Can Cigar Brands Trademark Product Names that Describe Flavor?

Every tobacco industry player (and tobacco consumer) has seen them: brands with flavor names like “honey berry” or “white grape.” These are staples of the tobacco industry and can be the backbone of a brand hedging against limited offerings that can often be high risk but high reward seasonal product launches. For a small or medium-sized tobacco business, two main questions arise: 

1. whether they can lock down those flavor names with trademark protection, or whether the law leaves descriptive flavor names free for anyone to use; and 
2. how they can develop flavor-driven product names of their own that have staying power without running afoul of trademark law.

To illustrate the issues, I’ll breakdown two of the better-known examples:

• CAO BELLA VANILLA (CAO Bella Vanilla | CAO Cigars), and
• BACKWOODS HONEY BERRY (Honey Berry Backwoods Cigars | Machine Made Cigars | JRCigars)

Example 1: Cao Bella Vanilla

General Cigar Co., Inc. owns U.S. Trademark Registration No. 2674854 for “CAO,” the top-level brand, first used in 2002 and registered in 2003.

It also holds Registration No. 2760107 for “BELLA VANILLA,” with a disclaimer of “vanilla.” That means General Cigar doesn’t claim exclusive ownership of the word “vanilla” for cigars; anyone can use “vanilla” descriptively. Unsurprisingly, at least a dozen other live trademark applications or registrations in Class 34 (tobacco products) also contain “vanilla,” nearly all with disclaimers.

The upshot: you and everyone else are generally free to use “vanilla” to describe cigar flavor (subject to FDA and other rules). What you can’t do is use it in a way that risks confusion. For example, because the registration for “BELLA VANILLA” includes a translation note that “bella” means “beautiful,” a mark like “BEAUTIFUL VANILLA” could draw an objection for being too close to “BELLA VANILLA.”

Example 2: Backwoods Honey Berry

ITG Cigars Inc. owns a number of trademark registrations that include their “BACKWOODS” mark, including Registration No. 3268658. But despite the fact that their “BACKWOODS HONEY BERRY” is a ubiquitous, top-selling SKU since the 1980s, they don’t own a trademark registration for “HONEY BERRY.” 

In fact, another company, Starbuzz Tobacco, Inc., owns Registration No. 3750862 for “EXOTIC HONEYBERRY” in Class 34. That mark has been registered since 2010, but significantly, it’s registered on the Supplemental Register, not the Principal Register. The Supplemental Register is a recognition that the mark is not inherently distinctive and doesn’t provide exclusivity in the market. 

What These Examples Show About Product Name Trademarks

BELLA VANILLA and HONEY BERRY tell the same story. Descriptive flavor words like “vanilla” and “honey berry” don’t function as brand names. They remain available for anyone in the industry to use, and the real protection comes from the house brand that sits in front of them. That is why CAO can build lasting equity in BELLA VANILLA, and BACKWOODS can keep selling HONEY BERRY decade after decade. The flavor term catches the consumer’s attention, but it is the brand that carries the weight in the market. Competitors can release their own vanilla or honey berry products without infringing, but they cannot trade on the reputation of CAO or BACKWOODS. That difference is what trademark law recognizes, and it is the reason why flavor descriptors on their own rarely deliver lasting protection.

That doesn’t mean registration is pointless. The house marks, like CAO and BACKWOODS, are what matter. Those are the names that stick with consumers and the names the law will protect. A house mark is what lets you keep competitors from leaning on your reputation, even when they are free to use the same flavor words. The flavor name might catch the eye, but the brand is what brings customers back, builds equity over time, and can be enforced if someone crosses the line. Without the house mark, HONEY BERRY is just another flavored cigar. With BACKWOODS in front of it, HONEY BERRY is a top seller year after year.

Takeaway for Smaller Brands on Product Name Trademarks

For a small or medium-sized business, the strategy is straightforward. You cannot lock up “vanilla” or “honey berry” by themselves. What you can do is:

• Build a strong house brand;
• Pair it with flavor descriptors that consumers understand; and/or
• File for trademark protection of the house brand or the full product name, with the understanding that the flavor word will be disclaimed.

An intellectual property attorney can help you take this approach, which turns SKUs like BELLA VANILLA or HONEY BERRY into long-running sellers backed by enforceable rights. 

To discuss a strategy for expanding and protecting your product line names and trademarks, contact Jimerson Birr.