IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Trademark Registration No. 2,900,059

Registered: November 2, 2004
Mark: HAVANA SUNRISE

__________________________________________
CORPORACION HABANOS, S.A., and )
EMPRESA CUBANA DEL TOBACCO, )
d/b/a CUBATABACO, )
) Cancellation No.: 92051672
Petitioners, )
)
v. )
)
INTER-AMERICA CIGAR COMPANY, )
)
Registrant. )
__________________________________________)

REGISTRANT'S ANSWER AND AFFIRMATIVE DEFENSES

COMES NOW, Registrant through undersigned counsel and files its Answer and

Affirmative Defense to the Petition to Cancel as follows:

1. Admitted.

2. Registrant is without sufficient information of the allegations of paragraph 2 and

therefore denies same.

3. Admitted.

4. Registrant is aware that Petitioner appears to own U.S. Registration No. 2,177,837

but is without sufficient information about Petitioner's use of the "mark" throughout the world.

Further, Registrant denies any implication that the ownership of the U.S. Registration is valid.

5. Registrant admits that the "mark" has appeared in United States and international

publications. Registrant believes that the use of the "mark" in United States publications is a

violation of the trade embargo and that the advertisements induce persons subject to U.S.
jurisdiction to violate the embargo laws. Specifically, US consumers, upon seeing the

advertisements, seek and purchase illegal Cuban cigars via the Internet. For instance,

www.smokemag.com a US based magazine has a link to a website that allows US consumers to

illegally purchase Cuban cigars for delivery into the US.

6. Most of the allegations in paragraph 6 are admitted in the general sense.

Registrant is not aware of the extent of such "trade, marketing, and advertising." Registrant is

without sufficient information regarding the last part of paragraph 6, namely, the allegation about

Petitioners’ emphasis "that its cigars are made in Cuba from 100% Cuban-grown tobacco ..." As

such, without sufficient information, Registrant denies same.

7. Registrant is aware that Petitioner appears to own the registrations identified, but

denies any implication that the ownership of the US Registrations are valid. Further, Registrant

denies any implication that the term "HABANO" in the Registrations is fully protectable in so

much as at least one of the Petitioners is currently experiencing extreme difficulty in obtaining a

"certification mark" for "HABANOS" at the USPTO. See Application Serial No. 77/157,193.

8. Registrant incorporates response to paragraph 5.

9. Registrant is aware of the pendency of Petitioner Cubatabaco's application for

registration of "HABANOS", but denies any characterization that "the mark certifies" anything

in so much as the application is still pending. In fact, the file history of the application suggests

that USPTO will ultimately deny the application as the mark does not operate as a "certification

mark" and that the mark is geographically descriptive. In fact, the file history of this application

works against Petitioners for all of its litigation (federal and USPTO) wherein it has brought

claims against innocent trademark owners. The file history of the application also supports

Registrant's affirmative defenses of "unclean hands" and "laches."

 10. Denied.

11. Denied. Petitioner's own marketing materials will demonstrate that this allegation

is false and was created in response to litigation in Corporacion Habanos, S.A. v. Guantanamera

Cigars and the pending appeal Guantanamera Cigars v. Corporacion Habanos, S.A.

12. Registrant admits knowledge of that case, but denies any implication that the

existence of that case has any bearing on this case.

13. Registrant admits knowledge of the regulations, but sets forth that it also has

knowledge that litigation/appeal is pending in Guantanamera v. Corporacion Habanos wherein

the standing provision is being challenged.

14. Admitted.

15. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case.

16. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case.

17. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case

18. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case.

19. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case.

20. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case.
 21. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case. Registrant specifically denies the

allegations that Petitioner "knows" what Registrant "knew" at the time of the application. It is

impossible for Petitioner to "know" what Registrant "knew" at that time. There is a long oral

and documented history of Cuban tobacco seed that was brought to Central American tobacco

growing regions in the late 1970s and 1980s. Tobacco seeds are tiny and a large field can be

grown from a soda bottle cap full of seeds.

22. Registrant admits the contents of the file history, but denies any implication that

the file history of ten years ago has any bearing on this case.

23. Registrant admits the contents of the opposition history, but denies any

implication that the opposition history of 5 years ago has any bearing on this case.

24. Registrant admits the allegations in paragraph 24 and sets forth that as an assignee

of the trademark, it was a good faith recipient of the rights and took title to the mark subject to

the implicit warranties and representations of the assignor.

