Santa Cruz Tobacco Co., Inc.

Trademark Trial and Appeal Board

Oct 13, 2015

No. 77129912 (T.T.A.B. Oct. 13, 2015)

This Opinion is not a
Precedent of the TTAB

Hearing Date: September 30, 2015 Mailed: October 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In Santa Cruz Tobacco Co., Inc.
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Serial No. 77129912
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Steven J. Wadyka Jr. of Greenberg Traurig LLP,
for Santa Cruz Tobacco Co., Inc.
David C. Reihner, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Bucher, Zervas, and Ritchie,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
On March 13, 2007, Santa Cruz Tobacco Co., Inc. (“Applicant”) filed an
application to register on the Principal Register the mark GRAN HABANO in
standard character format for goods identified as “cigars made from Cuban seed
tobacco,” in International Class 34.1 The application disclaims the exclusive right to

1 Application Serial No. 77129912, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging July 28, 1997 as the date of first use anywhere and in commerce.
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use the term “Habano” apart from the mark as shown,2 and contains a translation
statement as follows: “The foreign wording in the mark translates into English as
The Great Havanan.”
The Trademark Examining Attorney refused registration under Section 2(e)(3) of
the Trademark Act of 1946, 15 U.S.C. § 1052(e)(3), on the ground that Applicant’s
proposed mark is primarily geographically deceptively misdescriptive.3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the Request for
Reconsideration, the appeal was resumed. The appeal is now fully briefed. The
Board conducted an oral hearing on September 30, 2015.
Primarily Geographically Deceptively Misdescriptive
The elements of a Section 2(e)(3) geographically deceptively misdescriptive claim
are as follows:
(1) the primary significance of the mark is a generally known
geographic location;
(2) the goods or services do not originate in the place identified in the
mark;

2 With its November 19, 2007 Response to Office Action, Applicant made a claim of Section
2(f) acquired distinctiveness in the alternative, but did not pursue this in subsequent filings
with the Office. We therefore deem the claim to be waived. In any event, Applicant’s dates
of first use and first use in commerce are July 28, 1997. We note that a Section 2(e)(3)
refusal may not be overcome with a Section 2(f) claim unless dates of first use are prior to
December 8, 1993, the date of the NAFTA Implementation Act. See In re Boyd Gaming
Corp., 57 USPQ2d 1944, 1947 (TTAB 2000).
3 Registration was also refused on other grounds, including Section 2(a) of the Trademark
Act, which were subsequently withdrawn. The case was suspended several times during
prosecution.
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(3) purchasers would be likely to believe the goods or services originate
in the geographic place identified in the mark; and
(4) the misrepresentation would be a material factor in a substantial
portion of the relevant consumers’ decision to buy the goods or use the
services.
In re Spirits International, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1490-95 (Fed.
Cir. 2009); In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858
(Fed. Cir. 2003).
Primary Significance
With regard to the first prong, Applicant’s translation statement for GRAN
HABANO is “The Great Havanan.” The Examining Attorney submitted entries
from The Columbia Gazetteer of North America (2005) and The Britannica
Encyclopedia Online, as well as Wikipedia, and a dictionary definition from
encarta.msn.com that Havana is the largest city and a major port in the West
Indies, and the political, economic, and cultural center of Cuba. See also
Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1791 (TTAB 2008)
(finding HAVANA CLUB primarily geographically deceptively misdescriptive for
“cigars made from Cuban seed tobacco”). While not disputing this, Applicant
argues two points. First, Applicant argues that its consumers will not translate the
mark into English. Second, Applicant argues that the term “habano” has another,
non-geographic meaning.
Regarding the first assertion, Applicant submitted a declaration from
owner/manager George Rico, stating as follows, “Cigars are not only for Spanish
speaking customers. Most of the customers in the United States are not originally
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Latin or native Spanish speakers. The same is true of those customers who have
purchased GRAN HABANO cigars.” August 12, 2014 Response to Office Action,
p.12. Applicant further submitted declarations from eleven customers, stating that
they are not native Spanish speakers (a twelfth, David P. Diaz, did not so state4).
Applicant also included declarations from thirteen cigar retailers and distributors,
who attested that their customers are typically not originally Latin or native
Spanish speakers. August 12, 2014 Response to Office Action, pp. 16-108. We note
that speakers of Spanish in the United States are not limited to native speakers of
Spanish; there are also others who have learned Spanish as a second language. See
Corporacion Habanos S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB
2012) (finding materiality element met, and GUANTANAMERA primarily
geographically deceptively misdescriptive for cigars):
The record includes data from the 2007 U.S. Census showing that
almost 35 million people in the United States over age five (12.3% of
the population of the United States) speak Spanish at home5 . . . Tens
of millions more people in the United States have received Spanish
language instruction in school. See, e.g., federally-funded studies in
1997, 2000 and 2008, showing over five million public school students
studying Spanish in 2000 and in 2008, and 70% of students studying a
foreign language were taking Spanish.
Id. at 1097

