estta tracking number: 03/31/2011 in the united states

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA400943Filing date: 03/31/2011

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91152248

Party PlaintiffCorporacion Habanos, S.A.

CorrespondenceAddress

DAVID B. GOLDSTEINRABINOWITZ, BOUDIN, STANDARD,KRINSKY & LIEBERMAN P.C., 45 BROADWAY - SUITE 1700NEW YORK, NY 10006-3791UNITED [email protected]

Submission Plaintiff's Notice of Reliance

Filer's Name David B. Goldstein

Filer's e-mail [email protected]

Signature /David B. Goldstein/

Date 03/31/2011

Attachments Rebuttal.Notice of Reliance.remand.pdf ( 5 pages )(28547 bytes )1.Berger Dep Exc.pdf ( 21 pages )(715723 bytes )1.Berger Dep Ex. 1.pdf ( 29 pages )(824550 bytes )2.Hanono Dep Excerpts.pdf ( 24 pages )(815619 bytes )3.Armenteros Dep Excerpts.pdf ( 32 pages )(1239594 bytes )4.Montagne declaration.pdf ( 12 pages )(311847 bytes )5.Plaintiff Initial Disclosures.pdf ( 7 pages )(44909 bytes )6.Pl. Resp. to Def. 1st Interrog.pdf ( 14 pages )(648409 bytes )7.IPCPR.pdf ( 9 pages )(1772217 bytes )

http://estta.uspto.gov

IN THE UNITED STATES PA TENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TR IAL AND APPEAL BOARD __________________________________________ : CORPORACION HABANOS, S.A., :

: Opposer, : Opposition No. 91152248

: - against - :

: GUANTANAMERA CIGAR CO., :

: Applicant. :

__________________________________________:

SUPPLEMENTAL REBUTTAL NOTICE OF RELIANCE OF OPPOSER CORPORACION HABANOS, S.A.

Opposer Corporacion Habanos, S.A. (“Opposer”) hereby notifies the Trademark Trial

and Appeal Board and Applicant Guantanamera Cigar Co. (“Applicant” or “GCC”) that,

pursuant to the Board’s Order, dated September 28, 2010 (Dkt. No. 109), the Stipulation

Regarding Trial Testimony and Documentary Evidence, dated January 4, 2011 (Dkt. No. 118),

and the Board’s Order, dated January 6, 2011, granting said Stipulation (Dkt. No. 119), Opposer

intends to rely on the documents and testimony identified herein, true and accurate copies of

which are filed herewith, in the trial of the above-captioned matter, in addition to the evidence

previously admitted in this proceeding prior to remand, and the evidence Opposer has

subsequently filed with the Board, including, without limitation, in Opposer’s Notice of Reliance

and the Stipulation thereto, both filed September 25, 2006; Opposer’s Rebuttal Notice of

Reliance, filed January 12, 2007; Opposer’s Supplemental Notice of Reliance, filed January 21,

2011; Opposer’s Notice of Filing of Exhibits to Trial Testimony of Jose L. Montagne, filed

January 21, 2011, and the trial testimony that has been filed with the Board (Dkt. Nos. 59-63, 66,

73, 75, 121-25, 145, 149, 151).

Nothing filed herewith in rebuttal to Applicant’s Supplemental Notice of Reliance, filed

March 11, 2011, concedes or waives any rights or objections of Opposer concerning the

admissibility, including on grounds of relevance, hearsay, competence or authenticity, of any

documents or testimony filed or referenced by Applicant in that Supplemental Notice of

Reliance, and Opposer reserves all such rights and objections.

1. Excerpts from the Deposition of Enrique Berger in the District Court Action,

taken in Miami, Florida on September 25, 2009 and Deposition Exhibit 1. Mr. Berger is the

principal of the manufacturer, distributor and internet retailer of one of GCC’s

GUANTANAMERA cigar products, and one of two witnesses GCC identified pursuant to the

Court’s Opinion and Order sanctioning GCC for discovery misconduct. See Guantanamera

Cigar Co. v. Corporacion Habanos, S.A., 263 F.R.D. 1, 5-7 (D.D.C. 2009). The deposition

excerpts and Exhibit 1, together with the prior excerpts of his deposition and Exhibits filed as

Exhibit 2 to Opposer’s Supplemental Notice of Reliance, are relevant to rebut Applicant’s

assertion that Opposer “could have simply deposed or surveyed any of [the] merchants and/or

their customers [who purchased GCC’s GUANTANAMERA cigars] but chose not to do so”;

Applicant’s suggestion that GCC engaged in extensive sales of GUANTANAMERA cigars,

when in fact the sales were extremely tiny; and Applicant’s assertion that cigar retailers have

knowledge concerning the actual reasons that consumers have purchased GCC’s

GUANTANAMERA cigars, or the identity of said consumers.

