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ESTTA Tracking number: ESTTA270221
Filing date: 03/04/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91185180
Party Defendant
NICARAGUA TOBACCO IMPORTS, INC.
Correspondence Jose Gutman
Address Fleit, Gibbons, Gutman, Bongini, PL
551 N.W. 77th Street
Boca Raton, FL 33487
UNITED STATES
tmboca@fggbb.com
Submission Opposition/Response to Motion
Filer's Name Jose Gutman
Filer's e-mail tmboca@fggbb.com
Signature /Jose Gutman/
Date 03/04/2009
Attachments 0_Applicant's Response Brief 30409.pdf ( 22 pages )(94384 bytes )
1_Applicant's Response Brief and Exhibits.pdf ( 8 pages )(1457810 bytes )
2_Applicant's Response Brief and Exhibits.pdf ( 4 pages )(1978354 bytes )
3_Applicant's Response Brief and Exhibits.pdf ( 9 pages )(870916 bytes )
4_Applicant's Response Brief and Exhibits.pdf ( 13 pages )(2575537 bytes )
5_Applicant's Response Brief and Exhibits.pdf ( 19 pages )(678028 bytes )
6_Applicant's Response Brief and Exhibits.pdf ( 12 pages )(366433 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
____________________________________ /
Applicant.
____________________________________ /
APPLICANT’S RESPONSE TO
OPPOSER’S MOTION FOR SUMMARY JUDGMENT
I. Introduction
-1-
The Applicant investigated Opposer’s product after this contact. Upon
investigation, the Applicant noticed that Opposer’s cigars marketed under the
“TATUAJE” brand were contained in boxes bearing the “TATUAJE” Mark. The
Applicant further noticed that the boxes containing Opposer’s products also had
other marks adjacent to the “TATUAJE” mark, including the term “Puros
Cubanos,” which translates to “Pure Cubans,” and a stylized “tobacco leaf stick”
logo that has been established by the Cuban Government as an indicator of
Genuine Cuban Cigars. The Applicant was confused by these markings since
the sale of Genuine Cuban Cigars is illegal in the United States. The Applicant
realized that this was clearly a deceptive sales practice by the Opposer to cause
purchasers to believe that these products were Genuine Cuban Cigars, a
distinction that, if true, would raise their demand and value among cigar
aficionados.
2) Applicant agrees that the goods and services specified in the Federal
Registration for the TATUAJE mark are similar to the subject trademark
application for TATTOO
3) The Applicant agrees that the channels of trade commonly used for the goods
specified in the Federal Registration for the TATUAJE mark are similar to the
channels of trade commonly used for the goods specified in the subject
trademark application for TATTOO.
-2-
III. Contested Facts
The Applicant asserts that Summary Judgment is improper in this case due
to the number of outstanding contested facts that require further fact finding and
adjudication. The contested facts in this matter by issue are listed below and
discussed in detail thereafter.
-3-
B. Contested Facts concerning Affirmative Defense of “Unclean
Hands”
1) Does Opposer’s use of “Puros Cubanos,” which translates to “Pure Cubans,”
in close proximity to and in conjunction with the “Tatuaje” mark on their product
unfairly deceives consumers to believe that Opposer’s products are “Pure
Cuban” tobacco cigars?
2) Does Opposer’s use of the stylized “tobacco leaf stick” logo established by the
Cuban Government to identify genuine Cuban cigars, as used in conjunction with
the term “Puros Cubanos,” and in close proximity to and in conjunction with the
“Tatuaje” mark on their product, unfairly deceives consumers to believe that
Opposer’s products are “Pure Cuban” tobacco cigars?
After expending considerable effort over six months to develop the TATTOO
product and to attempt to secure the trademark, Applicant received what were
thought to be unsolicited telephone sales calls from Peter Johnson of Tatuaje
Cigars. Affidavit of Alberto Gutman, Exhibit A, Paragraph 9. Despite Opposer’s
assertion to the contrary, Applicant was completely unfamiliar with Tatuaje
Cigars. Applicant did not return these calls from the unknown caller. Id.
Opposer then contacted Applicant through Jonathan Drew, a person known to
the Applicant. Jonathan Drew explained the Opposer’s position and concerns
regarding the TATTOO mark. Id. at paragraph 10.
-5-
Havana” area and is not located in a geographic area that cigar aficionados
would visit to investigate cigars. Id. at paragraph 21.
