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Deceptive place name not material

By Rebecca Tushnet

Guantanamera Cigar Co. v. Corporacion Habanos, SA., Civil Action No. 08-0721, 2010 WL 3035750 (D.D.C. Aug. 5, 2010)

The district court found, among other things, that the TTAB erred in finding that the term GUANTANAMERA for cigars not made in Cuba was deceptive and thus unregistrable, because it didn?t sufficiently support its materiality finding. The goods-place association was clear; the TTAB?s reasons for finding materiality were (1) Cuba?s ?renown and reputation for high quality cigars? and (2) the plaintiff?s subjective intent to deceive customers evidenced by previously placing ?Guantanamera, Cuba? and ?Genuine Cuban Tobacco? on the packaging. The district court rejected the first reason because in a previous case decided by the Federal Circuit, Moscow?s renown for vodka was not sufficient. The second reason was that the applicant?s subjective intent ?provides little, if any, insight into the minds of consumers. Consumers could have numerous reasons as to why they purchase Guantanamera cigars?. [T]he Court does not consider extraneous and out-dated marketing material particularly relevant in determining a mark?s ability to satisfy the §1052(e)(3) registration bar.?

I agree with John Welch that this ruling leaves unclear what, if anything, would count as a material deception, especially since many Americans are probably not aware of a lot of place names in Cuba that they more clearly recognize as a source of cigars or tobacco. I?m particularly surprised by the disregard for deliberate deceptiveness on the packaging, even if that was later eliminated because it was fraudulent?that tells us a lot about what the applicant wanted consumers to believe, and it?s pretty standard to presume that an intent to deceive is likely to succeed. Applicant, after all, probably is better placed to know what its customers want than outsiders.

Full post as published by 43(B)log on August 19, 2010 (boomark / email).