2. Excerpts from the Deposition of Mauricio Hanono in the District Court Action,

taken in Miami, Florida on September 23, 2009. Mr. Hanono, a cigar retailer in Miami, is the

other of the two witnesses GCC identified pursuant to the above-referenced Court Opinion and

Order. The deposition excerpts, together with the prior deposition excerpts and Exhibits filed as

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Exhibit 3 to Opposer’s Supplemental Notice of Reliance, are relevant to rebut Applicant’s

assertion that Opposer “could have simply deposed or surveyed any of [the] merchants and/or

their customers but chose not to do so”; Applicant’s suggestion that GCC engaged in extensive

sales of GUANTANAMERA cigars, when in fact the sales were extremely tiny; Applicant’s

assertion that cigar retailers have knowledge concerning the actual reasons that consumers have

purchased GCC’s GUANTANAMERA cigars, or the identity of said consumers; and Applicant’s

assertion that U.S. cigar consumers are “extremely sophisticated and discerning purchasers.”

3. Excerpts from the Deposition of Jorge Armenteros in the District Court Action

taken in New York, New York, on December 9, 2009, which, together with the prior deposition

excerpts and Exhibits filed as Exhibit 4 to Opposer’s Supplemental Notice of Reliance, are

relevant to rebut Applicant’s assertion that Opposer “could have simply deposed or surveyed any

of [the] merchants and/or their customers but chose not to do so”; Applicant’s suggestion that

GCC engaged in extensive sales of GUANTANAMERA cigars, when in fact the sales were

extremely tiny; Applicant’s assertion that cigar retailers have knowledge concerning the actual

reasons that consumers have purchased GCC’s GUANTANAMERA cigars, or the identity of

said consumers; and Applicant’s assertion that U.S. cigar consumers are “extremely

sophisticated and discerning purchasers.” Because Applicant appears to intend to rely on Mr.

Armenteros as an “expert,” Opposer intends to move to strike him as an expert at the appropriate

time.

4. The Declaration of Jose L. Montagne, dated April 26, 2010, and Exhibits thereto,

filed in the District Court Action in Opposition to Habanos, S.A.’s Motion for Contempt. The

Exhibits are being filed herewith under seal, as they were designated “HIGHLY

CONFIDENTIAL” by GCC pursuant to the Protective Order entered in the Federal Court

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Action, and filed under seal in that action. The Declaration and Exhibits are relevant to rebut

Applicant’s suggestion that GCC engaged in extensive sales of GUANTANAMERA cigars,

when in fact the sales were extremely tiny; and Applicant’s assertion that Opposer “could have

simply deposed or surveyed any of [the] merchants and/or their customers but chose not to do

so.”

5. Applicant’s Initial Disclosures, served on August 11, 2008, in the District Court

Action, which are relevant to rebut Applicant’s suggestion that GCC engaged in extensive sales

of GUANTANAMERA cigars, when in fact the sales were extremely tiny; Applicant’s assertion

that Opposer “could have simply deposed or surveyed any of [the] merchants and/or their

customers but chose not to do so”; and Applicant’s assertion that cigar retailers have knowledge

concerning the actual reasons that consumers have purchased GCC’s GUANTANAMERA

cigars, or the identity of said consumers.

6. GCC’s Responses to Defendant’s First Set of Interrogatories, dated December 4,

2008, served in the District Court Action, which are relevant to rebut Applicant’s suggestion that

GCC engaged in extensive sales of GUANTANAMERA cigars, when in fact the sales were

extremely tiny; Applicant’s assertion that Opposer “could have simply deposed or surveyed any

of [the] merchants and/or their customers but chose not to do so”; and Applicant’s assertion that

cigar retailers have knowledge concerning the actual reasons that consumers have purchased

GCC’s GUANTANAMERA cigars, or the identity of said consumers.

