hb mtocompel

8/9/2019 HB mtocompel

1/103

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

ESTTA Tracking number: ESTTA351787

Filing date: 06/09/2010

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92051542

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

CorrespondenceAddress

David B. GoldsteinRabinowitz, Boudin, Standard, Krinsky et al.111 Broadway, Suite 1102New York, NY 10006-1901UNITED [email protected]

Submission Motion to Compel Discovery

Filer's Name David B. Goldstein

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

Signature /David B. Goldstein/ Date 06/09/2010

Attachments Motion to compel.pdf ( 21 pages )(59353 bytes )Declaration & Exhibits.pdf ( 81 pages )(4154153 bytes )


2/103



________________________________________________

CORPORACION HABANOS, S.A., and EMPRESA )

CUBANA DEL TABACO, d.b.a. CUBATABACO, ))

Petitioners, )

)v. ) Cancellation No. 92051542

) Registration No. 2,890,975

FINCK CIGAR COMPANY, ))

Registrant. )

)

MOTION TO COMPEL DISCOVERY AND TO SUSPEND PROCEEDINGS

Pursuant to 37 CFR 2.120(e), and TBMP 411, 510, 523, Petitioners Corporacion

Habanos, S.A. and Empresa Cubana Del Tabaco, d.b.a. Cubatabaco (Petitioners) hereby move

to compel discovery from registrant Finck Cigar Company (Finck or Registrant), to suspend

the instant proceeding with respect to all matters not germane to the motion pending disposition

of the motions to compel, and to reset the deadlines for close of discovery, pretrial disclosures

and testimony periods after disposition of the motion. As set forth in more detail below, and in

the Declaration of Daniel S. Reich (Reich Decl.), filed herewith, Petitioners made a good faith

effort to resolve the issues raised by this Motion, without success. See 37 C.F.R. 2.120(e)(1);

TPMP 523.02.

1. As set forth below, Petitioners seek to compel complete responses toInterrogatories 8, 10-15, 17-20, 22-23, 27-28, 30-32, and to Document Requests 1, 3, 5-8, 10-18,

20-28, 34-38, 43.


3/103

2

Background Facts

2. Fincks HAVANA BLEND mark, Registration No. 2,890,975, for cigars madefrom Cuban seed tobacco, was registered under section 2(f) of the Lanham Act (the Act) on

October 5, 2004. Petitioners filed a timely petition for cancellation dated October 2, 2009, in

which they asserted that Fincks Registration should be cancelled because, inter alia, Fincks use

of the mark is deceptive and primarily geographically deceptively misdescriptive for lack of the

requisite nexus with Havana, Cuba, Cuba, or Cuban-origin cigars, and deceptive and deceptively

misdescriptive in that it misdescribes Fincks cigars as originating in Cuba or Havana, Cuba,

pursuant to sections 2(a), (e)(1), (e)(3) of the Act; and alternatively, if Fincks mark is not found

to be deceptive, primarily geographically deceptively misdescriptive, or deceptively

misdescriptive, then Fincks use of the mark is merely descriptive and primarily geographically

descriptive, and has not become distinctive of Fincks goods. [D.E. 1] Finck filed its Answer

and Affirmative Defenses on November 16, 2009 [D.E. 4], and the parties exchanged Initial

Disclosures on January 13, 2010.

3. Finck has been represented by counsel at all times.4. Finck originally applied to register HAVANA BLEND for cigars. The United

States Patent and Trademark Office (USPTO) Examiner, David C. Reihner, issued an Office

Action, stating,

Registration is refused because the proposed mark consists of or comprisesgeographically deceptively misdescriptive matter in relation to the identified goods.

Trademark Act Section 2(e)(3), 15 U.S.C. 1052(e)(3) .... The primary significance of

the term Havana is geographic. The public is likely to believe that applicants goodscome from this place because Havana is renown for cigars. Furthermore, this belief

would materially influence consumers to purchase the goods because purchasers

would buy the goods with the mistaken belief that the goods originate in Havana,

Cuba, when they do not, and purchase the goods based upon that mistaken belief.

Petition, 13-14 (internal citations omitted); see HAVANA BLEND Application File. Finck


4/103

3

responded to the Office Action by amending its goods from cigars to cigars made from Cuban

seed tobacco, without providing any information to the USPTO supporting or explaining this

amendment, and did not otherwise take issue with the Examiners finding that the mark was not

registrable under section 2(e)(3) for cigars. Id. 15. Finck never claimed to the USPTO that it

used tobacco that itself came from Cuba in its HAVANA BLEND cigars.

5. This case raises many of the same issues as Corporacion Habanos, S.A. v. Anncas, Inc., 88 USPQ2d 1785 (TTAB 2008), in which the Board refused registration of the

mark HAVANA CLUB for cigars made from Cuban seed tobacco, pursuant to section 2(e)(3).

As here, the applicant first sought to register HAVANA CLUB for cigars. Id. at 1787, 1793.

As here, the same USPTO Examiner, Mr. Reihner, initially refused registration under section

2(e)(3). Id. at 1788. As here, the applicant amended its goods from cigars to cigars made

from Cuban seed tobacco, without any information supporting or explaining the amendment,

and the USPTO then published the mark for opposition. Id. at 1787. After discovery and a trial,

the Board held that there is an insufficient connection between Cuban seed tobacco, which is

descended from tobacco seeds taken from Cuba many decades ago, and Havana to support a

finding that cigars made from Cuban seed tobacco come from or originate in Havana. This is

particularly the case [when] the recordshows that cigars from Cuban seed tobacco share few, if

any, qualities or characteristics of genuine or 100% Cuban cigars. Id. at 1793 (finding that the

connection between applicants intended goods and Havana is far too tenuous). The Board,

however, did not explicitly adopt aper se rule that non-Cuban cigars claimed to be made from

Cuban seed tobacco cannot be registered under section 2(e)(3), but rather addressed the


5/103

4

evidence in that case, including the expert testimony submitted by Habanos, S.A., the Opposer

there, and one of the Petitioners here.1Id. at 1792-93.

