Habanos S. A., the Cuban Government owned Cigar Marketer Opposes US Company Xikar's Trademark Application for "Havana Collection"

As I write this, I find it amusing that I just went to my humidor and spotted a new cigar by Xikar named "Defiance". It was given to me by Xikar's Executive Vice President, Sales & Marketing, Jerry Dear when I met him last weekend at The Big Smoke.

Upon my return from Las Vegas I learned of the subject of this article. I phoned Jerry and he connected me with Kurt Van Keppel, President of Xikar. Mr. Van Keppel certainly expressed defiance to Habanos S. A.'s objection to the Xikar trademark application.

"Habanos SA is the arm of the Cuban state tobacco monopoly, Cubatabaco, that controls the promotion, distribution, and export of Cuban cigars and other tobacco products worldwide."¹ (Habanos S. A. on Wikipedia)

Even though Xikar just came out with a new cigar, they are primarily a manufacturer of cigar accessories. It is their line of cigar cutters named Havana Collection that Habanos S. A. is taking issue with.

It was incorrectly reported on the Fox News website that Habanos is suing Xikar. Mr. Van Keppel said there is no lawsuit and expressed his opinion that if there was Habanos would easily lose. He said they filed an objection to the trademark application as their chances may be better in the venue of the U.S. Patent and Trademark Office. You can read the entire objection in this PDF file.

I spoke with Lawrence Walters of Weston, Garrou, Walters & Mooney, an Orlando FL law firm covering several areas of law, including copyright and trademarks. Mr. Walters told me there are specific legalities involved in trademarks that include a geographic descriptor. Usually, the trademark owner or applicant will need to disclaim any rights in the geographic descriptor alone. In this case, the word "Havana" alone may need to be disclaimed. Mr. Walters was also of the opinion that Habanos objection to the trademark application on the basis of using the word "Havana" in the context of the cigar industry is weak at best. Based on my brief description of the situation he stated that he feels Xikar is in a good position to win.

It is interesting that Habanos trademark of "HABANOS UNICOS DESDE 1492" is for "raw tobacco, cigars, cigarettes, cut tobacco rappee, matches, tobacco, tobacco pipes, pipe-holders, ashtrays, match boxes, cigar cases, and humidors".² So they have the trademark for tobacco products and cigar accessories, but not specifically cigar cutters. This seems to be good for Xikar as well.

Many of our readers will know that there are several non-Cuban cigars that have descriptors that evoke Cuba. An interesting example is the live trademark issued to Nicaragua Tobacco Imports, Inc. DBA Cuban Crafters for NICARAGUA HABANOS. The trademark listing even states "The English translation of the word "Habanos" is hand made cigars." That trademark is for "Goods and Services IC 034. US 002 008 009 017. G & S: cigar bands; cigar boxes; cigar cases; cigar cutters; cigar humidifiers; tobacco grown from Cuban seed tobacco in Nicaragua and cigars, cigarettes and cigarillos made from Cuban seed tobacco grown in Nicaragua. FIRST USE: 20040406. FIRST USE IN COMMERCE: 20040407."²

Again, that makes Habanos objection seem even less likely to succeed.

"We find it remarkable that the Cuban government, under the guise of Corporacion Habanos, would attempt to extend its totalitarian influence to control an American company using our own courts," said Van Keppel, co-founder and president of Xikar. "Even if it were legal for them to do business in the U.S., they have no basis for their opposition to our application." Events unfolded earlier this year, when Xikar, which now offers a full line of cigar cutters, lighters, humidification devices and humidors, applied for a trademark on the name of its "Havana Collection" product line. The application was made public in May, 2008, and was contested by Corporacion Habanos, S.A., arguing that its registration of the name "Habanos Unicos Desde 1492" (U.S. Reg. No. 2,177,837) would be harmed by Xikar's action.

"They have the name 'Habanos Unicos Desde 1492,' which translates to 'Unique Cuban Cigars Since 1492' and is registered for cigars," said Van Keppel. "We aren't referring to cigars in our application - just our accessory products - and we're using English "Havana Collection" to denote the style and culture of Havana. It's ludicrous that they would attempt to stretch their registration into a different language and meaning, representing different products AND in a country where it's not even legal for them to conduct business. They are trying to usurp our liberty to conduct business through strong-arm tactics reminiscent of their behavior toward private Cuban business back in 1959," concluded Van Keppel.

Habanos S. A. claims buyers will likely be confused by Xikar's usage of "Havana" in the name of its product line, but according to Xikar's patent and trademark attorney, David Wharton of Stinson, Morrison, Hecker, LLP, "Buyers will no more likely be confused than those who walk into a 'Tommy Bahama' store and know that the shirts weren't made in the Bahamas. In each instance, the name is meant to evoke a state of mind ... in our case, it is about the culture of Havana; not 'Made in Havana'," said Wharton. Van Keppel also noted Swiss Army Knives as another example.

Corporacion Habanos also claims in its Notice of Opposition that its registration of the "La Casa Del Habano" tagline enables it to claim service mark rights in this slogan for retail store services for tobacco products and smoker's accessories. "Once again," added Van Keppel, "they are stretching to suggest that their registration of this line gives them a basis to preclude our registration of a mark comprising different words, in a different language, with a different meaning and for a product line rather than retail store services. Furthermore, because their products are not even legally sold in the United States, they are simply advertising for the black market," concluded Van Keppel.

"Our understanding is that Corporacion Habanos, S.A. markets cigar cutters that are manufactured in Germany, leather goods produced in Spain and lighters whose origin is China," said Wharton, "so to suggest, as it does in its Notice of Opposition, that Havana Collection wrongfully implies that Xikar's products are made in Cuba is ironic, at best."

Mr. Van Keppel also asserted that Habanos' entire opposition is based on commercial property that they "stole" in 1959 when Castro's government seized control of businesses.

 

Sources: 1. Wikipedia 2. US Patent & Trademark Office