7. Pages from the website of the International Premium Cigar and Pipe Retailers

Association (“IPCPR”), www.rtda.org, printed on March 30, 2011, which are relevant to rebut

Applicant’s assertion of “the relative ease of conducting a survey” of attendees by Opposer at the

IPCPR trade show, or that such attendees are cigar consumers.

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http://www.rtda.org/

5

Dated: New York, New York March 31, 2011

Respectfully submitted,

_/David B. Goldstein/_____ DAVID B. GOLDSTEIN RABINOWITZ, BOUDIN, STANDARD, KRINSKY & LIEBERMAN, P.C. 45 Broadway, Suite 1700 New York, New York 10006-3791 Tel: (212) 254-1111 [email protected] Attorneys for Opposer Corporation Habanos, S.A.

CERTIFICATE OF SERVICE

The undersigned certifies that a true and correct copy of Opposer Corporacion Habanos,

S.A.’s Supplemental Rebuttal Notice of Reliance, and Exhibits referenced therein, was served on

Applicant by mailing, postage prepaid, said copy on March 31, 2011, via U.S. first class mail,

postage prepaid, to:

FRANK HERRERA H NEW MEDIA 1749 N.E. Miami Court, Suite 308 Miami, Florida 33132 [email protected] Counsel for Applicant Guantanamera Cigar, Co

____/David B. Goldstein/__ DAVID B. GOLDSTEIN

mailto:[email protected]




: - against - :

: GUANTANAMERA CIGARS COMPANY, :

: Applicant. :

__________________________________________:

EXHIBIT 1 TO SUPPLEMENTAL REBUTT AL NOTICE OF RELIANCE OF OPPOSER CORPORACION HABANOS, S.A.



: - against - :


: Applicant. :

__________________________________________:


IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TR IAL AND APPEAL BOARD __________________________________________ : CORPORACION HABANOS, S.A., :


: - against - :


: Applicant. :

__________________________________________:


UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

GUANTANAMERA CIGARS COMPANY, A Florida Corporation, Residence address of: 285 NW 27 Avenue, Miami, Florida 33125, Plaintiff (Appellant of TTAB decision), v. CORPORACION HABANOS, S.A. A Cuban Entity Jointly Owned by the Cuban Government and a Spanish Entity Known as Altadis, S.A., Residence address of: Avenida 3ra, No. 2006 Miramar, Havana, Cuba, Defendant (Appellee of TTAB decision). ________________________________/

CASE NO:

08-721 (RCL)

PLAINTIFF’S INIT IAL DISCLOSURES

Pursuant to Federal Rules of Civil Procedure 26(a)(1) and Local Rule 26.2(a), Plaintiff,

Guantanamera Cigars Company makes the following initial disclosures:

1. The name and, if known, the address and telephone number of each individual likely to have discoverable information – along with the subjects of that information – that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment.

a. Jose Montagne

Guantanamera Cigars Company 5601 Collins Avenue, Suite M-1 Miami Beach, Florida 33141 This person has knowledge as to: (a) ownership of the trademark “GUANTANAMERA”; (b) the products on which the trademark has been associated with; (c) the marketplace for this product; (d)

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competitors of this product; and (e) all other issues and matters relating to this dispute.

b. Any and all attendees and vendors present at the International Premium Cigar & Pipe Retailers Association (“IPCPR”, formally known as “RTDA”) trade show held at the Venetian Hotel in Las Vegas, Nevada between July 14, 2008 and July 17, 2008. These people have knowledge about Plaintiff’s use of the mark and why the mark will ultimately not be found to be primarily geographically deceptively misdescriptive. These people will also have knowledge of the extensive use of the references to Cuba, Havana and other similar terms and designs in the U.S. cigar industry.

. c. Any and all attendees and vendors present at the International

Premium Cigar & Pipe Retailers Association (“IPCPR”, formally known as “RTDA”) trade show held in 2007.

These people have knowledge about Plaintiff’s use of the mark and why the mark will ultimately not be found to be primarily geographically deceptively misdescriptive. These people will also have knowledge of the extensive use of the references to Cuba, Havana and other similar terms and designs in the U.S. cigar industry.

d. Manuel Garcia Morejon.