6. Prior to serving discovery requests, Petitioners were aware from Fincks internetadvertising that Finck claimed to include in its Havana Blend cigars a small amount of tobacco

that Finck claimed to have been grown in Cuba in 1959, prior to the imposition of the U.S. trade

embargo (alleged Cuban Tobacco). In its advertisements, Finck variously claimed:

obviously we dont have a huge amount of this tobacco left, but there is enough in these cigars

to give them that unique Cuban flavor you cant get anywhere else; filler tobaccos from Brazil,

Nicaragua, Connecticut and a little pre-embargo Cuban filler; authentic Cuban tobacco... not

Cuban seed grown in Honduras or the Dominican Republic; the unique taste that comes only

from Cuban tobacco; limited number of bales of Cuban tobacco from 1959. See Reich Decl.

15, Ex. H.

7. In light of the Boards decision inAnncas; Fincks unelaborated amendment of itsgoods in its application from cigars to cigars made from Cuban seed tobacco; and its various

advertising claims regarding use of alleged Cuban Tobacco, Petitioners sought information in

discovery, as more specifically detailed below, specifically directed to Fincks Cuban seed

tobacco and alleged Cuban Tobacco claims, including evidence of the sources of the seeds and

tobacco, such as their claimed geographic origin and varietals, how much alleged Cuban

Tobacco Finck claims to use in its HAVANA BLEND cigars, the conditions under which the

alleged Cuban Tobacco from 1959 has been stored, persons with such knowledge, and what that

knowledge is, and how Finck promotes its HAVANA BLEND products, including any

1 Although not directly germane to this motion, it remains Petitioners view that a composite mark for

HAVANA ___, using a common or generic term such as CLUB or BLEND, isper se unregistrable fornon-Cuban origin cigars under section 2(e)(3), whether the goods are identified to the USPTO as cigars

or cigars made from Cuban seed tobacco.


6/103

5

associations with Havana, or Cuba, or alleged Cuban Tobacco. As inAnncas, the information

regarding the tobacco and tobacco seeds is also necessary for evaluation by Petitioners experts.

SeeAnncas, 88 USPQ2d at 1792-93. Petitioners also sought evidence supporting Fincks section

2(f) acquired distinctiveness representation to the USPTO.

8. Specifically, on February 9, 2010, Petitioners served by mail Petitioners First Setof Interrogatories (Interrogatories) and Petitioners First Request for Production of Documents

and Things (Document Requests), requiring service of written responses and production of

documents within 35 days, i.e., March 16, 2010, pursuant to FRCP 33 and 34, 37 CFR 2.120,

and TBMP 403. See Declaration of Daniel S. Reich (Reich Decl.), Exhs. A, B, filed

herewith. On March 12, 2010, counsel for Petitioners agreed to Fincks counsels request to

extend the time to respond until March 26, 2010. Reich Decl. 5 & Exh. C.

9. On March 26, 2010, Finck served Registrants Objections and Responses toPetitioners First Set of Interrogatories to Registrant (Interrogatory Responses), Registrants

Objections and Responses to Petitioners First Request for Production of Documents and

Things (Document Responses), 91 pages of documents, one Havana Blend cigar box, and

some Havana Blend cigar labels. Reich Decl. Exhs. D, E. Of the 91 pages of documents

produced, 16 were from the publicly available Application File, and 67 were unrelated

advertising for other products. Of the remaining 8 pages, 1 page appeared to be advertising for

HAVANA BLEND cigars from a catalog distributed by Wally Franck Ltd., 5 pages were

advertising for Fincks HAVANA BLEND cigars (3 pages from a 2010 catalog distributed by

Finck Cigar Company, and two pages of a printout of a page from the Finck Cigar Company web

site listing Havana Blend cigars), and two were photographs of a paper wrapper with writing that


7/103

6

states PRODUCT OF CUBA BOND and some numbers. Finck did not produce a privilege log

or identify any information or documents that it claimed were subject to a privilege.

10. As set forth below, Fincks Interrogatory responses and Document production arewoefully inadequate, and Finck should be compelled to provide complete Interrogatory

responses and document production.

Petitioners Good Faith Efforts to Resolve the Discovery Dispute

11. Prior to bringing this motion to compel, Petitioners made extensive good faithefforts, through telephone conference and correspondence with Finck, to resolve the issues

presented in this motion, but the parties have not been able to reach agreement. Reich Decl. 8.

12. At Petitioners request, counsel for the parties held a lengthy telephonic discoveryconference on April 14, 2010, in which counsel for Petitioners went over each individual

interrogatory response and document response and production that they contended were

inadequate and incomplete, including explaining why they considered the responses inadequate

and incomplete, as well as relevant to the cancellation proceeding, and requested that the

inadequate production be remedied. Reich Decl. 9, 10 & Exh. F. During the conference,

counsel for Finck did not represent that Finck had provided all the documents or other

information in Fincks possession, custody, or control responsive to the discovery requests, and it

is patently obvious that it had not done so. Reich Decl. 10.

13. During the conference, Petitioners counsel stated that they would be willing toaccept a representation by Finck that the amount of alleged Cuban Tobacco used in each

HAVANA BLEND cigar comprises no more than two percent of the cigars tobacco, in lieu of

documents and other information supporting that claim (but subject to production of documents

and other information supporting the claim that the tobacco in fact came from Cuba).


