PEI Licensing, LLCv.Havana Club Holding, S.A

Trademark Trial and Appeal Board

Jun 30, 2020

92065427 (T.T.A.B. Jun. 30, 2020)

KIM
June 30, 2020

Cancellation No. 92065427

PEI Licensing, LLC

v.
Havana Club Holding, S.A.

Before Mermelstein, Bergsman and Larkin,
Administrative Trademark Judges

By the Board:
This matter comes up on the parties’ cross-motions for summary judgment on
PEI Licensing, LLC’s (Petitioner) claims of abandonment and lack of bona fide
intent to use the mark in commerce.1 The motions are fully briefed.
Procedural History
On February 10, 2017, Petitioner filed a petition to cancel Registration Nos.
4209004 and 42090052 for, respectively, VERA CUBA and design and VERA CUBA
in standard characters, both for “rum produced in Cuba” on the grounds of

1 18 TTABVUE and 21 TTABVUE (confidential versions filed at 17 TTABVUE and 22
TTABVUE respectively).
2 The underlying applications were filed on October 18, 2011, under Section 44(d), 15
U.S.C. § 1126(d), and registered on the Principal Register on September 18, 2012.
Declaration under Section 8 of the Trademark Act, 15 U.S.C. § 1058, accepted for each
registration on June 26, 2018.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92065427

2
abandonment and lack of bona fide intent to use the marks in commerce.3 Following
a period of suspension, Havana Club Holding, S.A. (Respondent) answered the
petition on June 21, 2018, denying the salient allegations thereof.4
As last reset on December 4, 2018, discovery was scheduled to close on July 16,
2019. On April 9, 2019, Petitioner moved for summary judgment on its claims of
abandonment and lack of bona fide intent and on June 10, 2019, Respondent cross-
moved for summary judgment on those claims.
The Parties’ Motions and Designations of Confidentiality
Preliminarily, we note that the parties have designated as confidential broad
swaths of their briefs and exhibits under the Board’s standard protective order.
Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g). While it is true that the parties must
actively utilize the provisions of the standard protective order to maintain the
confidentiality of certain information, the parties must do so in a meaningful way
and designate only that information that truly requires protection as confidential.
See Azalea Health Innovations, Inc. v. Rural Health Care, Inc., 125 USPQ2d 1236,
1238 (TTAB 2017); Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1460-61 (TTAB 2014) (finding marketing materials and
presentations improperly designated as confidential). In view of the nature and
extent of the information designated as confidential, we find the markings of
confidentiality excessive and unnecessarily complicating to the record. See Gen.
Mills Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1591 n.4 (TTAB

3 1 TTABVUE.
4 10 TTABVUE.
Cancellation No. 92065427

3
2011) (excessive markings of various information as confidential complicates record
and often indicates that matter is improperly designated or not useful to case).
Nevertheless, for purposes of this order, we have observed the parties’ markings
and have accordingly refrained from summarizing the parties’ arguments and
evidence, with which we presume the parties’ familiarity. See Omega SA v. Alpha
Phi Omega, 118 USPQ2d 1289, 1292 n.11 (TTAB 2016).
However, we advise the parties to review and reconsider their confidentiality
designations. At trial, should the Board again find the submissions overly
designated as confidential, the designations will be ignored and depending upon the
extent of the over-designation, the Board may remove the confidential designations
and make public the parties’ testimony and evidence. See Trademark Rule 2.116(g)
(“The Board may treat as not confidential that material which cannot reasonably be
considered confidential, notwithstanding a designation as such by a party.”);
Coach/Braunsdorf Affinity, Inc., 110 USPQ2d at 1460-61 (finding petitioner’s
testimony and evidence improperly designated as confidential, Board declined to
observe petitioner’s designations).
Summary Judgment Standard
A motion for summary judgment is a pretrial device intended to save the time
and expense of a full trial when the moving party is able to demonstrate, prior to
trial, that there is no genuine dispute of material fact, and that it is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477
U.S. 317 (1986); Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23
Cancellation No. 92065427