Opposer asserts that “it is a virtual certainty that Applicant had actual
knowledge of Opposer’s rights as well.” Motion for Summary Judgment, page 3,
third paragraph. Despite the “small world” that forms the cigar industry, Applicant
does not know all of the participants, especially a participant with one retailer
located in the cigar aficionado rich Miami area.
-6-
Opposer’s cigar product sold under the trademark TATUAJE is a “Pure Cuban”
tobacco cigar product from Cuba. Opposer’s cigars sold in the box under the
trademark TATUAJE are not “Pure Cuban” tobacco cigars and they are not from
Cuba. Affidavit of Alberto Gutman, Exhibit A, paragraph 28; and see also Exhibit
T. This intentional tactic by Opposer is intended to deceive consumers regarding
the geographic origin, character, quality, composition, and/or source of the
Opposer’s cigars sold under the trademark TATUAJE. This continuous
deceptive, or deceptively misdescriptive, use by Opposer of its mark TATUAJE
for at least nearly four years (since 2006 to present), precludes Opposer from
seeking relief from this Board under the equitable doctrine of “unclean hands”.
-7-
that since it is the owner of a registered trademark for “TATUAJE,” it also
“already owns trademark rights in the mark TATTOO.” Opposer’s Motion for
Summary Judgment, Exhibit J, e-mail from Brian Swain to Applicant, first
paragraph; also referred to in Motion for Summary Judgment, page 3, section “B”
second paragraph and last paragraph continuing onto page 4. This is clearly a
misrepresentation since Opposer owns no rights in TATTOO itself.
V. Argument
-8-
Applicant asserts that Opposer’s arguments misstate the analysis to be
performed under the Doctrine of Foreign Equivalents and also misstate certain
facts concerning the translation of TATUAJE and TATTOO.
-9-
of Foreign Equivalents. The Applicant further asserts that a proper analysis
using test required under the Doctrine of Foreign Equivalents requires resolution
of disputed underlying facts.
The Applicant asserts that TATUAJE is not common Spanish word and
that a Spanish speaking consumer would not typically “stop and translate” the
word mark TATUAJE into English. See, Affidavit of Alberto Gutman, paragraphs
2 and 16.
- 10 -
Alberto Gutman, Exhibit A, Paragraph 18. Therefore, “tatuaje” refers to either a
“tattoo” or to a “gun powder burn.”
These two meanings show that the Spanish word “tatuaje” has a broader
meaning than the English word “tattoo.” In English, “the action and effect of
tattooing” and a “gun powder burn” are two very different things. The Applicant
asserts that comparing “tattoo” to “gun powder burn” yields quite dissimilar
connotations, resulting in “tatuaje” and “tattoo” not being “synonyms, much less
exact synonyms.” In re Buckner Enterprises Corp., 6 USPQ2d 1316, 1317
(TTAB 1987). In Buckner, the Board evaluated the similarity of meaning between
the marks PALOMA and DOVE. The meaning of PALOMA was found to include
“dove” and “pigeon.” In comparing “pigeon” to the mark DOVE, the terms were
found to be not exact synonyms. In comparing these two marks, it was held that
“the Board must apply an equally stringent test in judging similarity of meaning
between a foreign word (paloma) and an English word (dove) as it would
between two English words (e.g. pigeon and dove).” Id.
The Applicant further asserts that the multiple meanings of the Spanish
word “tattoo” reduce the strength of the “similarity of connotation” between the
TATUAJE mark and the TATTOO mark. The Applicant asserts that the strength
of the “similarity of connotation” between these marks and the overall analysis of
the likelihood of confusion between these marks therefore at least involves
disputed facts concerning the translation that a consumer would use when
viewing the TATUAJE mark, if in fact such a translation is even made.
- 11 -
troops as evening entertainment.” VERB “transitive verb: to beat or rap
rhythmically on: drum on. intransitive verb: to give a series of rhythmic taps”. In
addition, the final definitions are “1 : the act of tattooing : the fact of being
tattooed 2 : an indelible mark or figure fixed upon the body by insertion of
pigment under the skin or by production of scars.” Affidavit of Alberto Gutman,
Exhibit A, Paragraph 17.
- 12 -
ends in an “ah” sound while the second syllable of “tattoo” clearly ends in an ‘oo”
sound.
The Applicant admits that the sound of a mark is not generally limited to the
common pronunciation of a word. However, the Applicant asserts that under the
Doctrine of Foreign Equivalents, the consumer is recognizing a foreign word and
translating it to its English equivalent. The Applicant asserts that in recognizing
this translation, a speaker of the foreign language is very likely to place in his or
her mind the common pronunciation of a foreign word to be translated than would
the case when comparing marks based on English or coined terms.