8/103

7

Petitioners counsel also stated that they would be willing to enter into a writing in which they

would accept a representation from Finck that, on a request by request basis, it had no other

responsive information or documents (with the exception of the amount and percentage of

alleged Cuban Tobacco that it uses in its HAVANA BLEND cigars, information that Finck

obviously knows), on the condition that Finck would not later seek to introduce additional

information or documents on those matters. Id.

14. In response to Fincks counsels concerns regarding possible confidential businessinformation, Petitioners counsel also indicated their willingness to accept the Boards Standard

Protective Order, subject to review for possible minor modifications, and Fincks counsel stated

that he would send a proposed protective order for review. Petitioners agreement, as well as the

fact that the Boards Standard Protective Order is automatically in place, eliminates Fincks

objections, identified below, to disclosure of claimed confidential business information.

Petitioners never received a proposed protective order, and Finck never invoked the Standard

Protective Order. Id.

15. Counsel for Finck represented to Petitioners counsel that he would speak with hisclient and respond within a few days regarding additional information or representations that no

other information existed, and the parties discussed a 30-day extension of discovery and trial

dates to allow for Fincks compliance. Id.

16. Having heard nothing from Fincks counsel, on April 21, 2010, Petitionersadvised Finck by telephone that Petitioners would file a consent motion requesting extension of

all pending dates by 30 days (extending the close of discovery from June 12, 2010 to July 12,

2010), and Finck agreed. Reich Decl. 11. Petitioners filed the consent motion on April 21,

2010, and the Board granted the motion that same day. [D.E. 5, 6]


9/103

8

17. Other than agreeing to the 30-day extension, to date, almost two months after theApril 14 conference call, Finck has not provided any response of any kind to any of the issues

raised during the call, including no privilege log, proposed protective order, documents,

interrogatory responses, or representations that there are no additional information or documents

concerning any of the disputed discovery, or requests for additional time to respond.

18. Having still heard nothing, despite Fincks representation on April 14 that itwould follow up with Petitioners within a few days to let them know whether it intended to

produce additional information or represent that no other information existed, on May 6, counsel

for Petitioners left a voice message for Fincks counsel Jeff Morgan asking him to contact

Petitioners counsel regarding the issues raised by Petitioners during the April 14, 2010 call.

Reich Decl. 12. Counsel for Finck did not return that call. Id. On the evening of May 6, 2010,

counsel for Petitioners sent Fincks counsel an email stating that more than three weeks had

passed since the April 14, 2010 call, and that Petitioners had not received any response from

Finck regarding the issues raised during that call. Reich Decl. 13 & Exh. G. In that email,

Petitioners asked Finck to provide Petitioners with any additional documents and interrogatory

responses, or any representations that there is no additional information in response to particular

requests, no later than May 14 30 days after the April 14 phone call and 49 days after the

agreed deadline of March 26 for Finck to respond to Petitioners discovery requests. Id.

Petitioners also informed Finck that if they did not receive the materials by May 14, they would

proceed accordingly, including filing a motion to compel the undisclosed information and

documents. Id.

19. Still having heard nothing, counsel for Petitioners called Mr. Morgan on June 4, just before noon local time, and left a voice mail for him, advising that in light of the non-


10/103

9

response, Petitioners had no choice but to move to compel the following week, requesting that

Mr. Morgan advise whether Finck intended to contest the Petition, and requesting that Mr.

Morgan call him. There has been no response to that June 4 message. Reich Decl. 16.

20. As of the date of this filing, June 9, 2010, Petitioners have not received anyresponse to the April 14 conference, May 6 letter, or June 4 phone call, nor have they received

any additional documents or interrogatory responses. Reich Decl. 14. Because Finck has

egregiously failed to comply with its discovery obligations, despite the extensive efforts of

Petitioners outlined above, and particularly given Fincks refusal to represent that it has no

further information or documents and things (and it obviously does), Petitioners are left with no

alternative but to bring this motion to compel.

ARGUMENT

I. The Board Should Compel Responses to Petitioners Interrogatories and Document

Requests

21. In Interrogatory No. 8, Petitioners requested that Finck state with particularitywhat it meant by the terms Cuban seed or Cuban seed tobacco as used in its USPTO

application, specifically whether it is referring to tobacco grown in Cuba; outside Cuba from

tobacco seeds that themselves came from Cuba; or tobacco that was grown outside Cuba from

tobacco seeds that are, or are claimed to be, descendants of seeds that previously came from

Cuba. Fincks entire response to Interrogatory 8 was:

Registrant uses pre-embargo tobacco grown in Cuba in its HAVANA BLEND

cigars. Registrant also uses tobacco grown in countries outside of Cuba, including

Honduras and Nicaragua, which is referred to by some as Cuban seed tobaccobecause it is either grown from seeds from Cuba or seeds that are descendants of

seeds that previously came from Cuba.

Reich Decl. Exh. D.


11/103

10

22. Interrogatories 12-15, 20, and 28 seek specific additional information regardingCuban seed tobacco grown outside of Cuba (as claimed by Finck in Response to Interrogatory 8),

including: the persons with information concerning any Cuban seed tobacco grown outside

Cuba used in its HAVANA BLEND cigars; where the tobacco is grown; how, where, when, and

from whom the tobacco and the Cuban seeds are obtained; the persons who obtain and/or

obtained the tobacco on behalf of Finck; the varietal of the tobacco; information concerning the

country of original of the actual tobacco seeds used; information concerning the claimed Cuban

origin of the seeds; the organoleptic (sensory) qualities or characteristics of the Cuban seed

tobacco; the manner of production, harvest, and growth of such tobacco; and the amount of

Cuban seed tobacco grown outside Cuba used in its HAVANA BLEND cigars.