4 Mr. Diaz also attested to having been to Applicant’s facility, and appears to have met
Applicant’s owner, Mr. Rico, although Mr. Rico attested specifically that “The customers I
meet at trade shows are not Latin or of Latin descent.” August 12, 2014 Response to Office
Action, p. 12. There is no evidence in the record establishing that Mr. Rico has met all of his
potential customers or how he becomes aware of the ethnicity or descent of those customers
he has met.
5 According to census.gov, the numbers for 2012 are comparable and growing, at 13%. The
Board may take judicial notice of census data. In re Tokutake Indus. Co., 87 USPQ2d 1697,
1700 n.1 (TTAB 2008).
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We note further that there is nothing in Applicant’s identification of goods that
limits the universe of consumers to those who do not speak Spanish. Rather, in
view of the foregoing, and because Applicant’s goods are directed to the general
adult population, and that the Spanish speaking population in the United States is
large, we may infer that Spanish-speaking adults purchase cigars generally, and
Applicant’s cigars in particular. Id. Indeed, the percentage of Hispanics in the
United States who smoke cigars is comparable to the percentage of those in the
overall population who smoke cigars (1.1% compared to 2.1%).6
There is no evidence in the record which militates against our conclusion that
the large number of Spanish-speaking adults, many whom of course would have
ties or contacts to areas in which cigars are produced, would be likely purchasers of
cigars. We noted in Corporacion Habanos S.A. v. Guantanamera Cigars Co., 102
USPQ2d at 1097, that applicant in that case had undertaken advertising and
marketing in Spanish via its website, among other things. Applicant here
distinguishes this case, with a declaration stating, “Applicant’s advertising and
marketing has always been in English.” Rico Decl., August 12, 2014 Response to
Office Action p12. This, however, does not undermine our finding that numerous
other consumers of Applicant’s goods, are nevertheless likely to speak or
understand Spanish. We find that a substantial portion of consumers of Applicant’s