This person presumably has knowledge as to: (a) the products on which the trademark has been associated with; (b) the marketplace for this product; (c) competitors of this product; and (d) all other issues and matters relating to this dispute.

e. Executives of Habanos S.A. including but not limited to Oscar Basulto and Jaime Garcia-Andrade.

These people presumably have knowledge as to: (a) the products on which the trademark has been associated with; (b) the marketplace for this product; (c) competitors of this product; and (d) all other issues and matters relating to this dispute.

f. Flora Gonzalez.

This person was previously identified as an expert for Defendants

g. Glenn Gutin of Cigartv.com.

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This person will help establish Plaintiff’s relevant consumers.

h. Columnists and/or editors of Smoke Magazine, Cigar Aficionado, Cigar Snob Magazine, Smoke Shop Magazines and other industry magazines.

These individuals will help establish the relevant consumers of Plaintiff’s products and have knowledge of the extensive use of the references to Cuba, Havana and other similar terms and designs in the U.S. cigar industry.

i. Any and all United States cigar store retailers.


j. Any and all United States distributors of cigars.


k. Any and all witnesses listed, identified or called upon in the TTAB

proceeding.


2. A copy – or a description by category and location – of all documents,

electronically stored information, and tangible things that the disclosing party has in its possession, custody, and control and my use to support its claims or defenses, unless the use would be solely for impeachment.

a. United States Patent and Trademark Office records for the mark

“GUANTANAMERA” as used in connection with rum and any other pending PTO Proceedings;

b. Pleadings in TTAB proceeding;

c. Discovery in TTAB proceeding;

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d. Any of Plaintiff’s merchandising materials;

e. Any of Plaintiff’s Point of Purchase materials;

f. Plaintiff’s cigar boxes;

g. Plaintiff’s cigars;

h. Plaintiff’s cigar wrappers;

i. New Updates to Cuban travel law prohibiting the importation of cigars from Cuba to United States. 31 C.F.R. § 515.101 et. seq.;

j. Online news stories about Imperial Tobacco’s acquisition of

Altadis, S.A.; k. SMOKE’S Cigar Review of Smoke Magazine Summer 2008,

Volume XIII, Issue 3;

l. Internet printouts of relevant cigar industry news and articles; and

m. Plaintiff reserves the right to supplement its Initial Disclosure.

3. A computation of each category of damages claimed by the disclosing party – who must also make available for inspection and copying as under Rule 34 the documents or other evidentiary material, unless privileged or protected from disclosure, on which each computation is based, including materials bearing on the nature and extent of injuries suffered.

NONE.

4. For inspection and copying as under Rule 34, any insurance agreement under

which an insurance business may be liable to satisfy all of part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy the judgment.

NONE.

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Respectfully submitted, By: s/LISA N. KAUFMAN Lisa N. Kaufman, Esq. D.C. Bar No. 351866 Admitted to U.S.D.C. D.C. 3408 Rebecca Jane Way Alexandria, Virginia 22310 Tel.: (703) 960-0805 Fax.: (703) 960-0805*51 Email: [email protected] And

Frank Herrera Florida Bar No. 494801 Email: [email protected]

Gustavo Sardiña Florida Bar No.: 31162 Email: [email protected] JanPaul Guzman Florida Bar No.: 16064 Email: [email protected] ROTHSTEIN ROSENFELDT ADLER 401 East Las Olas Blvd., Suite 1650 Fort Lauderdale, Florida 33301 Telephone: (954) 522-3456 Facsimile: (954) 527-8863 To be admitted pro hac vice

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CERTIFICATE OF SERVICE

I HEREBY CERTIFY that on August 11, 2008, I certify that the foregoing is being

served this day upon: David B. Goldstein, Esq., Rabinowitz, Boudin, Standard, Krinsky, &

Lieberman, P.C., 111 Broadway, Suite 1102, New York, NY 10006-1901 (Tel: 212-254-1111

x103 / (Fax) 212-674-4614) via email to [email protected] and U.S. Mail.

By: s/LISA N. KAUFMAN Lisa N. Kaufman, Esq. D.C. Bar No. 351866




: - against - :


: Applicant. :

__________________________________________:


estta tracking number: 03/31/2011 in the united states

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