23. Fincks entire response to all six of these Interrogatories is See Response toInterrogatory 8. Reich Dec. Exh. D. Yet, as is plain from the Interrogatory 8 Response quoted

above, nothing in that response even remotely addresses any of the specific inquiries in these six

Interrogatories, and the responses to these six Interrogatories are wholly non-responsive,

incomplete and improper, by any measure. Under the Boards decision inAnncas, and in light of

Fincks representation to the USPTO to overcome the refusal to register that its cigars are made

from Cuban seed tobacco, and its claim in Interrogatory 8, the information sought in these

Interrogatories is plainly relevant. Further, it is necessary to enable Petitioners experts to

properly prepare their Reports concerning Fincks Cuban seed tobacco claim. See Anncas, 88

USPQ2d at 1792-93. Particularly given that Finck refuses to represent that it has no additional

information in response to these six Interrogatories (and such a claim would be highly

implausible, if not outright impossible, unless Finck in fact does not use tobacco that it claims is


12/103

11

Cuban seed tobacco, which would raise separate issues), the motion to compel should be

granted as to these six Interrogatories.

24. Document Requests 5-8, 13-15, 17, 20, and 35-36 seek documents and thingsconcerning the Cuban seeds and Cuban seed tobacco that Finck represented to the USPTO

its HAVANA BLEND cigars are made from, including Fincks amendment to its identification

of goods from cigars to cigars made from Cuban seed tobacco; documents referring to

Cuban seed or Cuban seed tobacco that were reviewed or prepared by Finck prior to its

representation to the USPTO; what Finck meant by the terms Cuban seed or Cuban seed

tobacco; use of the term Cuban seed tobacco in relation to any of Fincks products or in the

cigar industry; any investigation, study or analysis conducted by Finck prior its representation to

the USPTO to verify that its HAVANA BLEND cigars are made from Cuban seed tobacco;

the characteristics, varietal, and origin of any tobacco used in HAVANA BLEND cigars,

including whether any of that tobacco is Cuban seed tobacco; any product of Cuban origin

used in HAVANA BLEND cigars; any alleged connection between HAVANA BLEND cigars

and Cuba or Havana, Cuba; documents concerning the actual seeds used to grow any tobacco

claimed to be from Cuban seed, including the country of origin of the seeds; how, where in

Cuba and when such seeds were grown, and how and where such seeds are obtained; when, how,

where, and from whom the Cuban seed tobacco was and/or is obtained; and samples of the

Cuban seeds and Cuban seed tobacco. For most of these 11 Document Requests, Finck

claimed either that it has no responsive documents or things, or identified the two photos of the

wrapper labeled Product of Cuba (with respect to Document Request 5, Finck identified 16

non-responsive pages from the Application File; with respect to Document Request 13, Finck

refers to its response to Interrogatory 23 which itself is non-responsive; with respect to


13/103

12

Document Request 36, requesting samples of the Cuban seed tobacco used in its HAVANA

BLEND cigars, Finck makes the frivolous objections of burdensomeness, lack of temporal

limitation, and relevance).2

But it is extremely implausible, if not impossible, that Finck has no

invoices, shipping documents, or other related documents for purchases it makes of tobacco

grown outside Cuba that Finck represented to the USPTO is Cuban seed tobacco. Likewise, it

is impossible that Finck uses tobacco that it claims is Cuban seed tobacco, both allegedly

grown in Cuba, and grown outside Cuba, and yet has no such tobacco in its possession, custody

or control, as requested in Document Requests 36 and 37. Particularly in light of Fincks refusal

to represent that it has no additional documents or things (and obviously it must), the Board

should compel Finck to produce documents and things responsive to these document requests.

25. Petitioners further note that Fincks representation to the Board that its cigars aremade from Cuban seed tobacco, and its sworn statement in response to Interrogatory No. 8 that

this tobacco includes Cuban seed tobacco grown outside of Cuba either grown from seeds

from Cuba or seeds that are descendants of seeds that previously came from Cuba necessarily

must be based either on documents or on information provided to Finck (or on both documents

and oral information), or else Finck just made up the claim to obtain a registration. Clearly, and

particularly in light ofAnncas, Petitioners are entitled to whatever information Finck has on this

claim (and if it in fact has none, then that fact will also be highly material).

2 Document Requests 5-8 ask Finck to provide certain documents concerning Cuban seed tobacco,

including documents reviewed by Finck prior to responding to the USPTO, and any verification by Finckprior to its representation to the USPTO that its HAVANA BLEND cigars are made from Cuban seed

tobacco. Other than identifying 16 non-responsive pages from the publicly available USPTO

Application File in response to Document Request 5, Finck claimed in its Response that it has no

documents responsive to these requests, but has refused to so represent following the conference call.

Given that fact, and the implausibility of no responsive documents, Petitioners are entitled to an order

compelling production of any such responsive documents. Petitioners intend to hold Finck to that

representation and to preclude Finck from introducing any such documents later in this proceeding.


14/103

13

26. Interrogatories 10-11, 17-20, 22-23, 27, 30-32, and Document Requests 16, 18,21-28, 37-38 seek information concerning the claim that Finck possesses and uses alleged Cuban

Tobacco from 1959 in its HAVANA BLEND cigars, including information about the source and

type of that tobacco, its storage over the past 50 years, and the amount and percentage of alleged

Cuban Tobacco that is used in HAVANA BLEND cigars, including sufficient information for

Petitioners to independently test the veracity of such claims, and samples of said tobacco and

cigars. With the exception of an extremely vague, incomplete and inadequate response to

Interrogatory 10, generally repeated in response to Interrogatory 11, Finck has failed to produce

any of the requested information, and has refused to represent that it does not have any such

information (which representation would obviously be false). Indeed, Finck does not deny that it

has documents or information responsive to many of the requests. Fincks objection to several of

the requests on the ground they seek disclosure of confidential business information

(Interrogatory Responses 19, 22, 33 and Document Responses 23-26) is no excuse, as Petitioners

stated their willingness to enter into a Protective Order, the Boards Standard Protective Order is

automatically in place, and Finck has acknowledged that a suitable Protective Order would

obviate this objection. Reich 15, Exhs. D at 2, E at 2.

