The U.S. District Court for the District of Columbia recently held that the Trademark Trial and Appeal Board (TTAB) erred as a matter of law in applying the three-part test for primarily geographically deceptively misdescriptive marks. Guantanamera Cigar Co. v. Corporacion Habanos, S.A., Civil Action No. 08-0721 (RCL), 2010 WL 3035750 (D.D.C., August 5, 2010) reversing and remanding the prior TTAB decision in Corporacion Habanos, S.A. v. Guantanamera Cigar Co., 86 USPQ2d 1473 (TTAB 2008) [precedential].
The underlying TTAB action was an opposition filed by Corporacion Habanos (Habanos), a Cuban cigar company with many cigar brands, including GUANTANAMERA registered in many countries around the world. Habanos’ 2002 U.S. application for GUANTANAMERA is suspended because of a prior application by Guantamera Cigar Company (GCC) for the identical mark. Habanos opposed the GCC application arguing that the mark was primarily geographically deceptively misdescriptive and, therefore, barred from registration. The TTAB agreed and refused registration. GCC appealed to the District Court for de novo review.
The District Court found that the TTAB followed the correct three-part test providing that a mark is “primarily geographically deceptively misdescriptive” if:
- the primary significance of mark is a generally known geographic location,
- the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and
- the misrepresentation was a material factor in the consumer’s decision.
Guantanamera Cigar Co., 2010 WL 3035750 at *4. Under this test, the Court opined that there was sufficient evidence in the record to find that Guanatamo, Cuba is the primary significance of “GUANTANAMERA” and that there was sufficient evidence to find that the consuming public is likely to believe that GCC’s cigars originate in Cuba. However, the Court held that the TTAB failed to properly apply part 3 of the test, because Habanos never established a prima facie case that a significant portion of the relevant consumers would be materially influenced in the decision to buy GCC’s cigars because of the geographic meaning. Echoing last year’s Spirits case before the Federal Circuit, In re Spirits International N.V., 563 F.3d 1347, 1350-51 (Fed. Cir. 2009) in which the mark MOSCOVSKAYA was held not geographically deceptively misdescriptive because Moscow’s well-known reputation for vodka was not enough to support a conclusion that a significant portion of the relevant consumers would be materially influenced, the Court here found Cuba’s well-known reputation for cigars is not enough to infer influence on a significant portion of the relevant consumers.
The case was remanded to the TTAB to reconsider the third part of the test under the proper standard.
Originally published in the INTA Bulletin.