To: El Centauro de Oro, Ltda. (adoppelt@addmg.

com)
Subject: TRADEMARK APPLICATION NO. 77497173 - PINAR DEL RIO 1941 -
47583
Sent: 8/14/2008 7:30:39 PM
Sent As: [email protected]
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4
Attachment - 5

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/497173

MARK: PINAR DEL RIO 1941

*77497173*
CORRESPONDENT ADDRESS:
AVA K. DOPPELT RESPOND TO THIS ACTION:
ALLEN, DYER, DOPPELT, MILBRATH & http://www.uspto.gov/teas/eTEASpageD.htm
GILCHRI
255 S ORANGE AVE STE 1401 GENERAL TRADEMARK INFORMATION:
ORLANDO, FL 32801-3460 http://www.uspto.gov/main/trademarks.htm

APPLICANT: El Centauro de Oro, Ltda.

CORRESPONDENT’S
REFERENCE/DOCKET NO:
47583
CORRESPONDENT E-MAIL ADDRESS:
[email protected]

OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 8/14/2008

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant
must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62,
2.65(a); TMEP §§711, 718.03.

SEARCH RESULTS
The Office records have been searched and no similar registered mark has been found that would bar
registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. However, please
be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to
registration.

Information regarding pending Application Serial No. 77428932 is enclosed. The filing date of the
referenced application precedes applicant’s filing date. There may be a likelihood of confusion between
the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application
registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et
seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended
pending final disposition of the earlier-filed application.

If applicant believes there is no potential conflict between this application and the earlier-filed
application, then applicant may present arguments relevant to the issue in a response to this Office
action. The election not to submit arguments at this time in no way limits applicant’s right to address
this issue at a later point.

SECTIONS 2(a) AND 2(e)(3) REFUSAL – GEOGRAPHICALLY DECEPTIVE AND

PRIMARILY GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
Registration is refused because the applied-for mark consists of or includes geographically deceptive
and primarily geographically deceptively misdescriptive matter in relation to the identified goods and/or
services. Trademark Act Sections 2(a) and 2(e)(3), 15 U.S.C. §1052(a), (e)(3); see In re Les Halles De
Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003); In re Cal. Innovations Inc., 329 F.3d
1334, 66 USPQ2d 1853 (Fed. Cir. 2003), In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed.
Cir. 1988); TMEP §§1210, 1210.01(b)-(c).

A mark is geographically deceptive and primarily geographically deceptively misdescriptive if the

following is shown:

(1) The primary significance of the mark is a generally known geographic place or
location;

(2) The goods and/or services for which applicant seeks registration do not originate
in the geographic place identified in the mark;

(3) Purchasers would be likely to make a goods-place or services-place association;

that is, purchasers would be likely to believe that the goods and/or services originate in
the geographic place identified in the mark; and

(4) The misrepresentation regarding the geographic origin of the goods and/or
services is material to the purchaser’s decision to buy the goods or use the services in
question.
In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003); In re
Cal. Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1859 (Fed. Cir. 2003); TMEP
§1210.01(b)-(c). In the present case, the applicant seeks to register the mark “PINAR DEL RIO 1941”
for cigars. The dominant portion of the mark is the term “PINAR DEL RIO.” The term comprises the
majority of the wording of the mark and prominently displayed over the smaller and informational date
“1941.” Therefore, the portion of the mark which creates the primary significance of the mark is the
term “PINAR DEL RIO.” Pinar Del Rio refers to a province and a city in Cuba. The city is located in a
major tobacco-growing area and is a center of the cigar industry. See attachment.

The province relies on tobacco farming, with Pinar del Río producing 70% of Cuba's
crop, used to make the cigars that are prized overseas. The best tobacco, used for more
expensive cigar brands, is grown in the flat lands of San Juan y Martinez.

The applicant is located in Cost Rica, and the applicant’s specimen of use indicates that the applicant’s
cigars are made in Costa Rica. Given the world-wide fame of Cuban cigars in general and cigars from
Pinar Del Rio in particular, consumers are likely to come to the mistaken belief that the applicant’s
goods come from Pinar Del Rio, Cuba. Furthermore, The misrepresentation regarding the geographic
origin of the cigars will be material to the purchaser’s decision to buy the goods. The examining
attorney has attached evidence which states the following.

Cuban cigars are regarded as one of life’s most indulgent luxuries. Each year their
production falls far short of the worldwide demand for these premium vitolas. They are
highly sought after by both the aficionado and the novice, and as a result, they routinely
cost in excess of $20 US dollars for a single double corona.