With regards to similarity of sight, the Applicant asserts that TATUAJE and
TATTOO are quite different in sight as is readily noticed by observation. The
Opposer only asserts that the first syllables of the two words, which only contain
three (3) letters, are similar in sight. Opposers Motion for Summary Judgment,
page 8, penultimate paragraph, section “ii.” The remaining four (4) letters of
TATUAJE, over half of the Opposer’s mark, therefore differ from the remaining
three (3) letters of TATTOO.
C. Unclean Hands
1) Opposer’s use of “Puros Cubanos,” in close proximity to and in
conjunction with the “Tatuaje” mark on their product unfairly deceives
consumers to believe that Opposer’s product is a “Pure Cuban” tobacco
cigar product.
Opposer has been using its mark TATUAJE in connection with its cigar
products, on information and belief as early as its date of its application for
trademark registration of the mark in the USPTO, and currently continues to
- 13 -
similarly use its mark, in close proximity to and in conjunction with the words
“Puros Cubanos”, as shown in the attached Exhibits F, I and L. Affidavit of
Alberto Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, l,
and L.
The photo images shown in Exhibits F, I and L represent views of the Opposer’s
cigar box as offered for sale and sold by Opposer at least as early as the year
2006. Exhibit F shows a photo image of Opposer’s cigar box as currently offered
for sale and sold by a local cigar retail store in Miami. Affidavit of Alberto
Gutman, Exhibit A, paragraphs 23, 26 and 27; and see also Exhibits F, I, and L.
As illustrated in Exhibits F, I, and L, the words “Puros Cubanos” are prominently
visible in close proximity to the Opposer’s mark TATUAJE on the same side of
the cigar box containing Opposer’s cigars. Note in particular that the photo
image shown in Exhibit I also includes a signature on the box. This is the
signature of Peter Johnson who was the applicant and registrant of the
trademark TATUAJE.
- 14 -
believe that Opposer’s product sold under the trademark TATUAJE is a “Pure
Cuban” tobacco cigar product. That is, the trademark TATUAJE located in close
proximity to the words “PUROS CUBANOS” is aimed by Opposer to deceive
customers and consumers regarding the geographic origin, character, quality,
composition, and/or source of the Opposer’s cigars sold under the trademark
TATUAJE. This continuous deceptive, or deceptively misdescriptive, use by
Opposer of its mark TATUAJE for at least nearly four years (since 2006 to
present), precludes Opposer from seeking relief from this Board under the
equitable doctrine of “unclean hands”.
2) Opposer’s use of the stylized “tobacco leaf stick” logo, also used in
conjunction with the term “Puros Cubanos”, and in close proximity to and
in conjunction with the “Tatuaje” mark on their product, unfairly deceives
consumers to believe that Opposer’s product is a “Pure Cuban” tobacco
cigar product from Cuba.
Opposer has been using its mark TATUAJE in connection with its cigar
products as early as 2006, and currently continues to similarly use its mark, in
close proximity to and in conjunction with a “tobacco leaf stick” logo, as shown in
the attached Exhibits F, I, and L. Affidavit of Alberto Gutman, Exhibit A,
paragraphs 23, 26 and 27, describing Exhibits F, I and L. In the photo images
shown in Exhibits F, I, and L, the “tobacco leaf stick” logo is prominently visible
(on the left side of the words “Puros Cubanos”) in close proximity to the
Opposer’s mark TATUAJE on the same side of the cigar box containing
Opposer’s cigars. Id.
- 15 -
paper dated November 22 and 23, 2007, and presented by Mr. Adargelio Garrigo
de la Grana, who was at the time the legal Director of Habanos, S.A., and the
trademark attorney for Cubatabaco, a governmental enterprise of the Cuban
Government, and a 50% owner of Habanos, S.A. This paper details the Cuban
Government’s trademark strategy to certify legitimate use of its most valuable
trademarks used in connection with sales of Cuban tobacco cigars. The Cuban
Government’s certification mark includes the stylized “tobacco leaf stick” logo
trademark. It also includes the word HABANOS. Declaration of Jose Gutman,
Exhibit M, paragraph 2; and see also Exhibit N, for example at bottom of page 4,
and also see page 6, fourth paragraph. The paper, on page 6, fourth paragraph,
refers to the stylized “tobacco leaf stick” logo trademark as the “tobacco leaf of
Vuelta Abajo appellation of origin, the best in the world.” See also Exhibit R,
which shows an example of the stylized “tobacco leaf stick” logo as registered by
HABANOS, S.A., in USPTO Registration No. 2,177,837. Affidavit of Alberto
Gutman, Exhibit A, paragraph 29. See also Exhibit S which shows an example
of the Cuban Government’s use of its certification mark in close proximity and in
conjunction with one of its valuable tobacco cigar trademarks. Affidavit of Alberto
Gutman, Exhibit A, paragraph 29.
