Empresa Cubana Del Tabaco d.b.a. Cubatabacov.General Cigar Co., Inc.

Trademark Trial and Appeal Board

Mar 14, 2013

No. 92025859 (T.T.A.B. Mar. 14, 2013)

GCP
Mailed: March 14, 2013

Cancellation No. 92025859

Empresa Cubana Del Tabaco
d.b.a Cubatabaco

v.

General Cigar Co., Inc.

Before Quinn, Cataldo, and Zervas,
Administrative Trademark Judges.

By the Board:
This case now comes before the Board for consideration
of (1) respondent’s motion for summary judgment on the
grounds that (i) petitioner lacks standing to pursue this
cancellation proceeding, and (ii) petitioner’s asserted
claims are precluded by the doctrines of res judicata and
collateral estoppel; and (2) petitioner’s motion to use
testimony from a civil action in opposition to respondent’s
motion for summary judgment. The motions are fully
briefed.
By way of background, on January 15, 1997, petitioner
filed a petition for cancellation that seeks to cancel two
registrations owned by respondent both for the mark COHIBA;
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92025859

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one in standard characters,1 and the other, as displayed
below,2 each for “cigars” in International Class 34.

By an order dated June 23, 2011, the Board addressed
various earlier filings by the parties and, inter alia,
permitted petitioner to file a motion or pleading, as it
deemed appropriate, relevant to its petition to cancel.
The same day, petitioner filed an amended petition to
cancel. As grounds for cancellation, petitioner alleges
the following claims in its amended petition to cancel:
(1) abandonment, (2) fraud, (3) respondent’s registrations
were obtained in bad faith, (4) priority and likelihood of
confusion under Section 2(d) of the Lanham Act, (4) relief
under Articles 7 and 8 of the General Inter-American
Convention for Trademark and Commercial Protection (“IAC”),
(5) respondent improperly obtained its registrations for
the sole purpose of capitalizing on and exploiting the
renown and reputation of petitioner’s COHIBA mark, (6)
relief pursuant to Article 6bis of the Paris Convention,

1 Reg. No. 1147309, issued on February 17, 1981 on the Principal
Register, claiming February 13, 1978, as both the date of first
use anywhere and as the first date of use in commerce.
2 Reg. No. 1898273, issued on June 6, 1995, claiming December
1992, as both the first date of use anywhere and as the first
date of use in commerce.
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(7) likelihood of confusion under the “well-known” marks
doctrine, and (8) a stand-alone priority of use claim.
Respondent filed its answer to the amended petition to
cancel on July 7, 2011 denying the salient allegations
asserted therein.3
Long before the filing of petitioner’s amended
pleading, the Board had, on January 28, 1998, suspended
this proceeding pending the final determination of a civil
action involving the parties herein. The civil action has
been finally determined. A review of the disposition of
the civil action is in order, in light of the operative
pleadings for this case.
Federal Action
On November 12, 1997, petitioner commenced the federal
action by filing a complaint in the United States District
Court for the Southern District of New York.4 In its civil
complaint, petitioner alleges that respondent’s use of the
COHIBA mark constitutes trademark infringement under the
Trademark Act and international conventions, and unfair
competition and misappropriation under New York law.
Petitioner requested that the district court grant, among

3 In view thereof, petitioner’s amended petition to cancel and
respondent’s answer thereto are now the operative pleadings in
this case.
4 Case No. 97 CIV. 8399, styled Empresa Cubana Del Tabaco, d.b.a.
Cubatabaco v. Culbro Corporation and General Cigar Co.
Cancellation No. 92025859