6 In this regard, we take judicial notice of A Report of the Surgeon General 1998: Tobacco
Use Among U.S. Racial/Ethnic Minority Groups; http://www.cdc.gov/tobacco/data_
statistics/sgr/1998/complete_report/pdfs/complete_report.pdf See Clemmons v. Bohannon,
918 F.2d 858 (10th Cir. 1990), vacated on other grounds, 956 F.2d 1523 (10th Cir. 1992 en
banc).
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goods, as identified in its application, are likely to stop and translate Applicant’s
GRAN HABANO mark as “The Great Havanan.” See In re Spirits, 90 USPQ2d at
1491-92 ; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Regarding the second assertion, Applicant argues that the term “habano” has a
descriptive, non-geographical meaning in the cigar industry. In particular,
Applicant states that “habano” is “a descriptive term that is used in the cigar
industry to identify a specific type of wrapper for cigars. It can be grown in several
countries, though a popular choice is Nicaragua.” Rico Decl., August 12, 2014
Response to Office Action, p.13-14. While the term may have other meanings, we
find that the primary significance of the mark is, as stated above, of a geographic
location, and the first element of the test is satisfied.
Origin
As noted, Applicant’s identification of goods is “cigars made from Cuban seed
tobacco.” The Board has stated in this regard:
We find that there is an insufficient connection between Cuban seed
tobacco, which is descended from tobacco seeds taken from Cuba many
decades ago, and Havana to support a finding that cigars made from
Cuban seed tobacco come from or originate in Havana. This is
particularly the case because the record in this case shows that cigars
from Cuban seed tobacco share few, if any, qualities or characteristics
of genuine or 100% Cuban cigars.
Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d at 1793.
Similarly here, Applicant’s owner/partner Wolfan Grateron has attested that
“Applicant is a cigar manufacturer located in Miami, Florida with cigar leaf
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production and cigar manufacturing facilities located in Honduras, Nicaragua,
Colombia and other Central and South American countries.” December 14, 2010
Response to Office Action, p.614. He further attested that the GRAN HABANO
tobacco is “cultivated, grown and rolled in Applicant’s farming operations in
Honduras and includes parts, such as the wrapper from Applicant’s other farming
operations in Nicaragua, Mexico, Costa Rica, Colombia, Panama and elsewhere.” Id.
Finally, Mr. Grateron confirmed that the only link with Cuba is that “Applicant’s
tobacco seed is descended from the original tobacco seed grown in Cuba prior to the
Cuban Revolution in 1962,” id., a link we have found to be too tenuous to establish
as the “origin” of the goods. The second element of the test is satisfied.
Goods/Place Association
The third element is an inquiry into whether the mark is used in connection
with goods that purchasers are likely to believe are connected with the location in
question, when in fact they are not. See In re Compania de Licores Internacionales
S.A., 102 USPQ2d 1841, 1846-1847 (TTAB 2012) (finding OLD HAVANA primarily
geographically deceptively misdescriptive for rum).
The Examining Attorney submitted evidence that Cuba is highly regarded for its
premium cigars, which are often manufactured in or near Havana. This is
illustrated by the following excerpts from the February 12, 2014 Final Office Action:
Britannica Academic Edition: Havana: Manufacturing: Despite efforts
by the Castro government to spread Cuba’s industrial activity to all
parts of the island, Havana remains the centre of much of the nation’s
industry. The traditional sugar industry, upon which the island’s
economy has been based for three centuries, is centered elsewhere on
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the island and controls some three-fourths of the export economy. But
light manufacturing facilities, meatpacking plants, and chemical and
pharmaceutical operations are concentrated in Havana. Other food-
processing industries are also important, along with shipbuilding,
vehicle manufacturing, and production of alcoholic beverages
(particularly rum), textiles, and tobacco products, particularly the
world-famous Havana cigars.
Britannica.com

The World’s Largest Cigar Store: Cuban tobacco is acknowledged as
among the finest in the world. Cuba’s best tobacco-growing area is the
Vuelta Abajo, part of the Pinar del Rio region area in western Cuba. In
general, Cuban tobacco is strong and full-bodied, with spicy and
aromatic flavors. It is also renowned for its suppleness. Most factories
of premium hand-rolled cigars are located in or near Havana, Cuba’s
capital city.
Jrcigars.com

Cuba is the largest of the Greater Antilles and westernmost country in
the West Indies and lies strategically at the entrance of the Gulf of
Mexico, with the W section only 90 mi/145 km S of Key West,
Florida. . . . There are many fine seaports – Havana (the chief import
point) . . .
High-quality tobacco is grown, especially in the Vuelta Abajo region of
Pinar del Rio province.
The Columbia Gazetteer of North America (2005)

Alumna’s photos show how Cuba’s world-renowned cigars are crafted:
By Sheezan Bakali; It is almost impossible to get hold of a box of
world-renowned Cuban cigars in the United States, and few American
travelers visit Cuba. But Cornell alumna Helen Kleinberg ’48 is one
who has been to Cuba and back, and she has captured the making of
the much coveted Cuban cigar in photos now on exhibit at the School of
Industrial and Labor Relations. . . .
At the factory, Kleinberg documented modern-day workers following
the time-old tradition of hand rolling cigars. “I was told that a box of 25
fine Cuban cigars that cost approximately $125 U.S. in Cuba will sell
for $650 in New York City.,” Kleinberg wrote in her description of the
exhibit.
news.cornell.edu; Chronicle Online January 30, 2008

National Cigar Museum: Cuban Life & Boxes: A national Cigar
Museum Exhibit: Cuba: The largest island in the Caribbean, located at
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the entrance to the Gulf of Mexico. It was on Cuba that Columbus first
heard of people smoking, although he had already been presented with
dried tobacco leaves, which he did not know how to use, on San
Salvador. . . . Cuba is rightly renowned for its cigar tobacco. . . . Vuelta
Abajo tobacco is the standard against which all other cigar tobaccos are
measured. Tobacco from this and other regions of Cuba provided the
original seed from which nearly all modern cigar tobaccos have been
developed.
Nationalcigarmuseum.com