The indication of the stylized “tobacco leaf stick” logo mark to the left of
the words “PUROS CUBANOS” on Opposer’s cigar box and in close proximity to
Opposer’s trademark TATUAJE is that the cigars contained in the box and sold
under the trademark TATUAJE are “Pure Cuban” tobacco cigars. That is, the
Opposer sells its Tatuaje cigars as pure Cuban tobacco cigars from Cuba.
Opposer’s cigars sold in the box under the trademark TATUAJE are not “Pure
- 16 -
Cuban” tobacco cigars. These cigars are not from Cuba. Affidavit of Alberto
Gutman, Exhibit A, paragraph 28.
- 17 -
Opposer’s specimen of actual use of its mark TATUAJE that was
submitted to the USPTO was required to show Opposer’s actual use of its mark
in connection with its tobacco cigar box. Opposer’s specimen of actual use of its
mark TATUAJE in connection with Opposer’s tobacco cigar box did not show the
“tobacco leaf stick” logo or the words “PUROS CUBANOS”. Declaration of Jose
Gutman, Exhibit M, paragraph 3; and see also Exhibit P.
- 18 -
TATUAJE in connection with the cigar box. The signed Declaration warned Mr.
Peter Hassell Johnson that
“willful false statements and the like so made are punishable by fine
or imprisonment, or both, under 18 U.S.C. Section 1001, and that
such willful false statements, and the like, may jeopardize the
validity of the application or any resulting registration, . . .; and that
all statements made of his/her own knowledge are true; and that all
statements made on information and belief are believed to be true.”
See also Exhibit Q.
- 19 -
goods and services was not a “verified statement" of goods and services such as
in a statement of use.).
- 20 -
Exhibit Index
I hereby certify that a true and complete copy of the foregoing APPLICANT’S
served on Brennan C. Swain by mailing said copy on March 4, 2009, via First Class
- 21 -
Exhibit A: Affidavit of Alberto Gutman
Exhibit B: Affidavit of Alphonso Alvarez, Rolando Guttierez,
and Mauricio Martinez
Exhibit C: Merriam-Webster Dictionary Entry for “Tattoo”
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo
Also Visit: Unabridged Visual Britannica Online Encyclopedia ESL: Learner's for Kids: Word Central Spell It!
Florida Tatoo
Find tatoo here. We offer local search in your state
florida.local.com
Tribal Tattoo
Looking for a Specialty Tattoo? We Have the Best Selection
www.chopper-tattoo.com
Tattoo Images
Looking for tattoo images? Find tattoo designs and pictures.
TatGuy.com
Pronunciation Symbols
MLA Style
"tattoo." Merriam-Webster Online Dictionary. 2009.
Merriam-Webster Online. 3 March 2009
1 of 2 3/3/2009 6:16 PM
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo
<http://www.merriam-webster.com/dictionary/tattoo>
APA Style
tattoo. (2009). In Merriam-Webster Online Dictionary.
Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo
Products Premium Services Company Info Contact Us Advertising Info Privacy Policy
© 2009 Merriam-Webster, Incorporated
2 of 2 3/3/2009 6:16 PM
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B3%5D
Also Visit: Unabridged Visual Britannica Online Encyclopedia ESL: Learner's for Kids: Word Central Spell It!
Florida - Tatoo
Looking for Tatoo in Florida? Find it here!
www.local.com
Tattoo Images
Looking for tattoo images? Find tattoo designs and pictures.
TatGuy.com
Tattoo Designs
Free Tattoo Designs Largest Database Worldwide.
www.tattoofinder.com
Pronunciation Symbols
MLA Style
"tattoo." Merriam-Webster Online Dictionary. 2009.
Merriam-Webster Online. 3 March 2009
<http://www.merriam-webster.com/dictionary/tattoo>
1 of 2 3/3/2009 6:19 PM
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B3%5D
APA Style
tattoo. (2009). In Merriam-Webster Online Dictionary.
