What Risks Do Cigar Makers Face When Choosing Brand Names that Reference Cuban Heritage?

Legal Risks of Cuban-Inspired Cigar Brand Names

Kennedy, Clinton, Schwarzenegger, Jordan, Jay-Z . . . the fascination with Cuban cigars goes back generations and doesn’t seem to fade. No amount of embargo regulation has changed that. In fact, the embargo itself may be what keeps the mystique alive, even as the quality of cigars actually made in Cuba has declined. It’s no surprise, then, that cigar companies try to capture that allure through branding. But doing so comes with distinct legal challenges. 

What Are Geographically Descriptive Trademarks?

Those of you who follow my blogs are likely familiar with the concept of geographically descriptive trademarks by now. For those who aren’t, the idea is simple, everyone in the market should be free to identify the geographic source of their goods or services. Trademarks that do so are referred to as “geographically descriptive” and, like all descriptive trademarks, are not protectable without acquiring distinctiveness. Acquired distinctiveness comes from the long, exclusive, and continuous use of a descriptive term until consumers no longer associate that term with its descriptive meaning when they see your product, and instead understand the term to refer to you as the source of the goods. Some examples of this include “PHILADELPHIA CREAM CHEESE,” “KENTUCKY FRIED CHICKEN,” and “FLORIDA’S NATURAL”. Each of those began as geographically descriptive, but over time those marks have acquired distinctiveness and today when you see a bottle of “FLORIDA’S NATURAL” orange juice, you understand it to be a brand and not just a descriptor.

When Do Geographic Terms Become Protectable as Trademarks?

But the extent to which descriptive trademarks can become protectable over time is limited. For a geographically descriptive mark to become protectable, it must actually describe the product’s true origin. Failing to do so could be deceptive advertising and is not protectable. Imagine, for example, going to a local farmer’s market and seeing a bottle of honey branded “JAX PACKS HONEY”, buying the honey because you thought you were supporting a local Jacksonville product, and getting home to find that the small print showed that the honey came from Mexico. You’d probably be disappointed – and trademark law is designed to protect you from this. In trademark context, this sort of misuse is called “geographically deceptively misdescriptive” trademark use, and it can never be protected.

Why Cuban-Referenced Names Often Get Rejected by the USPTO

This principle applies to cigars. At its simplest, you can’t protect trademarks like “STAR OF CUBA”, “JOHNNY CUBA” or “CUBA USA” each of which have been refused by the USPTO as primarily geographically deceptively misdescriptive. The reasoning is simple, use of the word “Cuba” in the mark, in connection with a product for which there is a known goods/place association which could lead consumers to believe the goods are connected with or originate from the place named in the mark, and where that association is likely to be material in the consumer deciding to purchase the product, is not permitted as it is deceptively misdescriptive since Cuban cigars are not permitted to be sold in U.S. commerce.

Why Some Cuban-Themed Marks Still Get Registered

But that’s not the end of the story. It turns out that “Cuba” and other Cuba-related terms are included in many registered trademarks. The reasons for that are a combination of human error at the trademark office, changing policy within the USPTO with respect to goods like “Cuban seed” tobacco, and creative branding. I’ll tackle each in turn.

How USPTO Examiner Errors Affect Trademark Registration

Whenever you file an application to register a trademark, human error on the part of the USPTO Examiner is always something to keep in mind. Most of the time we think of human error in terms of the Examiner wrongfully refusing a trademark registration, and that’s what appeal is for. That happened to me not that long ago when the Examiner refused to register “LEYENDA DE COPAN” citing “FLOR DE COPAN.” “COPAN” is a known geographic location and is disclaimed from both marks. The Examiner insisted, incorrectly, that the inclusion of the disclaimed geographically descriptive term in the marks created likelihood of confusion despite the strong differences in the dominant portions of the marks, i.e., “LEYENDA” and “FLOR”. I appealed on the client’s behalf, and the objection was ultimately withdrawn. However, errors sometimes work the other way. I’ve seen, but won’t call attention to, plenty of trademarks that shouldn’t be registered but that are registered. USPTO Examiners are humans like the rest of us. Notwithstanding that fact, USPTO Examiners tend to do good work, and errors are a rare exception. Moreover, if your registered trademark is geographically deceptively misdescriptive, it is subject to post-registration attack since geographically deceptively misdescriptive trademarks are never protectable, even if registered in error.

Cuban-Seed Tobacco and Changing USPTO Policy

The next category of registered Cuba-related marks is Cuban seed tobacco. For those unfamiliar with this term, Cuban-seed tobacco was a marketing tactic that was successful in the past at eliciting a connection with Cuba without being deemed geographically deceptively misdescriptive. The idea was that tobacco farmers in places like the Dominican Republic or Nicaragua that are not limited by the Cuban embargo claimed to have acquired tobacco seeds from Cuba and were growing “Cuban seed” tobacco for use in their cigars. For a time, the USPTO was willing to accept this connection with Cuba as sufficiently concrete to allow registration of Cuba-related trademarks so long as the description of goods plainly mentioned use of Cuban-seed tobacco. However, the USPTO has since changed its position. Specifically in Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2008), the TTAB held that 

there is an insufficient connection between Cuban seed tobacco, which is descended from tobacco seeds taken from Cuba many decades ago, and Havana to support a finding that cigars made from Cuban seed tobacco come from or originate in Havana. This is particularly the case because the record in this case shows that cigars from Cuban seed tobacco share few, if any, qualities or characteristics of genuine or 100% Cuban cigars.

The upshot of this decision is that the Cuban-seed loophole is closed.

Creative Branding Strategies That Evoke Cuba Without Violating USPTO Rules

That leaves creative branding. Some examples of registered trademarks with a Cuban connection include marks like “ASERE CIGARS” for use in connection with cigars and “LA FLAMA DE CUBA” for use in connection with cigar lighters, humidors, and smokers’ articles, namely, receptacles for cigar and cigarette ash and waste. In the case of a mark like “ASERE CIGARS”, the brand owner is playing on the connection with the common Cuban slang word “asere” to create a connection with Cuba without referencing a geographic location. For marks like “LA FLAMA DE CUBA”, the USPTO is simply less vigilant about marks used in connection with products associated with cigars than they are with cigars themselves.

Balancing Cuban Branding Appeal With Legal Compliance

Cuban mystique sells, but it also tempts cigar makers into legal gray zones. The difference between clever branding and deceptive use can decide whether a mark becomes an asset or a liability. Careful planning keeps the romance without the risk.

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