Evidence of goods-place association need only show a reasonable basis for concluding that the public is
likely to believe the mark identifies the place from which the goods originate. In re Cal. Innovations
Inc., 329 F.3d 1334, 1338, 66 USPQ2d 1853, 1855 (Fed. Cir. 2003) (quoting In re Loew’s Theatres, Inc.
, 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985)). Thus, to make a goods-place association,
case law permits an inference that the consumer associates the product with the geographic location
because that place is known for producing the product. See id. However, the goods-place association
must also be material to a consumer’s purchasing decision in geographically deceptive and
geographically deceptively misdescriptive refusals. In re Cal. Innovations, 329 F.3d at 1340-41, 66
USPQ2d at 1857-58; TMEP §1210.05(b).

Materiality is shown when one of the following is satisfied by the evidence of record: (1) the goods in
question are a principal product of the place named in the mark, (2) the place is noted for or renowned
for such goods, or (3) the goods are, or are related to, the traditional products of the place named in the
mark. See In re Cal. Innovations, 329 F.3d at 1341, 66 USPQ2d at 1857; In re Save Venice N.Y., Inc.,
259 F.3d. 1346, 1352, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001); In re Wada, 194 F.3d 1297, 1300, 52
USPQ2d 1539, 1540-41 (Fed. Cir. 1999); In re Loew’s Theatres, 769 F.2d at 768, 226 USPQ at 868; In
re House of Windsor, Inc., 221 USPQ 53, 56-57 (TTAB 1983); TMEP §1210.05(b)(i).

The fact that the mark contains the date “1941” does not obviate the refusal. Geographically deceptive
and primarily geographically deceptively misdescriptive matter need not be the entire mark, or even the
dominant portion of the mark. See 15 U.S.C. §1052(a), (e)(3); TMEP §1210.06(b). A refusal under
Trademark Act Section 2(a) or 2(e)(3) is appropriate if some portion of the applied-for mark is
geographically deceptive and primarily geographically deceptively misdescriptive with respect to the
goods and/or services in question. See e.g., Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid
Soc’y, 224 USPQ 798, 808 (TTAB 1984); see TMEP §1210.06(b).

Please note, that disclaiming the geographically deceptive and primarily geographically deceptively
misdescriptive word or term in a mark will not obviate a geographically deceptive and primarily
geographically deceptively misdescriptive refusal. In re Perry Mfg. Co., 12 USPQ2d 1751, 1751-52
(TTAB 1989); TMEP §1210.06(b).

If the applicant wishes to reply, the applicant must also address the following informalities

ORIGIN OF GOODS
The applicant must provide a written statement explaining whether the goods are or will be
manufactured, packaged, shipped from, sold in or have any other connection with the geographic
location named in the mark. See 37 C.F.R. §2.61(b); TMEP §1210.03.

/Geoffrey Fosdick/
Geoffrey Fosdick
Trademark Attorney
Trademark Office 111
(571) 272-9161

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the
form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received
notification of the Office action via e-mail. For technical assistance with the form, please e-mail
[email protected]. For questions about the Office action itself, please contact the assigned examining
attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed
responses.

If responding by paper mail, please include the following information: the application serial number, the
mark, the filing date and the name, title/position, telephone number and e-mail address of the person
signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial
filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online
system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of
the complete TARR screen. If the status of your application has not changed for more than six months,
please contact the assigned examining attorney.
To: El Centauro de Oro, Ltda. ([email protected])
Subject: TRADEMARK APPLICATION NO. 77497173 - PINAR DEL RIO 1941 -
47583
Sent: 8/14/2008 7:30:40 PM
Sent As: [email protected]
Attachments:

IMPORTANT NOTICE
USPTO OFFICE ACTION HAS ISSUED ON 8/14/2008 FOR
APPLICATION SERIAL NO. 77497173

Please follow the instructions below to continue the prosecution of your application:

VIEW OFFICE ACTION: Click on this link

http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77497173&doc_type=OOA&mail_date
(or copy and paste this URL into the address field of your browser), or visit
http://tmportal.uspto.gov/external/portal/tow and enter the application serial number to access
the Office action.

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24
hours of this notification.

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if
a response is required; (2) how to respond; and (3) the applicable response time period. Your response
deadline will be calculated from 8/14/2008.

Do NOT hit “Reply”to this e-mail notification, or otherwise attempt to e-mail your response, as
the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you
respond online using the Trademark Electronic Application System response form at
http://www.uspto.gov/teas/eTEASpageD.htm.

HELP: For technical assistance in accessing the Office action, please e-mail
[email protected]. Please contact the assigned examining attorney with questions about the Office
action.

WARNING
1. The USPTO will NOT send a separate e-mail with the Office action attached.

2. Failure to file any required response by the applicable deadline will result in
the ABANDONMENT of your application.