Unpublished Papers

Smoking Out a Bad TTAB Decision: Cuban Cigars and Cuban Seed Tobacco The Incompleteness of the Anncas Decision on the Lanham Act Section 1052(e)(3) Finding Primarily Geographically Deceptively Misdescriptiveness of HAVANA for Cigars Made of Tobacco Grown from Cuban Seed Tobacco

Dana B. Robinson, University of San Diego School of Law

Abstract

ABSTRACT

Synopsis:

The USPTO has traditionally allowed tobacco registrations that use “Havana” or “Cuba” for tobacco products where the goods are identified as being made of “tobacco grown from Cuban seed tobacco” or similar limited descriptions. The theory was that the marks would not be “primarily geographically deceptively misdescriptive” if the goods were in some way sufficiently “Cuban” to justify the use of that geographic reference in the trademark. Anncas attempted to completely foreclose this convention by finding that Cuban seeds that were taken from Cuba 30-50 years ago cannot now be said to produce “Cuban” tobacco today. The decision was published, and immediately, applications for “Havana” and “Cuba” began to receive a categorical refusal to register, no longer surmountable by identifying goods as tobacco “grown from Cuban seed tobacco.”

Thesis:

The Anncas decision is flawed. The decision relies on a mistaken fact: that the only way to have a Cuban seed tobacco plant was related to seeds exported from Cuba prior to the Castro regime. The theory was that all such seeds were exported long ago, and therefore the plants that grow in Honduras, Nicaragua, Costa Rica and other places are decades old and the seeds that each new crop produces to make the next crop are no longer Cuban in nature.

The case did not have this fact in evidence: growers can and do acquire Cuban seeds today from Cuba and plant those seeds immediately to grow a crop of tobacco plants that are in fact “grown from Cuban seeds.” Therefore, the holding of the Anncas case can only be said to limit those tobacco products which were grown from old Cuban seeds, not new Cuban seeds.

Growers can and do import Cuban seeds to non-Cuban farms, grow tobacco, manufacture cigars from that tobacco and sell those cigars into the US. Therefore, based on the decision of Anncas, these products can rightly bear the “Cuba” and “Havana” designations as part of registered U.S. trademarks. Moreover, the decision is likely to result in a shift in tobacco growing to newly imported Cuban seed tobacco, and thus render the entire Anncas decision inapplicable to any real world trademark applications going forward.

The broader question that Anncas leaves is whether the USPTO should be in the business of making the kind of factual analysis that the Anncas board made. The rule in 2(e)(3) disallows registration of a trademark that would be “primarily geographically deceptively misdescriptive.” However, in Anncas, the decision opens the door to a factual inquiry that seems outside of the scope of the USPTO’s decision making capability. The way in which cases are brought, the manner of evidence presented, the ability for a party to persist through trial without presenting significant evidence, seem to make the USPTO an inadequate forum for making a decision about something like the subject matter of Anncas. The Board ended up making a questionable decision that impacts an entire industry based on the facts presented by an opposer with self-serving motivations, using an expert whose credentials are questionable to make a decision that, while quite narrow, has been applied broadly by the PTO ever since.

Thus, the present article not only finds that the decision missed an important fact, which should change the outcome of future similar trademarks, but that the decision itself is an example of the USPTO going too far in its role. The USPTO’s analysis of marks that are “primarily geographically deceptively misdescriptive” should be stripped down to a more basic inquiry. If there are deeper facts that make the mark truly deceptive, then the market players should seek remedies in state court for false advertising, or the legislature should address the matter specifically, rather than leaving it to the USPTO to decide how many times a tobacco plant can be repropogated before it becomes no longer “from Cuban seed.”

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