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other relief, an order canceling respondent’s involved
registrations. In 2002, the district court dismissed
petitioner’s claims under Articles 7 and 8 of the IAC and
Article 6bis of the Paris Convention because these
international conventions did not confer a right to sue for
unfair competition separate from the Trademark Act. See
Empresa Cubana Del Tabaco, d.b.a. Cubatabaco v. Culbro
Corporation and General Cigar Co., 213 F. Supp. 247, 281-84
(SDNY 2002). The district court also granted, in part,
petitioner’s motion for partial summary judgment, finding
that respondent had abandoned its COHIBA mark subject to
its involved Registration No. 1147309 through non-use from
1987-1992, and ordered this registration canceled. Id. at
267-271.
Following a bench trial, the district court issued a
decision on March 26, 2004 dismissing petitioner’s claims
for New York common-law unfair competition and
misappropriation, finding that bad faith was an essential
element of these claims, and that there was no evidence
that respondent selected or used the COHIBA mark in bad
faith. See Empresa Cubana Del Tabaco, d.b.a. Cubatabaco v.
Culbro Corporation, 70 USPQ2d 1650 (SDNY 2004). The
district court also dismissed petitioner’s claims for
violation of the Federal Trademark Dilution Act and the New
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York anti-dilution statute, and for trade dress
infringement, deceptive trade practices, trade dress
dilution and false advertising. 70 USPQ2d at 1692-93,
1694-96.
The district court, however, found in favor of
petitioner on its claim for trademark infringement under
Section 43(a) of the Trademark Act. 70 USPQ2d at 1692. It
concluded that by 1992, when respondent applied for its
second registration for the COHIBA mark, petitioner had
acquired priority rights in the mark COHIBA in the United
States over respondent under the well-known or famous marks
doctrine. Id. It based this finding upon its previous
holding that respondent had lost its priority by abandoning
use of the COHIBA mark in 1987 and not resuming such use
until 1992. 213 F. Supp.2d at 269. However, according to
the district court, by 1992 the COHIBA mark had become
famous in the United States and associated with
petitioner’s cigars. The district court stated that
petitioner had rights in the mark that were superior to
those of respondent and these rights preclude respondent
from obtaining its second registration for the COHIBA mark.
70 USPQ2d at 1692. The district court also found that
there was a likelihood of U.S. consumer confusion between
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petitioner’s COHIBA mark and respondent’s COHIBA mark. 70
USPQ2d at 1689.
In view of these findings, the district court ordered
the cancellation of respondent’s second registration for
the mark COHIBA, i.e., Registration No. 1898273, enjoined
respondent from further use of the COHIBA mark, and ordered
respondent to recall all goods sold under the COHIBA mark.
Id. This determination was embodied in an Order, Judgment
and Permanent Injunction. Respondent appealed to the
Second Circuit from the adverse portions of the district
court judgment. Petitioner cross-appealed from those
portions of the district court’s pretrial orders and the
district court judgment that had dismissed some of
petitioner’s claims.
On February 24, 2005, the Second Circuit issued an
opinion reversing the district court’s finding of
likelihood of confusion. See Empresa Cubana Del Tabaco,
d.b.a. Cubatabaco v. Culbro Corporation, General Cigar Co.,
Inc. and General Cigar Holdings, Inc., 399 F.3d 462, 73
USPQ2d 1936 (2d Cir. 2005). It vacated the district
court’s cancellation of respondent’s second registration,
and the injunctive and recall relief ordered by the
district court. The Second Circuit’s reversal was based on
the Cuban Asset Control Regulations (“CACR”), 31 C.F.R. §
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515.201, et seq., which embody the terms of the United
States’ economic embargo on Cuba. The CACR prevents Cuban
entities such as petitioner from selling cigars in the
United States. 73 USPQ2d at 1938. The Second Circuit held
that (1) “absent a general or specific license” from the
Department of the Treasury’s Office of Foreign Assets
Control (“OFAC”),” Section 515.201(b) of the CACR
“prohibits the transfer of property rights, including
trademark rights, to a Cuban entity by a person subject to
the jurisdiction of the United States.” 73 USPQ2d at 1944.
It also found that forbidden property transfers also
include transfers by operation of law. 73 USPQ2d at 1945-
46.
The Second Circuit found it unnecessary to decide
whether the Trademark Act incorporated the “famous marks”
doctrine, because even if it were incorporated, Section
515.201(b)(2) of the CACR “clearly bars [petitioner’s]
acquisition of the COHIBA mark through the famous marks
doctrine.” 73 USPQ2d at 1946. The Second Circuit held
that petitioner was not authorized to acquire any rights in
the COHIBA mark under any general license in effect
previously or at the time of the opinion. 73 USPQ2d at
1947. The court also concluded that the special license
granted to petitioner by OFAC, which allowed petitioner to
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sue respondent in U.S. courts, “does not authorize
transfers of property barred by the Regulations,” and thus
could not support acquisition of the COHIBA mark by
petitioner. Id.
The Second Circuit also rejected the argument that,
even if petitioner could not acquire the COHIBA mark in the
United States, it was still entitled to obtain cancellation
of respondent’s registration of the COHIBA mark and an
injunction preventing respondent from using the mark in the
United on the basis of alleged consumer confusion. The
Second Circuit specifically held that
granting [petitioner] the injunctive relief sought
would effect a transfer of property rights to a Cuban
entity in violation of the embargo. There is no
contest that, as matters stand, [respondent] has the
full panel of property rights in the COHIBA mark,
including the right to exclude or limit others seeking
to use the mark in the United States...As it is
exactly this brand of property right transfer that the
embargo prohibits, we cannot sanction a grant of
injunctive remedy to [petitioner] in the form of the
right, privilege and power to exclude [respondent]
from using its duly registered mark…[T]his limitation
on judicial authority applies equally to
[petitioner’s] Lanham Act and Paris Convention claims.

