) or (e)) for a mark,
trade name, or commercial name that is the same as or
substantially similar to a mark, trade name, or commercial name
that was used in connection with a business or assets that were
confiscated unless the original owner of such mark, trade name,
or commercial name, or the bona fide successor-in-interest has
expressly consented.

Opposition No. 91178943
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of a mark that had been confiscated by the Cuban
government. Here, none of opposer’s claims are based on
the ownership of a confiscated mark, and since Section
211(b) therefore has no applicability in the matter
currently before the Board, applicant’s argument is without
merit. See Corporacion Habanos, S.A. v. Anncas, Inc.,___
USPQ2d ___ (Serial No. 78363024) (TTAB September 26, 2008)
("So as to be perfectly clear, opposer has standing,
although it does not and cannot engage in any business in
the United States due to the embargo on Cuban goods.").
Moreover, and consistent with the facts in Corporacion
Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473
(TTAB 2008), opposer has also provided a copy of a letter
from the Department of Treasury, attached with the
declaration of counsel for opposer, David B. Goldstein,
confirming that Cuban entities such as opposer, Corporacion
Cimex, S.A., are indeed permitted under Section 515.527 of
the Cuban Assets Control Regulations, 31 C.F.R. Part 515,
to “file an opposition to the registration of a new
trademark … where these actions relate to the protection of
a trademark in which Cuba … has an interest.” In view
thereof, we find that opposer has demonstrated that there
is no genuine issue of material fact that opposer has a
“real interest” in the outcome of this proceeding and as a
Opposition No. 91178943
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Cuban entity, has established standing to pursue this
opposition at the Board.
III. Summary Judgment Under Article 7:
In pertinent part, the relevant provision of Article
7 of the Pan American Convention reads as follows:

Any owner of a mark protected in one of the
contracting states in accordance with its
domestic law, who may know that some other
person is using or applying to register or
deposit an interfering mark in any other of
the contracting states, shall have the right
to oppose such use, registration or deposit
and shall have the right to employ all legal
means, procedure or recourse provided in the
country in which such interfering mark is
being used or where its registration or
deposit is being sought, and upon proof that
the person who is using such mark or
applying to register or deposit it, had
knowledge of the existence and continuous
use in any of the Contracting States of the
mark on which opposition is based upon goods
in the same class, the opposer may claim for
himself the preferential right to use such
mark in the country where the opposition is
made or priority to register or deposit in
such country, upon compliance with the
requirements established by the domestic
legislation in such country and by this
Convention.

Thus, in order for opposer to prevail under Article 7
of the Pan American Convention, it must establish that
there is no genuine dispute (1) that opposer is the owner
of a CUBITA mark protected in Cuba; (2) that applicant is
using or applying to register an “interfering mark” in the
Opposition No. 91178943
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United States; (3) that applicant had knowledge of the
existence and continuous use in Cuba of opposer’s CUBITA
mark in connection with goods in the same class prior to
its use of the CUBITA mark in the United States; and (4)
that opposer has complied with the requirements set forth
in the domestic legislation in the United States and the
requirements of the Pan American Convention -- that is,
filing for protection of its mark under Section 44 of the
Lanham Act. Notably, opposer sets forth the factual
support for these elements on pages 2-13 of its motion for
summary judgment under the caption “Statement of Undisputed
Material Facts.” As discussed below, applicant
specifically "affirms" that these facts are undisputed
(Appl's Brief, pp. 2-3).
Given the material facts which are not in dispute and
the evidence submitted by opposer in its motion for summary
judgment, as a well as applicant's failure to submit any
evidence which would raise a genuine issue of material
fact, the Board finds that opposer has satisfied the
requisite elements of Article 7 of the Pan American
Convention. Per the following discussion, opposer is
therefore entitled to judgment as a matter of law.

