## Facts

- Anncas, Inc. sought to register the mark HAVANA CLUB for cigars.
- The cigars were not made in Cuba; they were made from “Cuban seed tobacco” grown outside Cuba.
- Corporacion Habanos, S.A., a Cuban cigar enterprise, opposed registration.
- Habanos owned a U.S. registration for HABANOS UNICOS DESDE 1492 for cigars of 100% Cuban origin.
- The opposition asserted, among other grounds, that HAVANA CLUB was primarily geographically deceptively misdescriptive under Lanham Act § 2(e)(3).
- The Trademark Trial and Appeal Board (TTAB) issued a precedential decision sustaining the opposition and refusing registration.

## Issues

1. Whether “Havana” is primarily geographically descriptive of a generally known location for purposes of evaluating HAVANA CLUB for cigars.
2. Whether consumers are likely to believe that cigars sold under HAVANA CLUB originate in Havana/Cuba, creating a goods–place association.
3. Whether any geographic misdescription is material to purchasing decisions so that the mark is primarily geographically deceptively misdescriptive under Lanham Act § 2(e)(3), given that the goods do not originate in Havana/Cuba.
4. Whether use of “Cuban seed tobacco” is a sufficient connection to Cuba to avoid a false implication of geographic origin.

## Decision

- The TTAB sustained the opposition and refused registration of HAVANA CLUB for cigars.
- The Board found that Havana is a well-known geographic place, associated with cigar production, and that the primary significance of the term in the mark is geographic.
- The Board found a likely goods–place association: purchasers would believe HAVANA CLUB cigars originate in Havana/Cuba.
- Because the cigars were not of Cuban origin, the Board found the mark misdescribed geographic origin.
- The Board found the misdescription material because Havana/Cuba has a strong reputation for cigars that would influence purchasing decisions.
- The Board rejected the argument that “Cuban seed” content cured the geographic deception, finding the connection insufficient to make the goods originate in Havana/Cuba.

## Legal Principles

- A mark is primarily geographically deceptively misdescriptive under Lanham Act § 2(e)(3) when: (1) its primary significance is a generally known geographic place; (2) purchasers are likely to believe the goods originate in that place; (3) the goods do not originate there; and (4) the misrepresentation is a material factor in the purchasing decision.
- For § 2(e)(3), materiality may be shown where the named place has a reputation for the relevant goods such that the mistaken belief of origin would affect consumer choice.
- A historical, genetic, or remote connection to a place (such as “Cuban seed” grown elsewhere) does not establish geographic origin and does not negate a false geographic impression created by a place name in a mark.

## Conclusion

The TTAB refused registration of HAVANA CLUB for non-Cuban cigars because the mark conveyed a materially false geographic origin claim tied to Havana’s reputation for cigars, rendering the mark primarily geographically deceptively misdescriptive under § 2(e)(3).


Corporacion Habanos, S.A. v. Anncas, Inc., 88 U.S.P.Q.2d 1785 (T.T.A.B. 2008)