73 USPQ2d at 1947 (emphasis added).

The Second Circuit also found that, inasmuch as
respondent was the owner and sole rightful user of the
COHIBA mark in the United States, petitioner could not
obtain relief on the basis that respondent’s use of the
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COHIBA mark causes confusion in the United States. 73
USPQ2d at 1949. The Second Circuit concluded that
petitioner’s claims “against [respondent’s] use of its duly
registered COHIBA mark cannot succeed as a matter of law.”
Id.
The Second Circuit further found that Article 6bis of
the Paris Convention and Sections 44(b) and 44(h) of the
Trademark Act do not require “cancellation of
[respondent’s] properly registered trademark” or an
injunction against use of the mark. 73 USPQ2d at 1950. It
also affirmed the district court’s dismissal of
petitioner’s claims under Articles 7, 8, 20 and 21 of the
IAC and Article 10bis of the Paris Convention. 73 USPQ2d
at 1950-53. Additionally, the Second Circuit affirmed the
district court’s dismissal of petitioner’s other claims,
including its dismissal of New York unfair competition and
misappropriation claims on the grounds that respondent had
not acted in bad faith. 73 USPQ2d at 1954.
The Second Circuit remanded the case to the district
court for entry of an order (1) dismissing all of
petitioner’s remaining claims, and (2) “vacat[ing] those
portions of the District Court’s order that cancel[led]
[respondent’s] registration,” enjoined respondent from use
of the COHIBA mark, and required recall of COHIBA-labeled
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products and corrective notices. 73 USPQ2d at 1954. The
Second Circuit’s judgment was issued as a mandate on
February 8, 2006, after the U.S. Supreme Court denied
petitioner’s petition for a writ of certiorari. See
Empresa Cubana Del Tabaco, aka Cubatabaco v. General Cigar
Company, Inc., 547 U.S. 1205 (2006). The district court
then issued an order dismissing all remaining claims.
Empresa Cubana Del Tabaco v. Culbro Corp., No. 97 Civ. 8399
(SDNY May 15, 2006).
A later proceeding in the federal action requires
brief mention. In 2006, respondent moved to amend the
district court’s final order of dismissal to include an
instruction to the Commissioner of the USPTO to dismiss
this cancellation proceeding and to abandon petitioner’s
pending application for the mark COHIBA. The district
court denied respondent’s motion to amend. Empresa Cubano
Del Tabaco dba Cubatabco v. Culbro Corporation and General
Cigar Co., 478 F. Supp.2d 513 (SDNY 2007). On appeal, the
Second Circuit affirmed, finding that respondent’s request
was based on an estoppel theory. Empresa Cubano Del Tabaco
dba Cubatabco v. Culbro Corporation, General Cigar Co.,
Inc., and General Cigar Holdings, Inc., 541 F.3d 476, 88
USPQ2d 1125, 1128 (2d Cir. 2008). Specifically, the Second
Circuit stated that “we see no reason why it was an abuse
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of discretion for the district court simply to tell
[respondent] to raise its estoppel claim before the PTO and
let the agency decide, subject to review by the Federal
Circuit, what preclusive effect should be given to our
decision in Empresa V, if any.” 88 USPQ2d at 1128.
Respondent’s Motion for Summary Judgment