25. Registrant admits the contents of the file history, but denies any implication that

the file history has any bearing on this case.

26. Registrant admits the contents of the file history, but denies any implication that

the file history has any bearing on this case.

27. Registrant denies the allegations of paragraph 27. Registrant specifically denies

the allegations that Petitioner "knows" what Registrant "knew" at the time of the application. It

is impossible for Petitioner to "know" what Registrant "knew" at that time.

28. Admitted.

29. Denied.
 30. Admitted, but deny any implication that this alone has any bearing on this case.

31. Denied. Tequila is the name of a city in Mexico. A Tequila Sunrise is a type of

mixed drink. A Tequila Sunrise has a primary significance of a drink. Likewise, "HAVANA

SUNRISE" can have multiple meanings. In fact, the term sunrise carries an implication of a

"new day." Based upon the political history of Cuba, the primary significance of "HAVANA

SUNRISE" could mean a new day for Cubans whether they live in the US or Cuba. Further,

"HAVANA SUNRISE" has a romantic meaning and can suggest a multitude of things.

32. Denied. The addition of the term "SUNRISE" completely alters the mark's

primary significance. Registrant denies any implication in paragraph 32 that the mark has any

"geographic significance."

33. Denied. Petitioner is living in the past. The cigar industry and cigar consumer's

perceptions have changed dramatically in the past 20 years. The term "HAVANA" is commonly

used as a generic term for a cigar. The term "HAVANA" has suffered genericide much like

ASPIRIN and other such marks. This genercide has occurred over the past 50 years and

Petitioners' attempt to resuscitate any rights has long been abandoned. See File History of

Application Serial No. 77/157,193.

34. Denied. See response to paragraph 33 above.

35. Registrant is without sufficient information of the allegations of paragraph 35 and

therefore denies same.

36. Registrant is without sufficient information of the allegations of paragraph 36 and

therefore denies same.

37. Registrant is without sufficient information of the allegations of paragraph 37 and

therefore denies same.

 38. Registrant is without sufficient information of the allegations of paragraph 38 and

therefore denies same. Registrant also incorporates its response to paragraphs 33 and 34.

39. Registrant is without sufficient information of the allegations of paragraph 39 and

therefore denies same.

40. Registrant is without sufficient information of the allegations of paragraph 40 and

therefore denies same.

41. Denied. Registrant also incorporates its response to paragraphs 33 and 34.

42. Denied. Registrant also incorporates its response to paragraphs 33 and 34.

43. Registrant is without sufficient information of the allegations of paragraph 43 and

therefore denies same. It is impossible for Petitioners to verify what is in the minds of all, or

even a significant number, of cigar smokers.

44. Denied. Registrant also incorporates its response to paragraphs 33 and 34.

45. Denied.

46. Registrant believes that its cigars are made from tobacco grown with lineage of

Cuban seeds brought to Central America in the late 1970s and 1980s. If such lineage is not the

case (proven by an expert botantist, or other like expert), Registrant has relied on oral and written

history of Cuban seed migration to Central America and therefore had a reasonable basis to

believe so.

47. Registrant is without sufficient information of the allegations of paragraph 47 and

therefore denies same. Registrant has no knowledge of Petitioners' specific allegations regarding

"made or derived in whole or in part of any article which is the growth, produce or manufacture

of Cuba." Moreover, Registrant is highly suspect of any claim in so much as Petitioners, by their

own admissions, are actively and aggressively advertising their products in US publications. If
both Cuba and the US are both foreclosed from trading with each other, why would it be illegal

for cigars made from Cuban seed tobacco grown in Central America to be illegal and the active

and aggressive advertising and inducement to illegally purchase Cuban cigars online not be

illegal or otherwise a violation of the embargo?

48. Denied.

49. Registrant denies that consumers would have a "mistaken belief that Registrant's

cigars come from Havana or Cuba, or are comprised in whole or in part of tobacco grown in

cuba." Further, Registrant denies that if that belief exists, that it "would be a material factor in

such consumers' purchasing decision."

50. Denied.

51. Denied.

52. Denied.

53. Denied.

54. Denied. Sufficient oral and written history exists to support that Cuban seed

tobacco was brought to Central America in the late 1970s and 1980s.

55. Denied.

56. Denied.

57. Registrant is without sufficient information of the allegations of paragraph 57 and

therefore denies same. Quality, characteristics, taste and aroma of cigars is highly subjective. In

fact, it is one of the most subject products available, some may argue even more subjective then

wine.

