CH Response to OA Habanos Cert Mark

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

The table below presents the data as entered.Input Field Entered

SERIAL NUMBER 77157193

LAW OFFICEASSIGNED

LAW OFFICE 111

MARK SECTION (no change)

ARGUMENT(S)

Applicant respectfully responds to the office action dated August 21, 2008, as follows. Thisresponse incorporates by reference Applicant's earlier responses and the arguments and evidencesubmitted together therewith.

Cuban Registration1.

Applicant's application is based, in part, on Applicant's Cuban registration. In the August 21, 2009Office Action, the Examining Attorney stated, "applicant must submit a certificate of renewal or othercertification from the intellectual property office of the foreign country, or a copy of the foreignregistration that shows that the foreign registration has been renewed and will be in force at the time theregistration issues in the United States." Applicant is submitting herewith a certificate from theintellectual property office of Cuba that shows the Cuban registration has been renewed and will be inforce until December 4, 2017, together with a certified translation thereof.

Other Grounds for Refusal1.

The Examining Attorney stated three other grounds for refusal, under the headings "CertificationStatement," "Geographical Misdescription," and "Descriptiveness." The essence of all three grounds forrefusal is the same: The Examining Attorney contends that "Habanos" is not a geographical indicationfor cigars from Cuba, but instead either (1) an indication for the Cuban province and/or city of Havana,or, (2) bizarrely, contradictorily, and patently incorrectly, that Habanos is not a geographical indicationat all, but rather "primarily signifies a type of cigar made either in Cuba or outside Cuba, without regardto the regional origin identified by the name." We note for the record that both of these positions are completely at odds with this ExaminingAttorney's position in previous office actions with respect to this application, in which the ExaminingAttorney proffered a definition of "Habanos" as "cigars made from tobacco planted and grown in Cubaand manufactured into cigars on the island of Cuba," and stated that "the designation 'Habanos' is theSpanish word for 'Havanas', which is the generic name for Cuban cigars." See February 11, 2008

Office Action. (Other than the misuse of the term "generic," which the Examining Attorney has nowcorrected, these statements are essentially correct. As the Examining Attorney now appears to haveagreed, a purely descriptive geographical indication can be registered as a certification mark. Habanoscan and therefore should be registered because it means "Cuban cigars"; in fact, the United States'position is that registering descriptive geographical indications as certification marks is one of the waysthe United States complies with its international treaty obligations.) After the last office action, on September 26, 2008, the Trademark Trial & Appeal Board held inCorporacion Habanos, S.A. v. Anncas, Inc., 88 U.S.P.Q.2d 1785 (TTAB 2008) that a mark containingthe word "Havana" is misdescriptive if the product does not come from Cuba. Since that decision, thisExamining Attorney properly has rejected a number of applications that include the word "Habano"because the cigars sold under the mark did not come from Cuba, see, e.g., Serial Number 77359144("Nicaragua Habanos") ("applicant indicates that the goods do not originate from Cuba but Nicaragua,applicant's mark is [therefore] primarily geographically deceptively misdescriptive") (citing dictionarydefinition of "Cuban cigar"). Other examining attorneys similarly have determined that "habano" refersto Cuban cigars and have denied applications on that basis. See, e.g., Serial Number 77348097 ("100%Habano Maduro"), dated September 18, 2008 ("Habano Maduro can be translated to 100% ripe Cubancigars"). (Ironically, the examining attorney denied the trademark application for "Habano Maduro" asmerely descriptive, apparently because she was under the false impression that the goods in questionwere from Cuba, ample demonstration of the holding in Anncas that people inextricably associateHavana/Habanos with cigars from Cuba.) Because this Examining Attorney, subsequent to the mostrecent office action with respect to the instant application, appears to have accepted Applicant's positionthat "Habanos" refers to cigars from Cuba, counsel for Applicant called the Examining Attorney onJanuary 26, 2009. During the January 26, 2009 call, the Examining Attorney requested that Applicant submit a response tothis office action in which Applicant restated its position and noted the Examining Attorney's recentoffice actions with respect to other "Habano" marks. In line with the Examining Attorney's request,Applicant again submits that "Habanos" is a geographical indication that indicates, with respect tocigars, that the cigars are made in Cuba from 100% Cuban tobacco. Applicant notes, in this respect,that (1) the Examining Attorney's own references state as much in office actions with respect to thisapplication (for instance, Cigar Advisor.com: "Habano: A designation which, when inscribed on acigar band, indicates that a cigar is Cuban") and with respect to other applications (epicurus.com: "Habano: On a cigar band this indicates that the cigar was made in Cuba"; The American HeritageSpanish Dictionary: "Habano, -na . . . m. (cigarro) Cuban cigar.") Also for the record, the word "Habanos" with an "s" is not the plural form of the general adjective for"from Havana"; rather, it is a word in Spanish that applies to cigars, and means cigars from Cuba. Themasculine plural adjective for people or things from Havana city or province is "Habaneros," not"Habanos." The fact that a "Habano" is sometimes translated as a "Havana cigar" should not bemisinterpreted, either, because "Havana," when applied to cigars, means a cigar from the island of Cuba. For instance, in Corporacion Habanos, the TTAB noted that, "several English language dictionaryentries define 'Havana' as both the capital of Cuba and as a cigar made in Cuba or made from Cubantobacco," and "in several news and feature stories and excerpts from cigar publications, 'Havana' isused to denote a cigar made in Cuba." In short, it is beyond dispute that "Habanos" is a geographical indication that refers to a cigar made in

