habanos 8211 motion

8/6/2019 Habanos 8211 Motion

http://slidepdf.com/reader/full/habanos-8211-motion 1/41

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

ESTTA Tracking number: ESTTA422966

Filing date: 08/02/2011

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92053597

Party PlaintiffCorporacion Habanos, S.A., and Empresa Cubana Del Tabaco, d.b.a.Cubatabaco

CorrespondenceAddress

DAVID B GOLDSTEINRABINOWITZ BOUDIN STANDARD KRINSKY & LIEBERMAN PC45 BROADWAY, SUITE 1700NEW YORK, NY 10006-3791UNITED [email protected]

Submission Other Motions/Papers

Filer's Name David B. Goldstein

Filer's e-mail [email protected], [email protected]

Signature /David B. Goldstein/ Date 08/02/2011

Attachments H Gold Petitioners' Motion 8.2.2011.pdf ( 5 pages )(238685 bytes )H Gold D Goldstein decl. 8.2.2011.pdf ( 3 pages )(137349 bytes )H Gold Exhibits 1-6.pdf ( 32 pages )(1022718 bytes )

http://estta.uspto.gov/

http://estta.uspto.gov/



EXHIBIT 1



IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ________________________________________________

CORPORACION HABANOS, S.A., and EMPRESA )CUBANA DEL TABACO, d.b.a. CUBATABACO, )

)Petitioners, ))

v. ) Cancellation No. 92053597

)

ALEX GOLDMAN, ))

Registrant. )

)

PETITIONERS’ INITIAL DISCLOSURES

Pursuant to Fed. R. Civ. P. 26(a)(1), 37 C.F.R. § 2.120, Petitioners CORPORACION

HABANOS, S.A. ("Habanos, S.A.") and EMPRESA CUBANA DEL TABACO (“Cubatabaco”)

(together “Petitioners”) hereby make their initial disclosures, as follows:

Petitioners hereby reserve the right to supplement or to amend any and all parts of these

disclosures, including as additional information becomes available through discovery or

otherwise, and including to identify other or additional fact witnesses. Pursuant to Fed. R. Civ.

P. 26(a)(1)(A)(ii), nothing herein shall apply to documents not currently in the possession,

custody, or control of Petitioners, including publicly available documents which Petitioners may

use to support their claims or defenses.

1. Pursuant to Fed. R. Civ. P. 26(a)(1)(A)(i), Petitioners identify Ana Lopez Garcia,

Director of Marketing, Corporacion Habanos, S.A., Avenida 3ra, #2006, e/20 y 22, Miramar,

Havana, Cuba, and residing at Calle 480, between 9 th y Final, Guanabo, Havana City, Cuba. The

subjects of Sra. Garcia’s information include, but are not necessarily limited to, Petitioners’

Cuban origin cigar products; cigar products produced, sold, or marketed in Cuba and elsewhere;

Havana, Cuba’s role in the production and export of Cuban origin cigars; Petitioners’ marketing,



promotion, distribution and sales activities concerning Cuban origin cigars and tobacco; the use

and meaning of “Havana” and variants such as “Habana/o(s),” in connection with tobacco, cigars

and other tobacco products; and Petitioners’ trademarks and appellations (or denominations) of

origin, including, but not limited to, HABANA and HABANOS.

2. Pursuant to Fed. R. Civ. P. 26(a)(1)(A)(ii), Petitioners identify the following

categories of documents:

a. Publicly available documents that may be relevant to this proceeding, including in

magazines, books, newspapers, dictionaries, encyclopedias, databases such as those

maintained by Westlaw, Lexis/Nexis, and the USPTO, and internet documents,

concerning the meaning of “Havana,” “Habana,” “Habano” and related terms, including

concerning tobacco, cigars, and other tobacco products, and the cigar industry; Cuba’s

and Havana, Cuba’s renown as a source of cigars and cigar tobacco; the marketing of

cigars in the United States and elsewhere, including based on false and deceptive claims

of some association or connection to Cuba, Havana, Cuba, or Cuban-origin tobacco or

cigars, including by “Cuban seed” claims; the desire and interest of U.S. consumers for

cigars because of their belief that the cigars have a Cuban origin; Registrant’s “Habana

Gold” products; and documents filed with the USPTO, to the extent that any such

documents are in the possession, custody, or control of Petitioners, located in their offices

in Havana, Cuba or through their counsel in New York City.

b. Documents, to the extent they are relevant to this proceeding, concerning the

registrations, English-language translations, marketing, use and distribution of

Petitioners’ marks and appellations (denominations) of origin, including, but not limited

to, LA CASA DEL HABANO, HABANOS UNICOS DESDE 1492, HABANOS and

2



3

HABANA, and the production, distribution, marketing and sales of cigars in Cuba and

elsewhere. These documents are located in Petitioners’ offices in Havana, Cuba or

through their counsel in New York City.

Dated: May 19, 2011

Respectfully submitted,

By: /David B. Goldstein/

DAVID B. GOLDSTEIN

RABINOWITZ, BOUDIN, STANDARD,KRINSKY & LIEBERMAN, P.C.

45 Broadway – Suite 1700

New York, New York 10006-3791212-254-1111

[email protected]

Attorneys for Petitioners Corporacion Habanos,

S.A. and Empresa Cubana del Tabaco

CERTIFICATE OF SERVICE

The undersigned certifies that a true and correct copy of the foregoing Petitioners’ Initial

Disclosures was served on Registrant by mailing, postage prepaid, said copy on May 19, 2011,

via U.S. first-class mail, to:

Robert C. Faber

Ostrolenk Faber LLP1180 Avenue of the Americas

New York, NY 10036-8403

/David B. Goldstein/ David B. Goldstein

mailto:[email protected]

mailto:[email protected]



EXHIBIT 2



EXHIBIT 3



EXHIBIT 4



EXHIBIT 5



EXHIBIT 6