27. Petitioners are clearly entitled to test through discovery Fincks claim that itsHAVANA BLEND cigars use tobacco grown in Cuba over 50 years ago, and how much tobacco

purportedly from Cuba it uses in its cigars, for several reasons, each of which is sufficient by

itself. Petitioners are entitled to be extremely skeptical of this highly unlikely claim of use of

actual 50-year old Cuban origin tobacco, particularly in light of the claim that this single source

has been used to supply cigars by Finck since 1993 (and, before that, by its predecessor), and to

require Finck to produce whatever evidence it has to support this suspect claim. Notably, Finck


15/103

14

failed to claim before the USPTO that it uses tobacco from Cuba, instead merely claiming that it

used Cuban seed tobacco, which is commonly used to refer to tobacco grown outside of Cuba,

and claimed to be grown from seeds descended from seeds from Cuba. See Anncas, 88 USPQ2d

at 1792-93. Indeed, it makes no sense for Finck to have responded to the USPTOs section

2(e)(3) refusal by claiming its cigars are made from Cuban seed tobacco and not tobacco from

Cuba, if that is indeed the case. The unsubstantiated assertion in response to Interrogatory 23

that pre-embargo Cuban tobacco was grown in or about 1959 is plainly incomplete, and Finck

should be compelled to produce all information, including documents in support of this highly

suspect claim. Indeed, the otherwise inexplicable refusal to produce or to represent that it has

information or documents heightens the likelihood that the Cuban Tobacco claim is bogus.

28. Second, even if Finck can establish that it does use some tobacco from Cuba from1959, Petitioners are entitled to test how much alleged Cuban Tobacco it uses in its cigars,

including whether the amount might be considered sufficient to constitute the main component

or ingredient of the cigars. See TMEP 1210.03 (suggesting a product might be found to

originate from a place ifthe main component or ingredient is made from that place); see, e.g.,

Anncas, 88 USPQ2d at 1791 (a product might be found to originate from a place where the

main component or ingredient was made in that place) (citing In re Joint-Stock Co. Baik, 80

USPQ2d 1305 (TTAB 2006)). Obviously, and indisputably, Finck knows how much alleged

Cuban Tobacco it uses in its cigars, both by amount and percentage, and it simply refuses to

produce that information. See Reich Decl. Exhs. D, E (responses to Interrogatory 19 and

Document Request 23). Its assertion in response to Interrogatory 11 that it has no knowledge of

how much tobacco it purchased is not credible, indeed it is absurd, and notably, Finck refuses to

represent that it does not have any additional information. Finck knows how much alleged


16/103

15

Cuban Tobacco it has now, it knows how much it uses, and it can certainly estimate the number

of bales it purchased and the approximate quantity it purchased, even if not an exact figure to the

kilogram. Further, Petitioners are clearly entitled to the information that would enable them to

independently verify this figure, whether specifically or generally, which is a simple function of

knowing the weight of the alleged Cuban Tobacco purchased, the current weight of the

remaining alleged Cuban Tobacco, the number of HAVANA BLEND cigars produced, and the

weight of an individual cigar. As noted, Petitioners offered to forego any of this information

(other than evidence that the tobacco is in fact from Cuba), if Petitioners represented that the

amount of alleged Cuban Tobacco is less than 2% of each cigar.

3

Finck has refused to do so, or

to provide any information about the amount of alleged Cuban Tobacco used in its HAVANA

BLEND cigars, although it obviously has this information. For example, Fincks response to

Interrogatory 18 claims that it does not maintain information in the normal course of business

about the weight in grams of its HAVANA BLEND cigars. Such claim, even if true, does not

excuse Fincks failure to provide that information, which is clearly in its possession, custody or

control, and easily discernible, at least with respect to currently existing cigars. Interrogatories

11, 18-19, 30, 32 and Document Requests 18, 21-23, 25-27 seek this basic information, which is

obviously and indisputably in Fincks possession, whether in documents or otherwise, but which

Finck has refused to produce.4

3 For example, using a typical average of 4 grams for a medium sized cigar, if Finck produced a million

HAVANA BLEND cigars a year since 1993 when it purchased the HAVANA BLEND brand and thealleged Cuban Tobacco, then it consumed 68,000 metric tons of tobacco since then, assuming no waste.

If Finck purchased two metric tons of alleged Cuban Tobacco in 1993, and has one metric ton left today,

then the percentage of alleged Cuban Tobacco in its HAVANA BLEND cigars has been, on average 1.5%

(1/68 of the cigar).

4 In response to Interrogatory 30 and Document Request 26, requesting sales volume information since

Finck began using the mark, Finck stated that it will provide estimated annual sales volume of cigars

bearing the HAVANA BLEND mark for the last five years upon entry of a suitable protective order. As


17/103

16

29. Third, as noted, and despite Fincks refusal to produce this information indiscovery, Finck repeatedly emphasizes in its advertising that it has limited quantities of alleged

Cuban Tobacco, and that it only uses a little amount of alleged Cuban Tobacco in its HAVANA

BLEND cigars, but that it uses enough in these cigars to give them that unique Cuban flavor.

Seepara. 6,supra; Reich Decl. 15, Ex. H. Obviously, then, Finck has this information. That

Finck exploits this information to sell its deceptively marked product, but then refuses to produce

the information in discovery is inexcusable, and highly improper. Petitioners are clearly entitled

to test these claims, including how much alleged Cuban Tobacco Finck has and how much it

uses, and to allow Petitioners experts to consider Fincks claims about the effect of such

tobacco.