We initially turn to respondent’s motion for summary
judgment, more specifically, the portion grounded on
petitioner’s lack of standing. Summary judgment is an
appropriate method of disposing of cases in which there is
no genuine dispute of material fact, thus leaving the case
to be resolved as a matter of law. See Fed. R. Civ. P.
56(a). The party moving for summary judgment has the
initial burden of demonstrating the absence of any genuine
dispute of material fact. See Celotex Corp. V. Catrett,
477 U.S. 317, 322-324 (1986). The evidence must be viewed
in a light most favorable to the non-movant, and all
justifiable inferences are to be drawn in the non-movant's
favor. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987
F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). If the party
moving for summary judgment carries its initial burden,
and the nonmoving party fails to make a sufficient showing
on an essential element of its case with respect to which
it would have the burden of proof at trial, judgment as a
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matter of law may be entered in favor of the moving party.
See Fed. R. Civ. P. 56(c); Fram Trak Industries Inc. v.
WireTracks LLC, 77 USPQ2d 2000, 2004 (TTAB 2006) (citing
Celotex Corp, supra).
Standing is a threshold issue that must be proven by a
plaintiff in every inter partes case. Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Therefore, we turn first to the
question of whether respondent has shown that there is no
genuine dispute of material fact as to petitioner’s lack
of standing to bring this cancellation proceeding.
The purpose of the standing requirement, which is
directed solely to the interest of the plaintiff, is to
prevent litigation when there is no justiciable
controversy between the parties. Lipton Industries, Inc.,
213 USPQ at 189. In the case of a petition to cancel, the
standing requirement of a plaintiff has its statutory
basis in Section 14 of the Act which provides that “any
person who believes he is or will be damaged . . . by
the registration of a mark on the principal register
. . .” may file a petition to cancel.
With regard to petitioner’s asserted claims,
petitioner, at trial, would need to show that it has a
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protectible commercial interest in the COHIBA mark or
trade name, in addition to its belief that it would be
damaged by respondent’s COHIBA registrations, to establish
standing. Chemical New York Corp. v. Conmar Form Systems,
Inc., 1 USPQ2d 1139, 1142 (TTAB 1986).
In support of its motion for summary judgment,
respondent contends that since the Second Circuit
determined that the CACR prohibited petitioner from
acquiring any property interest in the COHIBA mark in the
United States at any time, by any means, including by
operation of law, and under any legal theory, including
the “famous marks” doctrine, international conventions, or
an alleged risk of public confusion between the parties’
respective marks, petitioner lacks standing to maintain
this cancellation proceeding. In other words, respondent
essentially maintains that since petitioner is legally
prohibited from selling its cigars under the COHIBA mark
in the United States or acquiring any interest in the
COHIBA mark in the United States, it does not have the
legitimate commercial interest required to confer standing
to maintain this cancellation proceeding.
In response, petitioner argues that the Board has
consistently held that standing is established when a
plaintiff’s pleaded pending application has been refused
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registration based on the defendant’s registration. In
view thereof, petitioner contends that since its pleaded
pending application for the mark COHIBA has been refused
registration based on respondent’s existing COHIBA
registrations, standing is conferred upon petitioner to
bring this cancellation proceeding.