Retrieved March 3, 2009, from http://www.merriam-webster.com/dictionary/tattoo
Products Premium Services Company Info Contact Us Advertising Info Privacy Policy
© 2009 Merriam-Webster, Incorporated
2 of 2 3/3/2009 6:19 PM
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B2%5D
Also Visit: Unabridged Visual Britannica Online Encyclopedia ESL: Learner's for Kids: Word Central Spell It!
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Explore your world in exciting new ways with
Florida Tatoo Merriam-Webster's Visual Dictionary Online.
Pronunciation Symbols
MLA Style
"tattoo." Merriam-Webster Online Dictionary. 2009.
Merriam-Webster Online. 3 March 2009
<http://www.merriam-webster.com/dictionary/tattoo>
APA Style
1 of 2 3/3/2009 6:20 PM
tattoo - Definition from the Merriam-Webster Online Dictionary http://www.merriam-webster.com/dictionary/tattoo%5B2%5D
Products Premium Services Company Info Contact Us Advertising Info Privacy Policy
© 2009 Merriam-Webster, Incorporated
2 of 2 3/3/2009 6:20 PM
Exhibit D: REAL DICCIONARIO – “Tatuaje”
Real Academia Española. Diccionario Usual. Page 1 of 1
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Real Academia Española © Todos los derechos reservados
http://buscon.rae.es/draeI/SrvltGUIBusUsual?TIPO_BUS=1&LEMA=tatuaje 2/23/2009
Exhibit E: Wordreference.com English-Spanish entry for
“Tattoo”
tattoo - English-Spanish Dictionary - WordReference.com Page 1 of 1
Links:
Abreviaturas
Pron. Symbols From the WordReference Supplement © 2009 WordReference.com:
Como buscar tattoo:
Foros
Apoyar WR Compound Forms:
Hacer enlace a WR
tattoo artist nm tatuador
Añadir WR a
favoritos tattoo artist nmf artista del tatuaje
Suggestions Report an error.
Subscribers: Log In
http://www.wordreference.com/es/translation.asp?tranword=tattoo 2/23/2009
Exhibit F: Pictures of Opposer’s TATUAJE Cigar Box
Exhibit G: Receipt for box of TATUAJE cigars
Exhibit H: REAL DICCIONARIO – “Puro” and “Natural de
Cuba”
Real Academia Española. Diccionario Usual. Page 1 of 2
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http://buscon.rae.es/draeI/SrvltObtenerHtml?origen=RAE&LEMA=puro&SUPIND=0&CA... 3/4/2009
Real Academia Española. Diccionario Usual. Page 2 of 2
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Real Academia Española © Todos los derechos reservados
http://buscon.rae.es/draeI/SrvltObtenerHtml?origen=RAE&LEMA=puro&SUPIND=0&CA... 3/4/2009
Real Academia Española. Diccionario Usual. Page 1 of 1
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Real Academia Española © Todos los derechos reservados
http://buscon.rae.es/draeI/SrvltGUIBusUsual?LEMA=cubano&origen=RAE 3/4/2009
Exhibit I: Internet Advertisement for TATUAJE cigars
Exhibit J: Listing of Applicant’s Trademark Applications and
Registrations
Record List Display http://tess2.uspto.gov/bin/showfield?f=toc&state=4010%3Arl7e85.1.1&p...
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Exhibit K: Trademark Examiner’s search for subject
Application “Tattoo”
*** User:mpappas ***
# Total Dead Live Live Status/ Search
Marks Marks Viewed Viewed Search
Docs Images Duration
01 13070 N/A 0 0 0:04 *tat${"oue"}*[bi,ti] and live[ld]
02 585 N/A 0 0 0:03 tat${"oue"}*[bi,ti] and live[ld]
03 84 0 84 52 0:02 2 and "034"[cc]
04 372 N/A 0 0 0:01 *tat$oo*[bi,ti] and live[ld]
05 415 N/A 0 0 0:02 *tat$u*[bi,ti] and live[ld]
06 24 0 24 18 0:01 *tat$ew*[bi,ti] and live[ld]
07 159 0 159 92 0:02 (4 5) and "034"[cc]
08 22 0 22 12 0:02 tattoo[fm] and live[ld]
Session started 3/31/2008 2:17:46 PM
Session finished 3/31/2008 2:24:40 PM
Total search duration 0 minutes 17 seconds
Session duration 6 minutes 54 seconds
Defaut NEAR limit=1ADJ limit=1
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Exhibit M: Declaration of Jose Gutman
Exhibit N: Habanos S.A. Trademark Strategy paper by
Adargelio Garrido de la Grana
Habanos SA:
Trademarks and GIs
Working together
I. ITRODUCTIO
That is, the geographical indications and trademarks reach the market together,
through a product which promotes the coincidence of both.