30. Document Requests 1, 3, 11, and 34 seek documents concerning Fincks adoptionor selection of the mark HAVANA BLEND; the design, or development and creation of any

design, lettering, text, trade dress, or packing, used or considered for use in connection with the

mark; marketing, promotion and advertisement of HAVANA BLEND cigars; and samples of the

packaging or shipping materials, trade dress, text, labels, cigar bands, and boxes or containers for

products packaged using the HAVANA BLEND mark. Petitioners are entitled to the requested

material as the Board has repeatedly found that promoting a false goods-place association is

strong evidence that the public itself makes the same association, and that such association is

material. See, e.g., Corporacio Habanos, S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473,

1479 (TTAB 2008) (Promoting [a] false goods-place association [with Cuba] suggests that

applicant intended consumers of its goods to make the same association of the goods with

noted, Finck never proferred a Protective Order, although it stated it would (and although the Boards

Standard Protective Order is automatically in place) and has never produced the sales information. In any

event, five years of sales information would be inadequate to test the veracity of any usage of alleged


18/103

17

Cuba.); In re Jacks Hi-Grade Foods, Inc., 226 USPQ 1028, 1030 (TTAB 1985)

(NEOPOLITAN; applicants labels reinforce the Italian connection by virtue of the product is

[sic] being described as Italian sausage as well as by a depiction of a simulated Italian flag)

(emphasis added); In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1517 (TTAB 2001)

(TOSCANA; Applicants ... catalogs readily foster a goods/place association between its

furniture and Tuscany by referring to Europes Mediterranean coast and European

sensibility); Scotch Whiskey Assn v. Consolidated Distilled Prods., Inc., 210 U.S.P.Q. 639,

642 (N.D. Ill. 1981) (LOCH-A-MOOR; geographic deceptiveness reinforced by the label

[which] displays a castle and refers to a Scottish island). Here, Petitioners have some

advertising samples showing that Finck promotes a false goods/place association with Cuba in its

promotional materials and advertising. Reich Decl. Exh. H. Finck cannot pick and choose

which advertising, packaging, or promotions, it produces. Fincks production of one catalog that

included 3 pages relating to HAVANA BLEND cigars, 1 page advertising HAVANA BLEND

cigars that appears to be from a catalog distributed by Wally Franck Ltd., two pages of a printout

of a page from the Finck Cigar Company web site listing Havana Blend cigars, a single

HAVANA BLEND cigar box and some HAVANA BLEND cigar labels is inadequate. Absent a

single representation that there are no other advertisement, promotion, or packaging materials, or

that whatever there is is identical to those six pages and box, Fincks production is incomplete.

31. Document Request 10 seeks documents sufficient to show the channels of tradethrough which Finck has sold HAVANA BLEND cigars, including documents sufficient to

identify the persons, including retail entities, to which those cigars are distributed, or through

which those cigars are sold. Petitioners are entitled to this information which relates to one of

Cuban Tobacco that Finck might claim, and there is no reason it should not be compelled to produce the

sales volume information that it has.


19/103

18

the factors set forth inIn re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973)

(similarity of trade channels is a factor to be considered in testing for likelihood of confusion),

and is therefore relevant to Petitioners 2(d) claim.

32. Document Request 12 seeks documents concerning the manufacture of HAVANABLEND cigars, sufficient to identify all former or current manufacturers and places of

manufacture of the tobacco of any such cigars. Fincks response that it has no documents

responsive to this request is absurd. It is simply not possible that Finck has no documents

concerning the manufacture of its own cigars and the tobacco used therein.

33.

Document Request 43 seeks documents concerning Registrants denial of

allegations in Petitioners Petition to Cancel. Fincks objection that the request for these

documents is overly broad, unduly burdensome, and not properly limited in temporal scope is

baseless. Petitioners request is directly relevant to the claims in this action. The notion that a

party can deny the factual allegations in a complaint and then refuse to produce the supporting

documents finds no support in the law. Finck fails to explain how document production would

be unduly burdensome. Certainly, asking Finck to produce more than some catalog pages, a

printout of an internet web page, a cigar box, some labels, publicly available documents filed

with the USPTO, and two photos of a wrapper is not overly burdensome.

34. To the extent Finck fails to provide the information and materials sought in theabove-listed Interrogatories and Document Requests and attempts to introduce any such

documents or other information in this proceeding, at trial, on summary judgment, or otherwise,

Petitioners intend to ask that the Board estop and preclude Finck from introducing any such

information sought in these discovery requests. See TBMP 411.04, 527.01(e). See, e.g.,


20/103

19

ConAgra Inc. v. Saavedra, 4 USPQ2d 1245, 1247 n.6 (TTAB 1987) (exhibits excluded from

consideration because encompassed by discovery requests and not produced during discovery).

35. Because Petitioners have been, and will continue to be, prejudiced by Fincksfailure to adequately respond to its discovery requests, which cannot be excused by Fincks

objections, Petitioners respectfully request that Finck be compelled to produce the required

discovery. As a result of Fincks failure to provide complete and adequate responses to their

discovery requests, Petitioners have been unable to prepare their expert disclosure or to prepare

for the depositions of Henry W. Finck, Sr. and Henry W. Finck, Jr., identified by Finck,

respectively, as its President and Vice President Petitioners are entitled to the requested

information in order to allow their expert to prepare to testify regarding whether Fincks cigars

made from Cuban seed tobacco should be deemed to originate from Havana, and in order to

prepare for the depositions of Fincks principals. See, e.g.,Anncas, 88 USPQ2d at 1789, 1792-

93.

