Timothy J. Sheehan

Trademark Trial and Appeal Board

Sep 10, 1998

No. 74490595 (T.T.A.B. Sep. 10, 1998)

Paper No. 17
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 10, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Timothy J. Sheehan
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Serial No. 74/490,595
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Merrily Porter of the Law Offices of James O. Houchins for
Timothy J. Sheehan.
David Reihner, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
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Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
Applicant filed the above-referenced application on
February 16, 1994 to register the mark “CUBITA” on the
Principal Register for “coffee,” in Class 30. The basis
for the application was applicant’s assertion that he had
used the mark on these goods in commerce since March 1,
1994.
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This application now comes up before the Board on
appeal from a final refusal to register under Section
2(e)(3) of the Lanham Act on the ground that “CUBITA” is
primarily geographically deceptively misdescriptive of the
goods on which applicant uses it. Applicant did not
request an oral hearing before the Board, but both
applicant and the Examining Attorney filed briefs.
The record includes a copy of an entry in a Spanish
dictionary which shows that “ita” is one of “the most
common diminutive endings” in the Spanish language; copies
of entries from two encyclopedias, an almanac and a
geographical dictionary showing that Cuba is a well-known
geographic place name for the island country in the West
Indies, ninety miles south of Florida, and that one of its
chief products is coffee; a copy of a dictionary entry
defining the adjective “diminutive” as “designating certain
suffixes that denote smallness, youth, familiarity, or
affection.”
Also of record are copies of excerpts from the United
States Code of Federal Regulations which provide details
about the United States’ embargo of products from Cuba
since 1963.
The specimens of use submitted with the application,
of course, are also part of the record in this appeal.
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They are labels affixed to containers, which are apparently
bags, for applicant’s coffee. The front of the label shows
the mark above the words “WHOLE BEAN.” Beneath these words
is an illustration wherein coffee beans are arranged in the
shape of a map of Cuba inside an oval design. Spanish and
English versions of “Dark Roast” and “Medium Roast” are
printed next to boxes which are to be marked according to
the contents of particular bags. Beneath these two choices
are the words “EL SABOR DE CUBA,” which translate into “THE
FLAVOR OF CUBA.” The rear portion of the label notes that
the contents of the bag are the product of Equador, roasted
and imported by a business in Texas. Under twin headings
of “Cubita,” Spanish and English versions of the following
are printed:
This coffee is picked from the finest
Equadorian beans. Traditional processing
gives this coffee a taste and aroma
suitable for the most discerning Cuban
palate.
The column in English goes on to state that each bag
contains reproductions of works of art by famous Cuban
artists and accounts of famous Cubans.
The well-settled rule for determining whether
registration should be refused under Section 2(e)(3) of the
Act has several steps. First, we must determine if the
primary significance of the term is the name of a
Ser No. 74/490,595
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geographic place which is neither obscure nor remote. If
so, in order for a refusal to be proper, the next question
which must be answered in the affirmative is whether there
is a goods/place association, that is, whether prospective
purchasers would expect or understand that goods of the
type specified in the application come from the place
named. The last part of the test is to determine whether
or not the goods do in fact come from the place named. If
they do not, the term is properly refused registration
under Section 2(e)(3) because it is primarily
geographically deceptively misdescriptive of the goods. In
re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982);
In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB
1988).
After careful consideration of these legal principles
in light of the record in this application and the
arguments of both applicant and the Examining Attorney, we
hold that registration of this mark is not barred by
Section 2(e)(3) of the Act because the first part of the
test is not satisfied. This record does not establish that
“CUBITA” would be understood by coffee purchasers as the
name of a place.
The critical issue in this case is whether the primary
significance of “CUBITA” to coffee buyers in the United
Ser No. 74/490,595
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States is as the name of a geographic place, i.e., another
name for “CUBA,” or whether, as applicant asserts, the
addition of the diminutive suffix “ITA” to the root form of
the name “CUBA” alters its significance to the extent that
its primary significance is no longer that of the place
name.
The dictionary definition of record mentioned above
explains that the addition of a diminutive suffix to a word
may denote smallness, youth, familiarity or affection. As
applied to the root form of “CUBA,” the suffix “ITA” would
not reasonably connote youth or smallness, but rather, the
resulting term, “CUBITA,” would be understood as a familiar
or affectionate reference to the country. As applicant
argues, the mark, like the text on the label quoted at
length above, would be understood as creating the
suggestion that applicant’s coffee possesses the flavor,
style or aura associated with Cuban coffee. In the same
sense that “Tommy” and “Jonesy” would be understood to be
familiar, affectionate terms for people named “Thomas” and
“Jones,” the mark “CUBITA” would be recognized as an
affectionate reference to Cuba, but just as “Jonesy” is not
a surname, “CUBITA” is not the name of a place. In fact,
the record does not show that this term has ever been used
by anyone, including applicant, as another name for Cuba.
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For that matter, the record does not reveal that in commom
parlance the diminutive suffix “ITA” is ever appended to
place names, either in order to refer to them in a familiar
or affectionate way, or to suggest their smallness or
youth. Based on this record, it appears that applicant has
taken the diminutive suffix “ita,” which is usually
combined with ordinary nouns like “casa” (house) and “flor”
(flower), and combined it with the name of the country,
“Cuba,” in order to create an unusual resulting term for
his trademark. Under these circumstances, the resulting
trademark, “CUBITA,” would not immediately be understood as
the name of the place.
In summary, the first part of the test for refusing
registration under Section 2(e)(3) has not been met in this
case. The term sought to be registered does not have as
its primary significance the name of a place. Accordingly,
the refusal to register is reversed.
R. F. Cissel
E. J. Seeherman
C. E. Walters
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Administrative Trademark Judges
Trademark Trial & Appeal Board
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