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ESTTA Tracking number: ESTTA274309
Filing date: 03/25/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91186534
Party Plaintiff
Corporacion Habanos, S.A., Empresa Cubana del Tabaco, dba Cubatabaco
Correspondence David B. Goldstein
Address Rabinowitz, Boudin, Standard, Krinsky, et al
111 Broadway, Suite 1102
New York, NY 10006-1901
UNITED STATES
dgoldstein@rbskl.com
Submission Reply in Support of Motion
Filer's Name David B. Goldstein
Filer's e-mail dgoldstein@rbskl.com
Signature /David B. Goldstein/
Date 03/25/2009
Attachments R 56(f) Reply.91186534.pdf ( 8 pages )(34088 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
_______________________________________________
CORPORACION HABANOS, S.A., d.b.a. )
HABANOS, S.A., and EMPRESA CUBANA DEL )
TABACO, d.b.a. CUBATABACO, )
)
Opposers, )
)
v. ) Opposition No. 91186534
) Serial No. 77273188
XIKAR, INC., )
)
Applicant. )
)
Opposers Corporacion Habanos, S.A. (hereinafter “Habanos, S.A.”) and Empresa Cubana
del Tabaco (hereinafter “Cubatabaco”) (together “Opposers”), by and through their undersigned
attorneys, hereby submit their Reply, pursuant to Fed. R. Civ. P. 56(f); 37 C.F.R. § 2.127(e)(1);
TBMP § 528.06, in support of their request for time to take discovery to respond to Applicant’s
pending motion for summary judgment in the above-captioned proceeding, and in support
judgment motion, there necessarily will be further proceedings in this matter, including
discovery, on Opposers’ fraud claim, Applicant’s Response (“App. Resp.”), at 2. Further, in the
very likely event that the summary judgment motion is denied, it is almost certain that, after
discovery, the parties will bring another round of summary judgment motions. These facts,
while not necessarily dispositive of the Rule 56(f) Request, certainly weigh in favor of allowing
this matter to proceed in an orderly, efficient matter, rather than through disjointed discovery and
seriatum summary judgment motions. See Declaration of David B. Goldstein, dated February
Applicant fails to make any argument why the parties and the Board should be put
through such unnecessary and inefficient piecemeal litigation. Its claim that the situation here is
the same as Corporacion Cimex, S.A. v. DM Enter. & Dist. Inc., Opp. No. 91178943 (Nov. 17,
2008), is simply bizarre. First, in Cimex, the parties made summary judgment motions after the
close of discovery. Second, there was no piecemeal litigation. Rather, both parties moved for
Convention (“IAC”) claim, and Applicant moved on lack of standing. The Board found
standing, and found for the opposer on the IAC claim, thereby disposing of the case in full.
Third, this is not a case in which, after discovery, the parties have moved for partial summary
Here, there is a certainty that there will be discovery, and a near certainty that there will
that the Board: 1) allow a reasonable period for Opposers to take discovery on all three of its
grounds for opposition (Applicant has expressly represented that it has no need for discovery on
the section 2(e)(3) and 2(d) grounds, and Applicant plainly does not need discovery of Opposers
on whether and when Applicant used the mark); and 2) after the close of discovery, allow the
parties to cross-move for summary judgment on any grounds they deem appropriate.
II. Applicant seriously mischaracterizes Opposers’ position on the section 2(e)(3) claim, and
then, relying on that mischaracterization, claims, “Discovery on this issue is unnecessary and
will not lead to any admissible evidence.” App. Resp. at 2. Applicant first quotes from
Opposers’ Request, which noted that Applicant was “resist[ing] discovery as to the relevant
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factual similarities and differences,” Opp. Request, at 3, and then Applicant adds “between the
goods of the parties.” App. Resp. at 2 (emphasis added). Opposers, however, were
unmistakably referring to the “relevant factual similarities and differences” between Applicant’s
and Applicant’s non-Cuban closely related cigar accessories. Opp. Request at 4; see also
Under both the related goods test – applicable to both the section 2(e)(3) and the section
2(d) claims – and the Board’s geographic deceptiveness precedents – which hold that the manner
in which an Applicant promotes or displays its goods is relevant – discovery concerning how the
mark is sold, displayed and promoted, including in connection with Applicant’s non-Cuban
HAVANA COLLECTION cigars, is both necessary and certain to lead to admissible evidence.