Opposition No. 91178943
11
A. Opposer’s Ownership of a Foreign Protected Mark
First, opposer has demonstrated that there is no
genuine issue of material fact that oppposer is the owner
of a mark containing the term CUBITA and that the mark,
currently in use in Cuba, has been registered and renewed
in accordance with Cuban law. As proof, opposer has made
of record a copy of a valid and subsisting Cuban
registration for its mark for use in connection with
“roasted coffee.”3 As such, opposer’s ownership of a mark
protected in a contracting state to the Pan American
Convention, in this instance Cuba, is not at issue.
B. That Applicant Is Using or Applying to Register an
“Interfering Mark” in the United States

The evidence of record also establishes that there is
no genuine issue of material fact that applicant has
applied to register an “interfering mark” in the United
States. Indeed, opposer has submitted records to show that
opposer filed an application to register its CUBITA mark
for “roasted coffee” in International Class 30 in the U.S.
Patent and Trademark Office and that applicant’s prior

3 Along with the declaration of David B. Goldstein, opposer
attached a “true and correct copy” of a registration renewal
certificate for its CUBITA mark, issued by the General Director
of the Cuban Office of Industrial Property. According to the
certificate, the mark was registered to Kave Coffee, S.A., and
the registration renewal was subsequently issued in opposer’s
name at Resolution No. 1966/2002 in Cuba, with the renewal
effective until September 4, 2011.
Opposition No. 91178943
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pending application for CUBITA for “coffee” in
International Class 30 was cited as a potential bar to
registration of opposer's mark; and that opposer’s
application has been suspended pending the outcome of the
instant opposition against applicant’s involved
application. Moreover, it is undisputed that the
respective marks prominently display the identical term
“CUBITA” in the same stylized lettering, set against
virtually the same background design of horizontal lines,
and applicant does not dispute that its mark has
“interfered” with the registration of opposer’s mark in the
United States. Thus, there is no genuine issue of material
fact that applicant’s mark constitutes an “interfering
mark” under Article 7 of the Pan American Convention. See,
e.g., Diaz, 83 USPQ2d at 1329.
C. Applicant’s Knowledge of the Existence and Continuous
Use in Cuba of the Mark in Connection with Goods in the
Same Class Prior to Applicant’s Use in the United States

