Cigar Weekly

In what should be the end of a years long process, the Mimai-based Guantanamera brand has defeated Habanos S.A. in District Court for the rights to use the brand name. Cigar Law (Frank Herrera,) whose firm has been fighting this case announced this afternoon on the Cigar Law blog. From the court documents found on the blog:

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
 
____________________________________
      )
GUANTANAMERA CIGAR CO.,             )
)
                   Plaintiff, )
)
            v.                                      ) Civil Action No. 08-0721 (RCL)
)
CORPORACION HABANOS, S.A.,  )
)
                   Defendant. )
____________________________________)
 
ORDER
 
 
Upon consideration of plaintiff’s motion [88] for summary judgment, defendant’s cross-
motion [86] for summary judgment, the oppositions and replies thereto, the applicable law, and
the entire record herein, it is hereby
ORDERED that plaintiff’s motion for summary judgment is GRANTED.  It is further
ORDERED that defendant’s motion for summary judgment is DENIED.  It is further 
ORDERED that plaintiff show cause within ten (10) days of this filing as to why it
should not be held in civil contempt for violating the Court’s Order [71] Dec. 10, 2009.  It is
further 
ORDERED that defendant's Motion for Enlargement of Defendant’s Time to Oppose
Plaintiff’s Motion for Summary Judgment  [108] is GRANTED, nunc pro tunc. Defendant’s
opposition of May 5, 2010 to Plaintiff’s Motion for Summary Judgment [88] shall be deemed
timely filed.  It is further
ORDERED that defendant’s Consent Motion for Enlargement of Defendant’s Time
Reply in Support of Defendant’s Motion for Civil Contempt [115] is GRANTED, nunc pro tunc.

On his blog, plaintiff's attorney Herrera stated "Full explanation to follow … right now … I’m speechless … 8 years on this … I’m a little blown away and will enjoy the success for the moment!"

More from the judgement:

MEMORANDUM OPINION
 
 
This case comes before the Court on cross motions for summary judgment filed by
plaintiff Guantanamera Cigar Company’s (“GCC”) and defendant Corporacion Habanos, S.A.
(“Habanos”). Upon reviewing the motions, the Court concludes that the Trademark Trial and
Appeal Board (“TTAB”) erred as a matter of law in applying the three-part test for primarily
geographically deceptively misdescriptive marks, which are barred from registration by the
Lanham Act, 15 U.S.C. § 1052(e)(3) (2006). Therefore, the Court grants the plaintiff’s motion
for summary judgment. 
I. FACTUAL BACKGROUND
 A.  General Background
GCC is a small company based in Coral Gables, Florida. (Notice of Opposition (“NO”) at
1.) GCC manufactures cigars in Honduras from non-Cuban seeds, then sells and distributes them
mainly in the Miami area, as well as other parts of the United States. (Montagne Dep. at 24:24–
25; Pl.’s Statement of Material Fact at 9.) GCC filed a trademark application for the mark
GUANTANAMERA for use in connection with cigars on May, 14, 2001. (NO at 1.) When translated, “guantanamera” means “(i) the female adjectival form of GUANTANAMO, meaning
having to do with or belonging to the city or province of Guantanamo, Cuba; and/or (ii) a woman
from the city or province of Guantanamo, Cuba.” (Op. U.S.P.T.O. at 2.) Many people are also
familiar with the Cuban folk song, Guantanamera, which was originally recorded in 1966. (Id. at
12–13.) 
Habanos, jointly owned by the Cuban government and a Spanish entity, manufactures
cigars. (Id. at 2.) The Cuban embargo prohibits Habanos from exporting cigars into the U.S. (Id.
at 5.) Habanos, however, owns trademarks on many cigar brands outside the U.S., including
registrations or applications for GUANTANAMERA in more than 100 countries in the world.
(Def.’s Mot. Summ. J. at 4, n.2.)  On December 29, 1998, Habanos applied for the mark in Cuba,
and registered the mark on March 13, 2001. Id. Habanos applied for a U.S. Trademark on April
15, 2002, but its application remains suspended because of GCC’s prior application. (Id. at 3–4.) 
Shortly after the TTAB published GCC’s application, Habanos filed an opposition, which
asserted that GUANTANAMERA was primarily geographically deceptively misdescriptive, and
therefore barred from registration. (Id. at 4.) The TTAB agreed and found that
GUANTANAMERA was primarily geographically deceptively misdescriptive and that Habanos
had standing to oppose registration. (Op. U.S.P.T.O. at 4–5, 21). GCC filed this appeal for a de
novo review of the TTAB’s Opinion dated February 29, 2008. (Compl. at 1) The parties cross-
filed for summary judgment. (Compl. at 1; Pl.’s Mot. Summ. J.; Def.’s Mot. Summ. J. at 1.)