II. The Board Should Suspend Proceedings and Reset Deadlines After Disposition of

the Motion

36. Pursuant to TBMP 510.03(a), 523.01 and 37 CFR 2.120(e)(2), [w]hen a party files a motion for an order to compelthe case will be suspended by the Board with

respect to all matters not germane to the motion. 37 CFR 2.120(e)(2). Petitioners also request

that the Board issue an order resetting the deadlines for discovery and trial periods after

disposition of the motion. See 37 CFR 2.120(a)(2) (The discovery period may be

extendedupon motion granted by the Board, or by order of the Board.); 37 CFR 2.121(a)

(The deadlines for pretrial disclosures and the testimony periods may be rescheduled

bymotion granted by the Board, or by order of the Board.); see, e.g.,Jain v. Ramparts Inc.,

49 USPQ2d 1429 (TTAB 1998) (proceedings deemed suspended as of the filing of the motion


21/103

20

and relevant deadlines reset). Because of the persistent delays occasioned by Fincks refusal

properly to respond to Petitioners interrogatories and document requests, discovery cannot fairly

be completed within the period established by the current discovery schedule, which provides for

completion by July 12, 2010. In particular, Petitioners note that they have been unable to

prepare their expert disclosure as a result of Fincks failure to provide complete and adequate

responses to their discovery requests, or to prepare for depositions of individuals identified by

Finck. Petitioners therefore request that the discovery schedule be extended so that the discovery

period closes 120 days after the decision of this motion, with the trial date schedule extended

accordingly.

CONCLUSION

For the reasons stated herein, Petitioners Motion to Compel and to Suspend Proceedings

should be granted.

Dated: New York, New YorkJune 9, 2010

Respectfully submitted,

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

By: /s/DAVID B. GOLDSTEIN

DANIEL S. REICH

111 Broadway, Suite 1102New York, New York 10006

(212) 254-1111

Attorneys for Petitioners Corporacion Habanos,

S.A. and Empresa Cubana del Tabaco


22/103

CERTIFICATE OF SERVICE

The undersigned certifies that a true and correct copy of the foregoing MOTION TO

COMPEL DISCOVERY AND TO SUSPEND PROCEEDINGS was sent by email and was

served on Registrant by mailing via U.S. first-class mail, postage prepaid, said copy on June 9,

2010, to:

Jeff MorganNovak Druce + Quigg LLP

1000 Louisiana Street, 53rd Floor

Houston, TX 77002

(713) [email protected]

Attorneys for Registrant Finck Cigar Company

/s/

Daniel S. Reich


23/103



________________________________________________

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

)

Petitioners, ) Cancellation No. 92051542) Registration No. 2,890,975

v. )

) DECLARATION OFFINCK CIGAR COMPANY, ) DANIEL S. REICH

)

Registrant. ))

DANIEL S. REICH, an attorney duly admitted to the practice of law, declares

under penalty of perjury that the following is true and correct:

1. I am an attorney in the firm of Rabinowitz, Boudin, Standard, Krinsky &Lieberman, P.C., counsel for petitioners Corporacion Habanos, S.A. and Empresa Cubana Del

Tabaco, d.b.a. Cubatabaco (Petitioners), and a member of the bar of the State of New York.

2. I make this declaration in connection with Petitioners Motion To CompelDiscovery and To Suspend Proceedings dated June 9, 2010, filed herewith.

3. Attached hereto as Exhibit A is a true and correct copy of Petitioners FirstSet of Interrogatories to Registrant, served on February 9, 2010 (hereinafter Interrogatories).

4. Attached hereto as Exhibit B is a true and correct copy of Petitioners FirstRequest for Production of Documents and Things, served on February 9, 2010 (hereinafter

Document Requests).

5. On March 12, 2010, during a telephone conversation with Jeff Morgan, Iagreed to extend Fincks time to respond until March 26, 2010. Attached hereto as Exhibit C is a


24/103

2

true and correct copy of a March 12, 2010 email to me from Jeff Morgan, counsel to Registrant

Finck Cigar Company (Finck), confirming our agreement to extend Fincks time until March

26, 2010 to serve responses to Petitioners Interrogatories and Document Requests.

6. Attached hereto as Exhibit D is a true and correct copy of RegistrantsObjections and Responses to Petitioners First Set of Interrogatories to Registrant, dated March

26, 2010.

7. Attached hereto as Exhibit E is a true and correct copy of RegistrantsObjections and Responses to Petitioners First Request for Production of Documents and

Things, dated March 26, 2010.

8. Petitioners, through their counsel, have made a good faith effort throughconference and correspondence with Finck, through its counsel, to resolve the issues presented in

this motion, but the parties have not been able to reach agreement.

9. On April 12, 2010, during a telephone conversation with Jeff Morgan, Iproposed that we hold a telephonic discovery conference, and we agreed to hold the conference

on April 14, 2010. Attached hereto as Exhibit F is a true and correct copy of an email dated

April 12, 2010, from me to Mr. Morgan, confirming the scheduling of the discovery conference

for April 14, 2010.

10. On April 14, 2010, a telephonic discovery conference was held betweenJeff Morgan, on behalf of Finck, and David B. Goldstein and me, on behalf of Petitioners.

During that call, Mr. Goldstein and I went over each individual interrogatory response and

document response and production in Fincks March 26, 2010 production that we contended

were inadequate and incomplete, including explaining why the responses were inadequate and

incomplete, as well as relevant to the cancellation proceeding, and requested that the inadequate


25/103

3

production be remedied. During the conference, counsel for Finck did not represent that Finck

had provided all the documents or other information in Fincks possession, custody, or control

responsive to the discovery requests. We stated that with respect to Fincks objections to the

discovery requests based on the attorney-client privilege and/or the attorney work product

doctrine, Petitioners are not seeking information protected from disclosure on these grounds so

long as Finck produces a log of the documents withheld on these grounds. To date, Finck has

not produced a privilege log. We stated that in response to Fincks objection that some of these

discovery requests seek information that is not reasonably limited to a relevant time period,

Petitioners would be willing to consider a proposal by Finck to narrow the temporal scope of the

requests. Finck never sent such a proposal. We also stated that we would be willing to accept a

representation by Finck that the amount of alleged Cuban Tobacco used in each HAVANA