See Goldstein Decl. ¶¶ 13-19, 25-28, and Exhibits 2-3 (showing Applicant’s deliberate,
aggressive and pervasive promotion of its non-Cuban goods through a false association with
Try as it might, Applicant cannot wish away the related goods test, including Opposers’
right to discovery on this issue, by the incorrect assertion that the Board’s HAVANA CLUB
precedent for non-Cuban cigars is “not relevant” to Applicant’s closely related non-Cuban
HAVANA COLLECTION cigar accessories. App. Resp. at 3; see Corporacion Habanos, S.A. v.
Anncas Inc., 88 U.S.P.Q.2d 1785 (T.T.A.B. 2008); see also Corporacion Habanos, S.A. v.
Guantanamera Cigars Co., 86 U.S.P.Q.2d 1473 (T.T.A.B. 2008). Nor can Applicant avoid
discovery into its promotion of its non-Cuban HAVANA COLLECTION goods through the false
association with Cuba, Havana, and Cuban cigars, by making the frivolous argument that
Opposers were required to attach evidence directed solely to the merits of the summary judgment
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motion on Opposers’ Rule 56(f) Request. By Applicant’s reasoning, the Board should now sua
sponte grant summary judgment on Opposers’ fraud claim based on Applicant’s non-use of the
mark, because “[i]f there were [evidence of use], [Applicant] surely would have attached such
evidence” to its summary judgment or Rule 56(f) response papers. App. Resp. at 4.
Applicant’s claim that Opposers have not provided specific requests for information, or
explained the reasons for these requests in order to oppose the summary judgment motion, App.
Resp. at 2-3, simply ignores Opposers’ very specific and detailed requests set out in the
Goldstein Declaration, ¶¶ 13, 18, 19, 20, 21, 22, 23, 25, 26, 27, 28. The Goldstein Declaration
further sets forth the legal and factual relevance of these specific and detailed requests.
Goldstein Decl. ¶¶ 11-12, 14-17, 20, 22-26. Neither Rule 56(f) or the Board’s precedents require
more. (If Applicant is claiming that Opposers were required to submit formal Requests for
Production of Documents and Things or formal Interrogatories with their Rule 56(f) Request,
there is no such requirement, and Applicant points to none.) By contrast, Applicant provides no
reasons or legal arguments as to why this specifically requested information is not relevant to the
summary judgment motion, other than the various ipse dixit assertions that it is not. Indeed,
Applicant is compelled to acknowledge that Opposers are entitled to submit “any evidence that
Opposers wish to submit to support their position.” App. Resp. at 3 (emphasis added). Yet,
without explanation, Applicant then claims that Opposers are forbidden to seek any discovery
whatsoever to obtain this evidence from Applicant, or to test the evidentiary basis of Applicant’s
various contentions.
Applicant’s claim that Opposers had “ample time to submit discovery requests,” App.