1
Now, I will present our experience in managing the trademarks and appellations of
origin of Cuban cigars, with regard to creating a single product identity.
The origin of Habanos can be traced back to 1492, when Christopher Columbus
arrived on the shores of the large island of Cuba.
1492 is certainly a celebrated year in World History, but particularly for us, the Great
Discovery was the Habano.
Habanos, at that time, consisted on tobacco leaves roughly rolled into a shape and the
Indians called it “Cohiba”. These cigars were smoked by the natives; being the
“Cohibas” the ancestors of the Habanos.
The characteristic of the soil is one of these factors. It plays a key role in the
differentiation of this product.
The varieties in the kinds of Cuban black tobacco are others. It is very important
in the differentiation of the Habano.
Other and a very important element is the climate, which is a result of Cuba’s
geographical location. Climatic conditions also influence in the cigar-manufacturing
process. Many people even say that the Habanos you smoke in Cuba taste different
from the ones you smoke elsewhere.
The last factor is the know-how of our farmers and cigar-makers, with the latter
creating veritable masterpieces.
It has been proved that, when one of these factors is missing, it’s impossible to make
a Habano.
The long filler: the inner part, which it is a blend of three leaves with three different
characteristics:
The binder: this leaf secures and wraps the long filler leaves. Long filler and binder
together form the “Bunche”.
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The wrapper: this leaf dresses the Habano and determines its appearance.
2.1.1 Measures to protect the prestige of the cigar coming from Cuba
In view of the recognized prestige of the tobacco coming from Cuba, in the early of
XIX Century, the international tobacco market began to be invaded by different
kinds of products that used names of Cuban origin in one way or another.
Therefore, ever and since the last century, Cuban cigar-makers have included the
word “Habana” in the design and advertising of all their trademarks, so that the
origin of the well-known cigars in the world would be recognized.
For its part, the word “Habano”—the term used for the very best cigars made in
Cuba—stemming from “Habana.” It began to be used in the Spanish-speaking
countries in the 1920s.
Early in the 20th century, Cuban authorities—aware of the danger— they began
taking measures to protect this product. They include the following:
the creation of the National Warranty Seal of Origin, in 1912, to protect the
product’s Cuban origin;
the creation of the National Commission of Advertising and the Defense of
Habano Cigars, in 1927;
the signing of bilateral agreements with several countries to protect our
appellations, among them, those signed with France and Germany—which are
still in force—and especially important;
the creation of the Revista Tabacalera Habano (Habano Cigar Magazine), in
1935; in addition to containing the name “Habano” in its title, this publication
has always used this term when referring to Cuban cigars; and
the protection of 18 appellations of origin—including Cuba, Habana, Habanos,
Vuelta Abajo, San Luis, San Juan y Martínez, Vuelta Arriba, Remedios, El
Corojo and Cuchillas de Barbacoa, according to the Lisbon Agreement.
The Cuba’s decision for signing the Lisbon Agreement was a key for the protection
of our intangible assets, because, even though the Agreement has a limited operating
range, being a signatory of it implies respect and recognition, even, in non-member
countries.
Since the above was proved insufficient, a legal offensive to protect our products’
appellations of origin begun in 1981. Lawsuits were brought to Europe, our main
3
market, because many infringing products were sold there. Now, we are bringing
suits in other continents, as well. We concentrate on the well-known appellations of
origin (Cuba, Habanos, Habana and Vuelta Abajo).
The first lawsuit we brought was in France, on February 17, 1981. It was against the
Neos Handzame Company, from Belgium, due to the sales of Cubanitos trademark
cigars in France.
We have also brought other lawsuits in Belgium, France, Germany and Spain. The
most important ones were the suits we won against Gloria de Cuba and Wilde
Havana trademarks. The latter had the largest sales on the non premium market.We
also obtained favorable decisions in France, with courts ordering Aramis to withdraw
its Havana trademark of perfume as well as another company that was using in
perfume the denomination Cuba.
Along with the lawsuits, a marketing strategy was drawn up in the ’80s for
supporting and complementing our efforts to obtain legal protection.