How to Spot Fake Cuban Cigars: Everyone knows that Cuban cigars
are the most coveted cigars, renown worldwide for their smoothness
and rich flavors. Indeed Cuban cigars are so prized that many
illegitimate dealers have been known to sell fake Cubans to
unsuspecting cigar smokers. How do you tell if what you have is a fake
or the real thing?
smokers-express.net

Historical Museum of South Florida: by Tina Bucuvalas:
hand rolled Cuban cigars are world renowned for their excellence. With
the U.S. embargo on Cuban products, many small cigar-rolling
businesses opened in Miami. Most of those who own or work in these
operations learned the trade in Cuba, and some come from families
that have made cigars for generations. Techniques and methods
remain largely the same, with a few exceptions. Miami cigars are not
made exclusively of Cuban tobacco, and some cigar sizes have been
altered to satisfy the tastes of an American clientele.
www.hmsf.org/collections-tropical-traditions.htm as that website
appeared in 2008.

Wikipedia: Havana: Havana is the capital city, province, major port,
and leading commercial centre of Cuba. The city proper has a
population of 2.1 million inhabitants, and it spans a total of 728.26
km2 (281.18 sq. mi), making it the largest city by area, the most
populous city, and the third largest metropolitan area in the Caribbean
region. . . .
Economy: The traditional sugar industry, upon which the island’s
economy has been based for three centuries, is centered elsewhere on
the island and controls some three-fourths of the export economy. But
light manufacturing facilities, meatpacking plants, and chemical and
pharmaceutical operations are concentrated in Havana. Other food-
processing industries are also important, along with shipbuilding,
vehicle manufacturing, and production of alcoholic beverages
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(particularly rum), textiles, and tobacco products, particularly the
world-famous Habanos cigars.
http://en.wikipedia.org/wiki/Havana

Applicant argues that its consumers are sophisticated, and are aware that its
cigars do not originate in Havana or Cuba. The declarations submitted by
Applicant’s thirteen retailers and distributors indicate that they consider their
consumers to be “sophisticated” and to not be influenced by any belief that
Applicant’s GRAN HABANO cigars originate in Cuba. See August 12, 2014
Response to Office Action, pp.17-65. Applicant also submitted the declarations of
twelve customers who self-identified as “sophisticated,” and who also attested that
they are not influenced by any belief that Applicant’s GRAN HABANO cigars
originate in Cuba. See August 12, 2014 Response to Office Action, pp.67-108.
Applicant’s identification of goods does not limit Applicant’s consumers to
sophisticated, knowledgeable consumers, however, but rather includes all
consumers of “cigars made from Cuban seed tobacco,” many or most of whom are
likely to be aware of the high regard for Cuban cigars, often associated with
Havana. With regard to Applicant’s attestations that consumers are aware of the
United States embargo on Cuba, and the inability of United States consumers to
purchase Cuban cigars, our precedent is clear that such policy measures must not
influence our findings. See In re Compania de Licores Internacionales S.A., 102
USPQ2d at 1848; In re Jonathan Drew, Inc., 97 USPQ2d 1640 (TTAB 2011) (finding
KUBA KUBA primarily geographically deceptively misdescriptive for cigars,
tobacco, and related products).
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We find that the Examining Attorney has established a prima facie case of a
goods/place association, which Applicant has not rebutted. The third element of the
test is satisfied.
Materiality
In the fourth and final prong, we ask whether the misrepresentation would be a
material factor in a substantial portion of the relevant consumers’ decision to buy
the goods or use the services. In re Spirits, 90 USPQ2d at 1490-95. Our precedent
has established that, “indirect evidence is permitted, and materiality may be
established by inference.” Corporacion Habanos S.A. v. Guantanamera, 102
USPQ2d at 1098. Evidence that a place is famous as a source of the goods raises an
inference in favor of materiality. See In re Les Halles de Paris, J.V., 334 F.3d 1371,
67 USPQ2d 1539, 1542 (Fed. Cir. 2003). It is clear from the record that United
States consumers associate high quality cigars and tobacco with Cuba and Havana.
Applicant argues that the term “habano” is not a material factor in the decision
of its customers to purchase GRAN HABANO cigars, as attested to in the
declarations of its thirteen retailers and distributors and twelve consumers. See
August 12, 2014 Response to Office Action, pp. 17-108. The declarations further
attest that Applicant’s consumers are aware of many brands that evoke the heritage
and Cuban history of cigar making, but do not presently originate in Cuba. Id. In
this regard, Applicant submitted dozens of third-party registrations containing the
term “HAVANA” or “CUBA” or variations thereof, for identifications with cigars or
cigar-related goods. Similarly, Applicant points to its own prior (now cancelled)
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Registration No. 2208629 for GRAN HABANO for “cigars made from Cuban seed
tobacco,” registered on the Principal Register on December 8, 1998, with a
disclaimer of the term “habano.” We note that the aforementioned were registered
prior to the 2007 decision Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d at
1793, and are not relevant to our analysis herein.
Several of the declarants also note that they buy GRAN HABANO cigars
because of a “preference for Nicaraguan tobacco,” id. at 42 (Worley decl.), or for
“Dominican, Nicaraguan, American, and Honduran cigars.” Id., at 99 (Myers decl.).
Applicant’s owner attested that “Applicant’s customers are not interested in Cuban
cigars because Cuban cigars are one dimensional.” Rico decl., Id. at 12.7 Overall, we
find that Applicant has established that at least some of the cigar-smoking public
may indeed prefer cigars that do not originate from Cuba, and that some of the
cigar-smoking public is accustomed to being exposed to brands that include terms
that evoke Cuban heritage.
We note, however, that as indicated above, Applicant’s identification of goods is
not limited to the subset of consumers represented by the declarations submitted.
In particular, there is strong evidence of record that Havana, Cuba is associated
with highly-desirable premium tobacco products including cigars, which, as noted,
creates a presumption of materiality for purchasers. See Corporacion Habanos S.A.