4
USPQ2d 1471 (Fed. Cir. 1992); and Sweats Fashions Inc. v. Pannill Knitting Co.,
833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The evidence on summary
judgment is viewed in a light most favorable to the nonmoving party, and all
reasonable inferences are drawn in the nonmovant’s favor. Lloyd’s Food Prods., Inc.
v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). We will deem a
factual dispute genuine if, on the evidence of record, a reasonable fact finder could
resolve the matter in favor of the nonmoving party. See Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
The Board does not resolve disputes of material fact on summary judgment;
rather, the Board only ascertains whether disputes of material fact exist. See Univ.
Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994); see
also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986) (“at the summary
judgment stage the judge’s function is not himself to weigh the evidence and
determine the truth of the matter but to determine whether there is a genuine issue
for trial.”). That cross-motions for summary judgment have been filed does not
necessarily mean that there are no genuine disputes of material fact, or that a trial
is unnecessary. See Univ. Book Store, 33 USPQ2d at 1389-90. However, “where
there is no dispute as to the material facts, summary judgment – if otherwise
appropriate as a matter of law – is warranted and thus should be granted.” Id.
Standing
Standing is a threshold issue that must be proven by a plaintiff in every Board
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
Cancellation No. 92065427

5
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999). To establish standing, the plaintiff must
demonstrate that it has a “real interest,” i.e., a direct and personal stake, in the
outcome of the proceeding and a reasonable basis for its belief of damage. Ritchie,
50 USPQ2d at 1025-26. Petitioner has pleaded that its Application Serial No.
87218041 was refused registration based on Respondent’s registrations5 and has
submitted copies of its application and the Office’s refusal of registration.6
Respondent has not challenged Petitioner’s standing. Accordingly, there is no
genuine dispute of material fact that Petitioner has standing to petition to cancel
the subject registrations. See Parfums Nautee Ltd. v. Am. Int’l Indus., 22 USPQ2d
1306, 1307 (TTAB 1992) (petitioner has standing to seek cancellation of registration
cited against its application).
Abandonment
To prevail on a claim of abandonment, Petitioner must show that the party
against whom the claim of abandonment is made “is not using the mark with its
goods and services, and has no intent to resume use.” Lewis Silkin LLP v. Firebrand
LLC, 129 USPQ2d 1015, 1020 (TTAB 2018). A showing of three consecutive years of
nonuse is sufficient to establish a prima facie case of abandonment. See Trademark
Act Section 45, 15 U.S.C. § 1127; Double Coin Holdings Ltd. v. Tru Dev., 2019
USPQ2d 377409, *15 (TTAB 2019). For a registration under Section 44, the period
of nonuse is measured from no earlier than the date of registration since “[a] section

5 1 TTABVUE 6.
6 18 TTABVUE 65-69 and 134-138.
Cancellation No. 92065427

6
44(e) registrant is … granted a dispensation from actual use prior to registration.”
Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390, 1395
(Fed. Cir. 1990). Once registered, “there is no dispensation of use requirements,” id.,
so a Section 8 affidavit of use or excusable nonuse must be filed in the sixth and
tenth years following the date of registration and in each successive ten-year period
in order for the registration to remain valid and subsisting. See Trademark Act
Section 8(a). Since it is not the purpose of Section 8 to cancel registrations where
use of the mark has been interrupted or has never commenced due to circumstances
beyond the control of the registrant, see In re Moorman Mfg. Co., 203 USPQ 712,
713-14 (Comm’r Pats. 1979), Section 8(b)(2) provides that the registrant may show
“that any nonuse is due to special circumstances which excuse such nonuse and is
not due to any intention to abandon the mark.” See also Trademark Rule 2.161(f)(2),
37 C.F.R. § 2.161(f)(2). Where “a registrant’s nonuse is excusable, the registrant has
overcome the presumption that its nonuse was coupled with an ‘intent not to
resume use’….” Imperial Tobacco Ltd., 14 USPQ2d at 1395.
As noted, Respondent filed a Section 8 affidavit for each of the involved
registrations on June 26, 2018. In the affidavit, Respondent has claimed excusable
nonuse due to the Cuban trade embargo as implemented through the Cuban Assets
Control Regulations (“CACR”). See 31 C.F.R. Part 515.7 Under the CACR, the
importation of Cuban merchandise into the United States, and the use in United
States commerce of any trademark in which Cuba or a Cuban national has any