58. Denied. Registrant also denies any implication that the "change in identification"

was dubious.
 59. Registrant is without sufficient information of the allegations of paragraph 59 and

therefore denies same.

60. Denied. The mark and many marks that contain the term “HAVANA” or

“HABANOS” have been registered for a number of years. Petitioners' litigation strategy of

opposing or canceling all trademarks that contain the term "HAVANA" or "HABANOS" is in

bad faith and not supported by the reality of the USPTO record or the cigar consuming public's

perceptions.

61. Denied. Petitioners' cannot be harmed or damaged in so much as they have

waited 50 years to object to the use of the term "HAVANA" or "HABANOS" by others in the

United States. Further, this delay has caused Petitioners' "HAVANA" or "HABANOS" use of the

term to suffer "genericide" (presuming that it had any authority to use the terms exclusively).

Petitioners' current litigation strategy (commenced only recently) of opposing or canceling all

trademarks that contain the term "HAVANA" or "HABANOS" is in bad faith and not supported

by the reality of the USPTO record or the cigar consuming public's perceptions.

62. Denied. Further, Petitioners' allegation of the likelihood of its "success in

marketing 100% Cuban-origin cigars to U.S. consumers as soon as U.S. law permits" is illusory.

For instance, when the "U.S. law" will permit same is illusory since the embargo has been in

effect for over 45 years and no end is near. Further, Petitioners' "success" (or failure) in the U.S.

if and when that time comes could be a result of a variety of other business decisions. For

instance, Cuba has suffered great tobacco losses due to blue mold and hurricanes. Cuba could

fail in its marketing and sales in the U.S. since it is entirely out of touch with modern cigar

consuming public. Cuba could fail in its marketing and sales due to its inability to supply

demand. Cuba could fail in its marketing and sales because the business venture of Petitioner
Corporacion Habanos could fail and thus cause upheaval in the organization. Such upheaval

could result in inefficient or failed marketing and sales efforts in the U.S.

63. Denied. See response to paragraphs 33, 34, and 61 and 62.

64. Denied.

65. Registrant repeats and responds to each and every allegation set forth in paragraph

1 through 64 as if fully set forth herein.

66. Denied.

67. Registrant repeats and responds to each and every allegation set forth in paragraph

1 through 64 as if fully set forth herein.

68. Denied.

69. Registrant repeats and responds to each and every allegation set forth in paragraph

1 through 64 as if fully set forth herein.

70. Registrant is without sufficient information of the allegations of paragraph 70 and

therefore denies same.

71. Registrant is without sufficient information of the allegations of paragraph 70 and

therefore denies same. Specifically, Registrant is uncertain as to what is meant by the phrase

"does not correspond."

72. Denied.

73. Registrant is without sufficient information of the allegations of paragraph 73 and

therefore denies same. The allegation is vague and overbroad. If Petitioners' amend this

allegation to be more specific, then Registrant will revisit its response.

74. Registrant is without sufficient information of the allegations of paragraph 74 and

therefore denies same.

 75. Registrant is without sufficient information of the allegations of paragraph 75

relating to the legal provisions and therefore denies same. Registrant denies that the registration

should be cancelled for any reason.

76. Registrant repeats and responds to each and every allegation set forth in paragraph

1 through 64 as if fully set forth herein.

77. Denied. The marks are clearly distinguishable in sight, sound and meaning. Any

allegation to the contrary is specious.

78. Registrant repeats and responds to each and every allegation set forth in paragraph

1 through 64 as if fully set forth herein.

79. Denied.

80. Denied.

81. Denied.

82. Denied.

83. Denied.

84. Registrant repeats and responds to each and every allegation set forth in paragraph

1 through 64 as if fully set forth herein.

85. Denied.

86. Registrant denies that it made any misrepresentations.

87. Denied.

88. Denied.

WHEREFORE, Registrant respectfully requests that the Cancellation Proceeding be

dismissed in so much as Petitioners' have brought the action in bad faith, have delayed in seeking

any such relief, and have failed to state a cause of action. It is respectfully requested that the
Board take a holistic view of the Petitioners' (separate and joint) litigation strategy before the

TTAB when considering Registrant's affirmative defenses of bad faith litigation.