Cuba from Cuban tobacco, that the word is consistently used that way and has been for a long period oftime, and that the geographical indication should be registered as a certification mark to protect one ofthe most famous goods/place associations in the world. During the January 26, 2009 phone call, the Examining Attorney also stated that Applicant need notsubmit the voluminous evidentiary backup that could be assembled in support of Applicant'sapplication, and that a final office action refusing registration would not result from this response. Applicant submits this response in reliance on the Examining Attorney's statement, and reserves theright to submit additional evidence if necessary. Applicant has now responded to all matters raised by the Examining Attorney and submits thatApplicant's application is ready for publication.

GOODS AND/OR SERVICES SECTION (current)

INTERNATIONAL CLASS A

DESCRIPTION cigars

FILING BASIS Section 1(b)

FILING BASIS Section 44(d)

FOREIGNAPPLICATION NUMBER TO-COME

FOREIGNAPPLICATION COUNTRY Canada

FOREIGN FILINGDATE 04/13/2007

FILING BASIS Section 44(e)

FOREIGNREGISTRATION NUMBER 16

FOREIGNREGISTRATION COUNTRY

Canada

FOREIGNREGISTRATION DATE

12/11/1967

FOREIGNEXPIRATION DATE 12/31/2100

STANDARDCHARACTERS OR EQUIVALENT

YES

GOODS AND/OR SERVICES SECTION (proposed)

INTERNATIONAL CLASS A

DESCRIPTION cigars

FILING BASIS Section 1(b)

FILING BASIS Section 44(e)

FOREIGNREGISTRATION NUMBER 16

FOREIGNREGISTRATION COUNTRY

Cuba

FOREIGNREGISTRATION DATE

12/11/1967

FOREIGNEXPIRATION DATE 12/04/2017

FOREIGN REGISTRATION FILE NAME(S)

ORIGINAL PDF FILE FRU0-71249234214-154323739_._DOP_HABANOS-2009.pdf

CONVERTED PDFFILE(S) (1 page)

\\TICRS\EXPORT6\IMAGEOUT6\771\571\77157193\xml1\ROA0002.JPG

ORIGINAL PDF FILE FRU0-71249234214-154323739_._translation_-_OCPI_certificate.PDF

CONVERTED PDFFILE(S) (2 pages)



ORIGINAL PDF FILE FRU0-1-71249234214-154323739_._cuban_registration.pdf




ORIGINAL PDF FILE FRU0-71249234214-154323739_._translation.pdf





SIGNATURE SECTION

DECLARATIONSIGNATURE /Christopher J. Klatell/

SIGNATORY'S NAME Christopher J. Klatell

SIGNATORY'S POSITION Attorney of record, New York bar member

DATE SIGNED 02/17/2009

RESPONSE SIGNATURE /Christopher J. Klatell/

SIGNATORY'S NAME Christopher J. Klatell

SIGNATORY'S POSITION Attorney of record, New York bar member

DATE SIGNED 02/17/2009

AUTHORIZEDSIGNATORY YES

FILING INFORMATION SECTION

SUBMIT DATE Tue Feb 17 15:56:30 EST 2009

TEAS STAMP

USPTO/ROA-71.249.234.214-20090217155630731539-77157193-4409143885356ad38ef939e62df46bedf40-N/A-N/A-20090217154323739427

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office ActionTo the Commissioner for Trademarks:

Application serial no. 77157193 has been amended as follows:

ARGUMENT(S)In response to the substantive refusal(s), please note the following:

Applicant respectfully responds to the office action dated August 21, 2008, as follows. This responseincorporates by reference Applicant's earlier responses and the arguments and evidence submittedtogether therewith.

Cuban Registration1.