Our first decision was to establish our communications strategies based on the
Habano appellation of origin, the reasons are as follows:
From the communications point of view and as one more steps along the path toward
consolidating the corporate image of the product, in 1991 it was decided to unify the
various versions of the logo and design for Habano that existed in other languages
and to use just one: Habanos. Thus, from then on, Habanos logo has the same image
all over the world.
This meant to make two changes at the same time. One was to eliminate the word
“cigar”; the other was to use the Spanish term “Habanos.” The transition from the
translation to the Spanish term was to be made over a period of up to ten years.
4
Since that period, we have established a unique corporate image
of our Appellation of Origin Habanos: The Smoke image.
At the end of this year 2007 it will be create the Consejo Regulator of the Habanos
Appellation of Origin and the other Cuban Tobacco Appellations of Origin, which
will agglutinate all the physical and juridical peoples that are part of the agricultural
and industrial chain of the Habanos, in order to developing even more the this
appellation of origin.
The first Cuba cigar private factory was established in 1796. Very soon the quantity
of small workshops for making cigars increased.
In the 1830-40’s these small factories became prosperous workshops, which were
frequently visited by agents and traders of New York, Philadelphia, London, Paris,
Hamburg, among others, requesting large quantities of the famous Habano.
The end of the Spanish Monopoly propitiated a boom in the cigar business. Being the
property of individuals, the workshops started to diversify their offers, trying to
please the large demand for Cuban cigars. This period marks the origin of the first
Habano trademark: “Hijas de Cabañas & Carvajal”.
According to the period of creation, we can classify our trademarks in two groups:
According to the importance in the market, for several years, we have classified the
32 trademarks that we sell in that moment—keeping in mind how well known they
are and their market presence—as follows:
Global trademarks. This group of trademarks includes the ones that are present all
over the world. They are Cohiba, Montecristo, Romeo y Julieta, Partagás, Hoyo
de Monterrey, H.Upmann and José L. Piedra.
Multilocal trademarks. These trademarks you may find them in most of countries.
They are: Bolivar, Fonseca, Guantanamera, H. Upmann, Punch, Vegas Robaina
and Quintero.
5
Local trademarks. These trademarks are found in just a few countries. They
include Por Larrañaga, Cabañas, Belinda, Sancho Panza, Los Status De Luxe,
Troya, La Gloria Cubana, J. Cano, Quai D’Orsay, Juan Lopez, Rafael
González, Vegueros, Diplomáticos, Ramón Allones, San Luis Rey and Gispert.
iche trademarks. These are trademarks that were created recently and they were
given a special treatment, for allowing us to become them well known trademarks.
We include in this group Trinidad, which is a name of a Cuban city and UNESCO
has declared thereof as a part of world heritage; Cuaba, is the name of a Cuban tree
that catches fire easily and it was used by the Cuban Indians for lighting their pipes
(cojibas or cohibas); and San Cristóbal de La Habana, which bears our capital’s
first name.
Bearing in mind that we are talking about a large number (32) of trademarks, our
best resources are used to invest mainly in promoting those that are in the global and
niche groups. The trademarks include in the multilocal and local groups are promote
by our distributors.
All the above mentioned Habanos trademarks are made with tobacco leaf of Vuelta
Abajo appellation of origin, the best in the world. These trademarks are considered as
premium cigar trademarks.
Taking into account the notoriety of our brands there is in the market much kind of
infringements. Infringements come in the form of both registration requests and use
in certain countries. In both cases, we find trademarks that are the same or similar to
ours, either phonetically or in terms of image.
Among all our trademarks, Cohiba although it is the most well-known trademark of
cigars in the world, it is, without any doubt, the most frequently attacked. Many
courts and patent offices have recognized that this trademark is well known, and, in
many cases, they have declared it as a renown trademark..
For example:
Similar Words
The request filed in the Dominican Republic to protect the name “Cojimar” in Class
34 and “Chibas” in class 25 in Spain are an example of a request to register a word
similar to “Cohiba.”
Similar Designs
There are many examples of requesting for or the uses of the design of the Cohiba
trademark for other appellations, for example, the use of the word Espléndidos, for a
German restaurant, which we finally came to an agreement.
Cohiba is a cigar trademark in which most of companies try to register or use in all
kinds of products and services.
6
Foreign courts (in Spain, France, Dominican Republic, Mexico and Taiwan…) have
recognized that COHIBA is a well known trademark. But, the main Decision was the
judgment of the Southern District Court of New York on March 6, 2004, because
COHIBA was recognized as a well known trademark in the United States even when
it never was sold in that market because of blockade regulations.