AFFIRMATIVE DEFENSES

I. FAILURE TO STATE A CLAIM

The Petitioners have failed to state a claim in so much as (1) the primary significance of

the term "HAVANA" or "HABANOS" has changed over the years as it relates to cigars; (2) the

third cause of action is not a recognizable cause of action but is merely duplicative of attempts to

bring other causes of action; (3) the likelihood of confusion claim is infirm in so much as the

marks are strikingly different in sight, sound, and meaning; and (4) Petitioners' have otherwise

failed to properly plead the elements for each and every cause of action.

II. LACHES

The Petitioners' claim must fail under the doctrine of Laches. Petitioners' have rested on

their rights and only now are claiming that they have been harmed or will be harmed by

Registrant's registration. Registrant's registration was nearly eligible for "incontestability" status.

However, days before the eligibility window opened, this action was filed. Petitioners' own

allegations set forth that it was aware of earlier filings of "HAVANA SUNRISE" in the USPTO

record, but yet Petitioners' took no action in any court or tribunal against those applications or

the use of the mark by anyone or any company. Petitioners' filing of this action must be barred

by Laches and viewed as a sham.

III. UNCLEAN HANDS

The Petitioners' action must be barred by the equitable doctrine of "unclean hands." The

Board is directed to the multitude of actions recently filed by Petitioners (separate and joint).

Namely, Petitioners have engaged in an aggressive campaign to oppose or move to cancel any
trademarks that look, smell, or taste like Cuba (in their minds). The allegation that Petitioner

will be harmed is vitiated by the fact that Petitioners' motive is to cause financial harm to

competitors and to clear the United States marketplace for the possibility that they will be able to

sell Cuban-made cigars in the United States. Further, Petitioners' litigation strategy of waiting

just short of 5 years to cancel registrations (see TTAB record) is also evidence that such timing

was motivated by unclean hands.

IV. ESTOPPEL

Registrant has been prejudiced by Petitioners' failure to object to "HAVANA SUNRISE"

for at least ten (10) years. Registrant was induced to select his mark years ago, because there

was no indication or reason to believe that Petitioners (or anyone) would object to same.

Registrant has used the mark for a number of years and in fact, the mark is used in connection

with one of Registrant's top selling cigars. The cancellation of the mark after these many years

will cause direct and consequential financial harm to Registrant. Therefore, great prejudice will

fall on Registrant if Petitioners are allowed to prevail in their scheme to cancel this mark after

being silent for so many years.

V. REGISTRATION IS CONSISTENT WITH TTAB RECORDS

As set forth in the file history of Serial No. 77/157,193, Petitioners' own attempts to

obtain a certification mark for "HABANOS" have been met with reference by the Examiner to

numerous uses of same or the related "HAVANA" by third parties. Based upon the extensive

use of the term "HAVANA" or "HABANOS" on the record, Petitioners are foreclosed from

seeking relief in this matter.

VI. GENERICNESS

Petitioners are foreclosed from any likelihood of confusion cause of action in so much as

Petitioners' relied upon registrations contain the "generic" term "HABANOS". The term

"HABANOS" has suffered genericide.

Dated: February 8, 2010.

/s/Frank Herrera
FRANK HERRERA
QUINTAIROS, PRIETO, WOOD & BOYER, P.A.
9300 S. Dadeland Blvd.
Miami, Florida 33156
T: (305) 670-1101
F: (305) 670-1106
fherrera@qpwblaw.com
Attorney for Registrant
 CERTIFICATE OF ELECTRONIC FILING

I hereby certify that this Answer and Affirmative Defenses was filed today, February 8,
2010 on the Electronic System for Trademark Trial and Appeals for the United States Patent and
Trademark Office.

/s/Frank Herrera
FRANK HERRERA

CERTIFICATE OF SERVICE

The undersigned certifies that a true and correct copy of the foregoing Answer and
Affirmative Defenses to the Petition to Cancel Registration No. 2,900,059 for HAVANA
SUNRISE was served on Petitioners by mailing, postage prepaid, said copy on February 8, 2010
via U.S. Certified Mail, return receipt requested, to the counsel of record, namely:
DAVID GOLDSTEIN
RABINOWITZ, BOUDIN, STANDARD,
KRINSKY Y LIEBERMAN, P.C.
111 Broadway - Suite 1102
New York, New York 10006-1901
(212) 254-1111
dgoldstein@rbskl.com

/s/Frank Herrera
FRANK HERRERA