7 18 TTABVUE 274-287.
Cancellation No. 92065427

7
direct or indirect interest, are and have been prohibited since July 8, 1963.8 See 31
C.F.R. §§ 515.201, 515.204 and 515.311. Accordingly, the Cuban trade embargo has
been recognized by the United States Patent and Trademark Office as a special
circumstance beyond a registrant’s control and sufficient to excuse nonuse. See
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1604.11 (2018) (“Nonuse
may be considered excusable where the owner of the registration is willing and able
to continue use of the mark in commerce, but is unable to do so due to a trade
embargo.”); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1036 n.18 (TTAB 1997)
(recognizing that a Section 44 registration subject to the CACR may be maintained
pursuant to a showing of nonuse due to special circumstances). Since there is no
genuine dispute that Respondent’s nonuse in the period following registration of the
involved marks is excusable, Petitioner’s claim of abandonment fails as a matter of
law. Petitioner’s motion for summary judgment on its claim of abandonment is
DENIED and Respondent’s cross-motion for summary judgment on the claim is
GRANTED. The petition for cancellation is DISMISSED with prejudice as to the
abandonment claim.
Lack of Bona Fide Intent to Use the Mark in Commerce
As earlier noted, we have not summarized the parties’ arguments relating to this
claim since much has been designated as confidential. Nevertheless, having
carefully considered the arguments and related evidence and having drawn all

8 Transactions relating to the registration and renewal of trademarks in which the Cuban
Government or a Cuban national has an interest are expressly authorized under 31 C.F.R.
§ 515.527.
Cancellation No. 92065427

8
inferences with respect to each party’s motion in favor of the nonmoving party, we
find that neither party has discharged its initial burden on summary judgment to
demonstrate the absence of a genuine dispute of material fact on the question of
Respondent’s bona fide intent to use the subject marks in commerce. Indeed, we
find Petitioner’s motion on this issue premature. While Respondent’s objection to
producing documents responsive to Petitioner’s discovery requests based on a
French “blocking statute” raises questions as to Respondent’s good faith effort to
discharge its duty to cooperate in discovery, we decline to equate the objection to a
lack of documentary evidence sufficient to support a claim of no bona fide intent
when Petitioner has yet to seek to compel such documents or to otherwise test the
objection. We thus find Petitioner’s showing insufficient to demonstrate the absence
of a genuine dispute of material fact that Respondent lacked a bona fide intent to
use the involved marks at the time the applications were filed.
As for Respondent’s cross-motion for summary judgment, we do not find
Respondent’s testimonial evidence, in view of all the circumstances raised therein,
sufficient to establish the absence of a genuine dispute of material fact that it had a
bona fide intent to use its marks in commerce at the time of filing. See M.Z. Berger
& Co., Inc. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015)
(“circumstances must indicate that the applicant’s intent to use the mark was firm
and not merely intent to reserve a right in the mark [and] all circumstances
regarding an applicant’s bona fide intent must be considered, including those facts
that would tend to disprove that [the applicant] had the requisite intent.”).
Cancellation No. 92065427

9
Accordingly, Petitioner’s motion for summary judgment and Respondent’s cross-
motion for summary judgment on the claim of no bona fide intent are DENIED.9
No further motions for summary judgment will be considered except in the
context of the Board’s Accelerated Case Resolution (“ACR”) procedure. Should the
parties agree to invoke ACR, the parties are advised to consult with the assigned
Interlocutory Attorney to discuss and institute the procedure.
Proceedings are RESUMED and dates are RESET as follows:
Expert Disclosures Due 8/31/2020
Discovery Closes 9/30/2020
Plaintiff's Pretrial Disclosures Due 11/14/2020
Plaintiff's 30-day Trial Period Ends 12/29/2020
Defendant's Pretrial Disclosures Due 1/13/2021
Defendant's 30-day Trial Period Ends 2/27/2021
Plaintiff's Rebuttal Disclosures Due 3/14/2021
Plaintiff's 15-day Rebuttal Period Ends 4/13/2021
Plaintiff's Opening Brief Due 6/12/2021
Defendant's Brief Due 7/12/2021
Plaintiff's Reply Brief Due 7/27/2021
Request for Oral Hearing (optional) Due 8/6/2021

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony
is taken and introduced out of the presence of the Board during the assigned
testimony periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in

9 The parties are reminded that evidence submitted in support of or in opposition to a
motion for summary judgment is of record only for consideration of that motion. Any such
evidence to be considered at final hearing must be properly introduced during the
appropriate trial period. See, e.g., Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28
USPQ2d 1464 (TTAB 1993).
This decision granting partial summary judgment on Petitioner’s abandonment claim is
interlocutory in nature and may not be appealed until a final disposition of the case by the
Board. See Copeland’s Enters. Inc. v. CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562, 1565 (Fed.
Cir. 1989).
Cancellation No. 92065427

10
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters
in evidence, the manner and timing of taking testimony, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence.
Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and
(b). Oral argument at final hearing will be scheduled only upon the timely
submission of a separate notice as allowed by Trademark Rule 2.129(a).
* * *