Resp. at 2, is disingenuous at best. First, the parties agreed to exchange Initial Disclosures on
January 7, 2009. Not only is it standard practice to await the exchange of Initial Disclosures to
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commence traditional, formal discovery, but the whole point of the introduction of the Initial
Disclosure procedure into the Federal Rules was to require an early exchange of information
without formal discovery demands. See 1993 Advisory Committee Notes (explaining purpose of
new Rule 26(a) to provide for the disclosure of “basic information about the case and to
eliminate the paper work involved in requesting such information”). The salutary purposes of
Rule 26(a) and the Board’s recent implementation of the Rule would be seriously undermined if
the Board now held that the failure to serve formal discovery demands prior to the exchange of
Second, even if Opposers had served formal discovery in early December, Applicant
clearly would not have responded, and Applicant is very careful not to say that it would have
responded. Discovery opened on December 1, 2008. Ever since December 19, long before any
responses would have been due, Applicant has had pending either a Rule 12(c) or Summary
Judgment motion, with the exception of one day in January. Applicant failed to produce Initial
Disclosures on January 7, as agreed, specifically asserting that the Rule 12(c) motion suspended
their discovery obligations, and then served its Initial Disclosures on January 15, only after the
Board had converted the Rule 12(c) motion into a summary judgment motion and sua sponte
III. It is difficult to discern the basis for Applicant’s contention that Opposers should be
prohibited from any discovery on the section 2(d) claim, particularly as this issue is fact-
intensive. See Goldstein Decl. ¶¶ 24-26. Indeed, Applicant appears to rely on nothing more than
two erroneous legal claims directed to the merits of its summary judgment motion, which have
nothing to do with Opposers’ right to seek the specific discovery, including under the related
goods test, specifically identified in the Goldstein Decl. ¶¶ 25-27. See App. Resp. at 5.
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First, the Examiner initially found that Applicant’s mark for cigars and cigar accessories
is likely to cause confusion with Opposer Cubatabaco’s prior pending certification mark
application for HABANOS, and then without explanation and without addressing the related
goods test, withdrew that initial refusal when Applicant deleted cigars from its application.
Goldstein Decl. ¶¶ 3, 25. Applicant now appears to claim that discovery must be denied,
because, without further explanation, “any comparison [of HABANOS] with Applicant’s mark is
unfounded,” because the HABANOS mark has not been used or registered, “and presently stands
rejected based on descriptiveness.” App. Resp. at 5. Applicant, of course, cannot cite a single
case for its novel proposition that the Board is foreclosed from a section 2(d) inquiry whenever
there has been an initial refusal (here a plainly erroneous one) of a prior pending application
under sections 1(b) or 44(d) or (e). See also Goldstein Decl. ¶ 25 & n.3; Exhibit 4.
registered marks if they have secondary meaning or acquired distinctiveness, but then argues,
without citation, that the marks cannot have same because they have not been used in commerce
in the United States. App. Resp. at 5. Without otherwise addressing the merits of Applicant’s
position that there is no likelihood of confusion unless the Opposers’ registered marks have
federal court has previously held that one of Opposer Cubatabaco’s Cuban cigar marks did
acquire secondary meaning in the United States, despite the prohibition on use of that mark in
commerce, including through advertising, media attention, and other lawful means by which the
mark is brought to the attention of the relevant consumers. See Empresa Cubana del Tabaco v.
Culbro Corp., 70 U.S.P.Q.2d 1650, 1676-82 (S.D.N.Y. 2004), rev’d on other grounds, 399 F.3d
462 (2d Cir. 2005); see also Empresa Cubana del Tabaco v. Culbro Corp., 587 F.Supp.2d 622,
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632 (S.D.N.Y. 2008) (“After trial, this Court found that the Cuban COHIBA had acquired
recognition consistent with ‘secondary meaning’ in the U.S., that is, it was ‘uniquely associated’
with the Cuban COHIBA, or that this was its “primary significance.”). In any event, nothing in
Applicant’s argument addresses Opposers’ right to seek discovery on the confusion issues
Finally, Applicant objects to the term “railroaded.” App. Resp. at 2. Opposers note that
it was the Supreme Court that used that term in admonishing that Rule 56(f) serves to protect
parties against premature summary judgment motions, such as Applicant’s motion here. Celotex
CONCLUSION
For the reasons stated herein, and in the prior papers and proceedings had herein,
Opposers’ Rule 56(f) request for discovery to respond to Applicant’s motion for summary
judgment should be granted, and the Board should set a reasonable time for Opposers to take
discovery on the three grounds for opposition, and to provide that thereafter the parties may
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CERTIFICATE OF SERVICE
The undersigned certifies that a true and correct copy of the foregoing Opposers’ Reply
Motion For Summary Judgment was served on Applicant by mailing via U.S. first-class mail,
/David B. Goldstein/
DAVID B. GOLDSTEIN