Another infringement that it has become quite common in some markets in recent
years is the marketing of counterfeit products.
The most import thing to take into consideration in this kind of infringement is that
when somebody uses a trademark linked with an appellation of origin, it is also
counterfeiting the appellation of origin.
Just to finish, I would like to talk about Who Influences to Whom? Does the
Trademark Influence the Geographical Indication, or vice versa?
The case would be different if the trademark was born outside the area protected by
the geographical indication—or even in a group of products different from those
protected by the geographical indications—and then were added to the products
protected by it.
Naturally, when I say that the trademark is largely boosted by the geographical
indication, this is not absolute, because we cannot forget the role that marketing
plays in the birth of a new trademark. If a trademark that is protected by a
geographical indication is launched on the market without a good marketing strategy,
it is doomed to failure. We have examples of this, too:
Siboney (named for one of the three Cuban tribes of Indians and also for a famous
song written by the Cuban composer Ernesto Lecuona)
For certain strategic reasons, the names of these two trademarks didn’t stick in
clients’ minds; as a result, they are no longer sold.
So, according to our experience, these kind of products with a connection between
Trademarks and Geographical Indications, should have very linked both strategies: It
means, the Trademark strategy and the Geographical Indication strategy.
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That is the reason why, from the point of view of communication, we will continue
in two ways: (1) to maintain our institutional campaigns (dedicated only to the
Appellation of Origin Habanos) and (2) advertising our trademarks including the
Appellation of Origin Habanos’ stick. So, when we communicate trademarks we also
communicate the Habanos Appellation of Origin and the same in the contrary way.
On the other hand, as I already said, we always use the same logo of our Habanos
Appellation of Origin in all of our packaging, because the product is the most
important advertising.
8
Exhibit O: Tatuaje Record at USPTO Website
United States Patent and Trademark Office
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Typed Drawing
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Exhibit Q: Tatuaje Application at USPTO
Document Description: Application
Mail / Create Date: 15-Jun-2003
TRANSLATION
The foreign wording in the mark translates
into English as Tattoo.
SIGNATURE INFORMATION
SIGNATURE /peterhjohnson/
SIGNATURE DATE 06/15/2003
SIGNATORY NAME Peter Hassell Johnson
SIGNATORY POSITION Owner
PAYMENT
NUMBER OF CLASSES 1
NUMBER OF CLASSES PAID 1
SUBTOTAL AMOUNT 335
TOTAL AMOUNT 335
RAM SALE NUMBER 548
RAM ACCOUNTING DATE 06/16/2003
FILING INFORMATION
SUBMIT DATE Sun Jun 15 18:28:39 EDT 2003
USPTO/BAS-663112153-
20030615182839079046
TEAS STAMP
-78262622-200e27841c
4eadbc4847f6176cb4e2
f2e-CC-548-200306151
81333375426
PTO Form 1478 (Rev 4/2000)
OMB Control #0651-0009 (Exp. 08/31/2004)
MARK: TATUAJE
The applicant, Peter, HassellJohnson, a citizen of United States, residing at Unit # 204, 1025 North
Kings Road, West Hollywood, CA USA 90069, requests registration of the trademark/service mark
shown on the drawing page in the United States Patent and Trademark Office on the Principal Register
established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended.
The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists
below the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in
interest, of the mark on or in connection with the identified goods and/or services. 15 U.S.C. Section
1051(a), as amended.
In International Class : the mark was first used at least as early as 05/27/2003, and first used in
commerce at least as early as 05/27/2003, and is now in use in such commerce. The applicant is
submitting or will submit one specimen for each class showing the mark as used in commerce on or in
connection with any item in the class of listed goods and/or services, consisting of a(n) Tatuaje Cigar
box lid and cigar band..
Specimen - 1
A fee payment in the amount of $335 will be submitted with the application, representing payment for
1 class(es).
Declaration
The undersigned, being hereby warned that willful false statements and the like so made are
punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false
statements, and the like, may jeopardize the validity of the application or any resulting registration,
declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she
believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the
application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to
use such mark in commerce; to the best of his/her knowledge and belief no other person, firm,
corporation, or association has the right to use the mark 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 to cause mistake, or to deceive; and that all
statements made of his/her own knowledge are true; and that all statements made on information and
belief are believed to be true.
Mailing Address:
Johnson, Peter, Hassell
Unit # 204
1025 North Kings Road
West Hollywood, CA 90069
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Exhibit T: Photo Image of Bottom of TATUAJE Cigar Box