7 It is not clear how he would have this knowledge, or they would have that experience,
since all of Applicant’s customers and retailers/distributors uniformly attested that it is
impossible to obtain Cuban cigars in this country, August 12, 2014 Response to Office
Action pp. 17-108.
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v. Guantanamera 102 USPQ2d at 1098; see also In re Compania de Licores
Internacionales S.A., 102 USPQ2d at 1851. A rebuttal to this evidentiary finding
would be objective proof that cigars from Havana have no “particular quality,
reputation or other characteristic” supporting this status. The evidence presented
by the Examining Attorney has created a presumption which Applicant, despite its
voluminous evidence of record, has not rebutted. The fourth element of the test is
satisfied.
Conclusion
We find the primary significance of GRAN HABANO to be associated with
Havana, the capital of Cuba, a geographical location that is generally known to
United States consumers. We find that a substantial number of relevant consumers
will stop and translate the mark as “The Great Havanan.” Due to the famous and
highly-regarded tobacco and cigar industry in Cuba, centered in Havana, consumers
will make a goods/place association, which is to say that consumers will mistakenly
believe that Applicant’s “cigars made from Cuban seed tobacco” originates from
Havana, when in fact it does not. Finally, because of the renown of cigars
originating in Havana, Cuba, the geographic origin of the cigars would be a
material factor for a significant portion of the relevant consumers in their decision
to buy the cigars.8

8 Although it is not necessary to tie our decision to the history of geographical indicators or
the responsibilities of the United States under multilateral trade agreements like NAFTA,
we note that Applicant cites to Anne Gilson LaLonde, “You Are Not Going to Believe This!
Deception, Misdescription and Materiality in Trademark Law,” 2012. Given the various
twists and turns in this Board’s interpretations of § 2(e)(3) since 1993, as outlined so well in
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In view of the above, the Examining Attorney has established that GRAN
HABANO is primarily geographically deceptively misdescriptive under Section
2(e)(3) of the Trademark Act.
Decision: The Section 2(e)(3) refusal to register Applicant’s mark is affirmed.

Ms. Gilson LaLonde’s article, we find that our result in the case at bar is totally consonant
with the spirit of the NAFTA Implementation Act. By international treaties and domestic
statutes, the U.S. has agreed it cannot register a mark containing a geographical indicator
if it would mislead the public as to the geographical origin of goods sold under that mark.
Accepting Applicant’s arguments, any manufacturer or merchant could skirt this statutory
bar by having a carefully selected subset of its retailers distributors, and customers submit
form declarations saying that despite the widespread fame of a geographical area, “we
personally are not actually misled because we know better.” Acceding to that result would
amount to poor jurisprudence on the part of this tribunal, to say nothing of the resulting
difficulties created in the relationships with our nation’s trading partners.