In the Board’s view, opposer has also established that
there is no genuine issue that applicant had knowledge of
the existence and continuous use in Cuba by opposer of its
CUBITA mark in connection with “roasted coffee” prior to
applicant’s use of its CUBITA mark in the United States for
“coffee.” For example, as stated in the declaration of
applicant’s attorney, Mr. Reynol Sampedro Vazquez, as well
Opposition No. 91178943
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as a November 23, 1998 letter from applicant’s attorney at
the time, Mr. Jesus Sanchelima, applicant was aware that
opposer's CUBITA mark had been used to identify coffee in
Cuba prior to applicant’s first use of its mark; that
efforts had been made by applicant’s predecessor-in-
interest to obtain the right to “market various coffee
brands, some for ethnic markets (Cuban, Haiti, etc.)” such
as CUBITA in the United States; and that applicant was
aware of “discussions” about such matters between Kave
Coffee, S.A., the original owner of opposer’s mark, and
Miquel Angel, one of the individuals from whom applicant
purportedly purchased the right to use its CUBITA mark in
the United States in 1999. Moreover, in response to
opposer’s motion for summary judgment and in its cross-
motion for summary judgment, applicant conceded these facts
and confirmed for the record that it indeed had knowledge
of the existence and continuous use of CUBITA in Cuba by
opposer and opposer’s predecessor-in-interest, Kave Coffee,
S.A.
D. Opposer’s Compliance with U.S. Domestic Legislation
Furthermore, in submitting its application for
registration with the U.S. Patent and Trademark Office and
filing for protection under Section 44(e) of the Lanham
Act, opposer has complied with the domestic, statutory
Opposition No. 91178943
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filing requirements of the United States and as a result,
has satisfied this element. In further support, opposer
submitted the declaration of Juan Antonio Gonzalez Alvarez,
“Head of the Cubita Coffee Department of Corporacion Cimex,
S.A.,” wherein he stated that opposer “intends and expects
to use in commerce in the United States its Cubita-marked
Cuban origin coffee as soon as U.S. law permits.” As
applicant has also conceded this fact, the Board finds no
genuine issues of material fact that opposer satisfied the
requirements set forth in Section 44(e), namely that
opposer has a bona fide intent to use its mark in commerce.
As we noted earlier, applicant, has expressly conceded
the majority of opposer’s “undisputed material facts”
enumerated in opposer’s motion for summary judgment.
(App's Brief, pp. 2-3.) In particular, applicant "affirms"
that “all facts” listed therein were true with respect to
the requisite elements of priority under Article 7 of the
Pan American Convention "with the exception and/or addition
of the following facts": 1) that applicant filed its
application with the U.S. Patent and Trademark Office in
1999; 2) that applicant’s use of the CUBITA mark began in
1999; 3) that the Board previously considered the issue of
misdescriptiveness and held that applicant’s mark was not
misdescriptive in another proceeding; 4) that applicant did
Opposition No. 91178943
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not intend to “feed off” of opposer’s good will; and 5)
that any implication that applicant knew or participated in
a “scam” concerning the CUBITA mark is not accurate.
However, none of these facts is material to the specific
claim presented by opposer under Article 7 of the Pan
American Convention in its motion for summary judgment.
Therefore, consideration of any of them, even collectively,
fails to generate a genuine issue of material fact for
trial.
Continuing, the Board notes that applicant has failed
to make any legal arguments against opposer’s claim of
priority under the Pan American Convention. Moreover, as
in this case, when a moving party's motion for summary
judgment is supported by evidence sufficient to indicate
that there is no genuine issue of material fact and the
moving party is entitled to judgment, the burden shifts to
the nonmoving party to demonstrate the existence of at
least one genuine issue of material facts that requires
resolution at trial.
The nonmoving party, however, may not rest on the mere
allegations of its pleadings and assertions of counsel, but
must designate specific portions of the record or produce
additional evidence showing the existence of a genuine
issue of material fact for trial. Consequently, factual
Opposition No. 91178943
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assertions, without evidentiary support, are insufficient
to defend against a motion for summary judgment. See S & L
Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225
n.9 (TTAB 1987). Thus, even if the factual assertions of
opposer that were argued by applicant to be in dispute were
material to the issue of priority under Article 7 of the
Pan American Convention which they are not, insofar as
applicant has not offered evidentiary support for those
assertions, it has failed to demonstrate the existence of
any genuinely-disputed, material fact for trial.
IV. Applicant’s Unpleaded Defenses
With respect to applicant’s assertion of a genuine
issue of material fact on the unpleaded defenses of
acquiescence and abandonment, since a party may not obtain
or defend against a motion for summary judgment by
asserting the existence of genuine issues of material fact
as to unleaded defenses, applicant’s assertion of
abandonment and acquiescence, now raised for the first time
in its motion for summary judgment, are untimely and will
be given no further consideration in this proceeding. See
Blansett Pharmacal Co. v. Carmrick Laboratories Inc., 25
USPQ2d 1473, 1477 (TTAB 1992).
We also note that the availability of the defense of
acquiescence is severely limited in opposition proceedings
Opposition No. 91178943
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because this defense, in Board proceedings, starts to run
from the time of knowledge of the application for
registration (that is, from the time the mark is published
for opposition), not from the time of knowledge of use and
that the involved application was not published for
opposition until April 17, 2007. See Krause v. Krause
Publications Inc., 76 USPQ2d 1904, 1914 (TTAB 2005). See
also National Cable Television Association v. American
Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432
(Fed. Cir. 1991).
Viewing all doubt and inferences in a light most
favorable to applicant, we conclude that there are no
genuine issue of material fact with respect to opposer’s
standing as well as opposer’s priority over applicant to
register its mark under Article 7 of the Pan American
Convention for “roasted coffee” in International Class 30.
Opposer, on that basis alone, is therefore entitled to
judgment as a matter of law. Accordingly, opposer’s motion
for summary judgment is granted, and applicant’s cross-
motion for summary judgment is denied.
Nevertheless, while opposer pleaded other grounds for
opposition in its notice of opposition, it moved for
summary judgment on only one basis. Opposer, therefore, is
allowed thirty (30) days from the mailing date of this
Opposition No. 91178943
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order to advise the Board whether it wishes to go forward
on its other pleaded grounds for opposition, failing which
the opposition will be sustained pursuant to Article 7 of
the Pan American Convention only, registration to applicant
of application Serial No. 75697908 will be refused, and the
opposition will be dismissed without prejudice as to the
remaining issues.