We agree with respondent. While we recognize that
standing is generally conferred on a plaintiff whose
pleaded pending application has been refused registration
under Section 2(d) of the Lanham Act based on defendant’s
subject registration, see, e.g., Great Seats Ltd. v. Great
Seats, Inc., 84 USPQ2d 1235, 1237 (TTAB 2007); Cerveceria
Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d
1298, 1299 (TTAB 2000); The Hartwell Co. v. Shane, 17
USPQ2d 1569, 1570 (TTAB 1990), petitioner, in this
instance, cannot avail itself of such circumstances as a
basis for its standing to pursue this case. This derives
from a binding, final federal court judgment determining
that (1) petitioner was by law barred from acquiring any
property interest in the mark COHIBA in the United States
during the period between the abandonment of respondent’s
earlier registration and the filing date of the
application resulting in the later registration, because
the CACR does not contemplate that petitioner could have
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acquired property rights in COHIBA through advertising
without use in the United States or based on reputation
alone, (2) respondent has the full panel of property
rights in the COHIBA mark, including the right to exclude
or limit others seeking to use the mark in the United
States, (3) respondent’s legal right to the COHIBA mark
has been established as against petitioner, and (4)
respondent has a right to use the COHIBA mark in the
United States because it owns the mark in the United
States. In view of the foregoing, we find that this case
is controlled by the Board’s established precedents, which
hold that where a previous final judgment determines that
a party does not own a property interest in a mark, the
party lacks standing to challenge another’s registration
of the same mark. See Stephen Slesinger, Inc. v. Disney
Enters., Inc., 98 USPQ2d 1890, 1895 n.15 (TTAB 2011); Gal
v. Israel Military Indus. Of the Ministry of Def. Of the
State of Israel, 230 USPQ 669, 674 (TTAB 1986), aff’d, 824
F.2d 980 (Fed. Cir. 1987).
Accordingly, we find that, in light of the Second
Circuit’s binding decision, there is no genuine dispute of
material fact that petitioner lacks a legitimate
commercial interest in the COHIBA mark in the United
States and that, as a result, its belief in damage
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resulting from an alleged likelihood of confusion under
the Trademark Act or any international conventions between
its asserted mark and respondent's mark, or under any
other legal theory, is unfounded.
As a result, petitioner, as a matter of law, has no
standing to maintain this proceeding and, therefore,
respondent is entitled to judgment. See Fed. R. Civ. P.
56(a). See also Coup v. Vornado Inc., 9 USPQ2d 1824 (TTAB
1988) (petitioner’s failure to prove standing warrants
grant of summary judgment for respondent).
In view of our finding on the threshold issue of
standing, we need not reach the merits of respondent’s
second ground for summary judgment, i.e., that
petitioner’s claims are precluded by the application of
the doctrines of res judicata and collateral estoppel.
Furthermore, in light of our decision herein, petitioner’s
motion to use testimony from the civil action in
opposition to respondent’s motion for summary judgment is
deemed moot and will be given no further consideration.
Accordingly, respondent’s motion for summary judgment
is granted on the basis of lack of standing; judgment is
entered against petitioner based on its lack of standing;
and the petition to cancel is dismissed with prejudice.
As a further consequence thereof, we also do not address
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the question whether respondent’s Registration No. 1147309
must be cancelled based on the ruling of the district
court that respondent abandoned the mark in that
registration. See Section 37 of the Trademark Act, 15
U.S.C. § 1119 and TMEP § 1610 (October 2012).