Applicant's application is based, in part, on Applicant's Cuban registration. In the August 21, 2009 OfficeAction, the Examining Attorney stated, "applicant must submit a certificate of renewal or othercertification from the intellectual property office of the foreign country, or a copy of the foreign

registration that shows that the foreign registration has been renewed and will be in force at the time theregistration issues in the United States." Applicant is submitting herewith a certificate from theintellectual property office of Cuba that shows the Cuban registration has been renewed and will be inforce until December 4, 2017, together with a certified translation thereof.

Other Grounds for Refusal1.

The Examining Attorney stated three other grounds for refusal, under the headings "CertificationStatement," "Geographical Misdescription," and "Descriptiveness." The essence of all three grounds forrefusal is the same: The Examining Attorney contends that "Habanos" is not a geographical indication forcigars from Cuba, but instead either (1) an indication for the Cuban province and/or city of Havana, or, (2)bizarrely, contradictorily, and patently incorrectly, that Habanos is not a geographical indication at all, butrather "primarily signifies a type of cigar made either in Cuba or outside Cuba, without regard to theregional origin identified by the name." We note for the record that both of these positions are completely at odds with this Examining Attorney'sposition in previous office actions with respect to this application, in which the Examining Attorneyproffered a definition of "Habanos" as "cigars made from tobacco planted and grown in Cuba andmanufactured into cigars on the island of Cuba," and stated that "the designation 'Habanos' is the Spanishword for 'Havanas', which is the generic name for Cuban cigars." See February 11, 2008 Office Action. (Other than the misuse of the term "generic," which the Examining Attorney has now corrected, thesestatements are essentially correct. As the Examining Attorney now appears to have agreed, a purelydescriptive geographical indication can be registered as a certification mark. Habanos can and thereforeshould be registered because it means "Cuban cigars"; in fact, the United States' position is thatregistering descriptive geographical indications as certification marks is one of the ways the United Statescomplies with its international treaty obligations.) After the last office action, on September 26, 2008, the Trademark Trial & Appeal Board held inCorporacion Habanos, S.A. v. Anncas, Inc., 88 U.S.P.Q.2d 1785 (TTAB 2008) that a mark containing theword "Havana" is misdescriptive if the product does not come from Cuba. Since that decision, thisExamining Attorney properly has rejected a number of applications that include the word "Habano"because the cigars sold under the mark did not come from Cuba, see, e.g., Serial Number 77359144("Nicaragua Habanos") ("applicant indicates that the goods do not originate from Cuba but Nicaragua,applicant's mark is [therefore] primarily geographically deceptively misdescriptive") (citing dictionarydefinition of "Cuban cigar"). Other examining attorneys similarly have determined that "habano" refers toCuban cigars and have denied applications on that basis. See, e.g., Serial Number 77348097 ("100%Habano Maduro"), dated September 18, 2008 ("Habano Maduro can be translated to 100% ripe Cubancigars"). (Ironically, the examining attorney denied the trademark application for "Habano Maduro" asmerely descriptive, apparently because she was under the false impression that the goods in question werefrom Cuba, ample demonstration of the holding in Anncas that people inextricably associateHavana/Habanos with cigars from Cuba.) Because this Examining Attorney, subsequent to the mostrecent office action with respect to the instant application, appears to have accepted Applicant's positionthat "Habanos" refers to cigars from Cuba, counsel for Applicant called the Examining Attorney onJanuary 26, 2009. During the January 26, 2009 call, the Examining Attorney requested that Applicant submit a response tothis office action in which Applicant restated its position and noted the Examining Attorney's recent office

