Almost four years to the date, the TTAB sustained an opposition to register the mark GUANTANAMERA for cigars for the second time, finding the mark primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act. To deny a geographic mark protection, the USPTO must establish that (1) the mark misrepresents or misdescribes the goods, (2) the public would likely believe the misrepresentation, and (3) the misrepresentation would materially affect the public’s decision to purchase the goods.
In initially sustaining the opposition in 2008, the Board found that the primary meaning of the term “Guantanamera” is “of or from Guantanamo, Cuba” or “a female from Guantanamo” and that tobacco is grown in the Guantanamo region. The Board also found that consumers are likely to believe that there is a goods-place association between cigars and Guantanamo, Cuba, and that the “goods-place association created by applicant’s mark with Cuba is material in a consumer’s decision to purchase applicant’s cigars.” Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473 (TTAB 2008). The Applicant, Guantanamera Cigars, Co., appealed to the U.S. District Court for the District of Columbia, who disagreed with the Board’s treatment of the third prong of the geographically deceptively misdescriptive test, stating that the Board “erred as a matter of law in applying the materiality requirement.”Guantanamera Cigar Co. v. Corporacion Habanos, S.A., 729 F. Supp. 2d 246 (D.D.C. 2010).
On remand, the issue was whether “a significant portion of the relevant consumers would be materially influenced in the decision to purchase the cigars by the geographic meaning of the mark.”Guantanamera Cigars, 86 USPQ2d 1473. The Board weighed over three thousand pages of additional evidence from the parties on this one issue of materiality to essentially come to the same conclusion it had in 2008: The relevant consumers, Spanish speaking adults, are likely to believe Applicant’sGUANTANAMERA cigars come from Cuba and it would materially affect their purchasing decisions. A copy of the TTAB decision can be found here: http://ttabvue.uspto.gov/ttabvue/ttabvue-91152248-OPP-178.pdf