actions with respect to other "Habano" marks. In line with the Examining Attorney's request, Applicantagain submits that "Habanos" is a geographical indication that indicates, with respect to cigars, that thecigars are made in Cuba from 100% Cuban tobacco. Applicant notes, in this respect, that (1) theExamining Attorney's own references state as much in office actions with respect to this application (forinstance, Cigar Advisor.com: "Habano: A designation which, when inscribed on a cigar band, indicatesthat a cigar is Cuban") and with respect to other applications (epicurus.com: "Habano: On a cigar bandthis indicates that the cigar was made in Cuba"; The American Heritage Spanish Dictionary: "Habano, -na. . . m. (cigarro) Cuban cigar.") Also for the record, the word "Habanos" with an "s" is not the plural form of the general adjective for"from Havana"; rather, it is a word in Spanish that applies to cigars, and means cigars from Cuba. Themasculine plural adjective for people or things from Havana city or province is "Habaneros," not"Habanos." The fact that a "Habano" is sometimes translated as a "Havana cigar" should not bemisinterpreted, either, because "Havana," when applied to cigars, means a cigar from the island of Cuba. For instance, in Corporacion Habanos, the TTAB noted that, "several English language dictionary entriesdefine 'Havana' as both the capital of Cuba and as a cigar made in Cuba or made from Cuban tobacco,"and "in several news and feature stories and excerpts from cigar publications, 'Havana' is used to denote acigar made in Cuba." In short, it is beyond dispute that "Habanos" is a geographical indication that refers to a cigar made inCuba from Cuban tobacco, that the word is consistently used that way and has been for a long period oftime, and that the geographical indication should be registered as a certification mark to protect one of themost famous goods/place associations in the world. During the January 26, 2009 phone call, the Examining Attorney also stated that Applicant need notsubmit the voluminous evidentiary backup that could be assembled in support of Applicant's application,and that a final office action refusing registration would not result from this response. Applicant submitsthis response in reliance on the Examining Attorney's statement, and reserves the right to submitadditional evidence if necessary. Applicant has now responded to all matters raised by the Examining Attorney and submits thatApplicant's application is ready for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICESApplicant proposes to amend the following class of goods/services in the application:Current: Class A for cigarsOriginal Filing Basis:Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use throughthe applicant's related company or licensee the mark in commerce on or in connection with the identifiedgoods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to usethe mark in commerce on or in connection with the identified goods and/or services, and asserts a claim ofpriority based on [Canada application number TO-COME filed 04/13/2007]. 15 U.S.C.Section 1126(d), asamended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use

the mark in commerce on or in connection with the identified goods and /or services, and submits a copyof [ Canada registration number 16 registered 12/11/1967 with a renewal date of __________ and anexpiration date of 12/31/2100 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), asamended.

Proposed: Class A for cigarsDeleted Filing Basis: 44(d)Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use throughthe applicant's related company or licensee the mark in commerce on or in connection with the identifiedgoods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to usethe mark in commerce on or in connection with the identified goods and /or services, and submits a copyof [ Cuba registration number 16 registered 12/11/1967 with a renewal date of __________ and anexpiration date of 12/04/2017 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), asamended.Original PDF file:FRU0-71249234214-154323739_._DOP_HABANOS-2009.pdfConverted PDF file(s) (1 page)Foreign Registration-1Original PDF file:FRU0-71249234214-154323739_._translation_-_OCPI_certificate.PDFConverted PDF file(s) (2 pages)Foreign Registration-1Foreign Registration-2Original PDF file:FRU0-1-71249234214-154323739_._cuban_registration.pdfConverted PDF file(s) (2 pages)Foreign Registration-1Foreign Registration-2Original PDF file:FRU0-71249234214-154323739_._translation.pdfConverted PDF file(s) (3 pages)Foreign Registration-1Foreign Registration-2Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard characterequivalent.

SIGNATURE(S)Declaration SignatureIf the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, theapplicant has had a bona fide intention to use or use through the applicant's related company or licenseethe mark in commerce on or in connection with the identified goods and/or services as of the filing date ofthe application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has

had a bona fide intention to exercise legitimate control over the use of the mark in commerce by itsmembers. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the TrademarkAct, the mark was in use in commerce on or in connection with the goods or services listed in theapplication as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant hasexercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244.The undersigned, being hereby warned that willful false statements and the like so made are punishable byfine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements mayjeopardize the validity of the application or any resulting registration, declares that he/she is properlyauthorized to execute this application on behalf of the applicant; he/she believes the applicant to be theowner of the trademark/service mark sought to be registered, or, if the application is being filed under 15U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best ofhis/her knowledge and belief no other person, firm, corporation, or association has the right to use themark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely,when used on or in connection with the goods/services of such other person, to cause confusion, or tocause mistake, or to deceive; that if the original application was submitted unsigned, that all statements inthe original application and this submission made of the declaration signer's knowledge are true; and allstatements in the original application and this submission made on information and belief are believed tobe true.

Signature: /Christopher J. Klatell/ Date: 02/17/2009Signatory's Name: Christopher J. KlatellSignatory's Position: Attorney of record, New York bar member

Response SignatureSignature: /Christopher J. Klatell/ Date: 02/17/2009Signatory's Name: Christopher J. KlatellSignatory's Position: Attorney of record, New York bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of thehighest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federalterritories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and tothe best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadianattorney/agent not currently associated with his/her company/firm previously represented the applicant inthis matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute powerof attorney with the USPTO; (2) the USPTO has granted the request of the prior representative towithdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) theapplicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointinghim/her as an associate attorney in this matter.

Serial Number: 77157193Internet Transmission Date: Tue Feb 17 15:56:30 EST 2009TEAS Stamp: USPTO/ROA-71.249.234.214-20090217155630731539-77157193-4409143885356ad38ef939e62df46bedf40-N/A-N/A-20090217154323739427

Documents

CH Response to OA Habanos Cert Mark