BLEND cigar comprises no more than two percent of the cigars tobacco, in lieu of documents

and other information supporting that claim (but subject to production of documents and other

information supporting the claim that the tobacco in fact came from Cuba). We also stated that

we would be willing to enter into a writing in which Petitioners would accept a representation

from Finck that, on a request by request basis, it had no other responsive information or

documents (with the exception of the amount and percentage of alleged Cuban Tobacco that it

uses in its HAVANA BLEND cigars, information that Finck obviously knows), on the condition

that Finck would not later seek to introduce additional information or documents on those

matters. We said that we would review any representations that Finck proposed to make in

response to these offers, and let Fincks counsel know if they were adequate. To date, we have

not received any proposed representations from Finck. We also indicated our willingness to sign

the Boards standard protective order, subject to our review, and Mr. Morgan said he would send


26/103

4

a proposed protective order for review. We never received a proposed protective order. Also

during that call, we discussed with Mr. Morgan a 30-day extension of discovery. During the call,

Mr. Morgan stated that he would follow up with Mr. Goldstein and me within a few days

regarding additional information or representations that no other information existed. To date,

we have received no communications from Mr. Morgan regarding any of the substantive issues

raised during the call, nor have we received a privilege log, proposed protective order from Mr.

Morgan, documents, interrogatory responses, or representations.

11. Although Mr. Morgan did not follow up as he said he would, I agreed withMr. Morgan during a telephone call that I would file a consent motion proposing extension of all

dates by 30 days. I filed a consent motion to that effect on April 21, 2010.

12. On May 6, 2010, I left a voice message for Mr. Morgan in order to findout whether Finck was intending to respond to the issues raised by Mr. Goldstein and me during

the April 14, 2010 call regarding Fincks incomplete disclosures in response to Petitioners

Interrogatories and Document Requests. Mr. Morgan did not return that call.

13. Attached hereto as Exhibit G is a true and correct copy of an email datedMay 6, 2010, from me to Mr. Morgan, stating that more than three weeks had passed since the

April 14, 2010 call and that Petitioners had not received any response from Finck regarding the

issues raised during that call, asking Finck to provide Petitioners with any additional documents

and interrogatory responses, or any representations that there is no additional information in

response to particular requests, no later than May 14, and informing Finck that if Petitioners did

not receive the materials by May 14, they would proceed accordingly, including filing a motion

to compel the undisclosed information and documents.

14. As of this date, counsel for Petitioners have not received a response to our


27/103


28/103

EXHIBIT A


29/103


30/103


31/103


32/103


33/103


34/103


35/103


36/103


37/103


38/103


39/103


40/103


41/103

EXHIBIT B


42/103


43/103


44/103


45/103


46/103


47/103


48/103


49/103


50/103


51/103


52/103


53/103


54/103

EXHIBIT C


55/103

Daniel Reich

From: Jeff Morgan [[email protected]]

Sent: Friday, March 12, 2010 2:42 PM

To: Daniel Reich

Subject: Discovery Responses-- Corporacion Habanos, S.A. v. Finck Cigar Company (TTAB Cancellation No.

92051542)

Page 1 of 1

6/8/2010

Dear!Dan:!!!This!is!to!confirm!our!agreement!today!for!a!ten!(10)!!day!extension!of!time!until!March!26,!2010!to!serve!responses!to!the!outstanding!discovery!requests,!which!were!served!on!February!9,!2010!by!mail.!!!Thank!you!for!your!assistance!in!this!matter.!!!Best!regards,!!!Jeff!Morgan!!!!!!!

!!Jeffrey Morgan!Novak Druce + Quigg LLP!Wells Fargo Plaza!1000 Louisiana!Fifty Third Floor !Houston, TX 77002!!Phone: 713-571-3470!Fax: 713-456-2836!www.novakdruce.com!!Confidentiality Notice: This email and any attachments contain information from the law firm of NovakDruce + Quigg LLP, which may be confidential and/or privileged. The information is intended to be for theuse of the individual or entity named on this email. If you are not the intended recipient, be aware that anydisclosure, copying, distribution or use of the contents of this email is prohibited. If you receive this emailin error, please notify us by reply email immediately so that we can arrange for the retrieval of the original

documents at no cost to you. !!!!!


56/103

EXHIBIT D


57/103


58/103


59/103


60/103


61/103


62/103


63/103


64/103


65/103


66/103


67/103


68/103


69/103


70/103


71/103


72/103


73/103


74/103


75/103


76/103

EXHIBIT E


77/103


78/103


79/103


80/103


81/103


82/103


83/103


84/103


85/103


86/103


87/103


88/103


89/103


90/103


91/103


92/103


93/103


94/103

EXHIBIT F


95/103

Daniel Reich

From: Daniel Reich

Sent: Monday, April 12, 2010 3:23 PM

To: Jeff Morgan

Subject: Corporacion Habanos, S.A. v. Finck Cigar Company (TTAB Cancellation No. 92051542)

Page 1 of 1

6/8/2010

Dear Jeff,!!This is to confirm that we will hold a discovery conference by phone this Wednesday April 14 at 3 PMEST (2 PM CST) to discuss your responses to our First Set of Interrogatories and First Request forProduction of Documents and Things. Among the issues we intend to raise on the call are yourresponses regarding the amount and percentage of Cuban tobacco used in Havana Blend cigars andregarding use of Cuban seed tobacco in those cigars, including whether Fincks use of Cuban seedtobacco is limited to tobacco grown from Cuban seed from Cuba.!!Best regards,!!Dan Reich!!!Daniel S. Reich, Esq.Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C.111 Broadway, Eleventh FloorNew York, NY 10006Tel: 212-254-1111Fax: 212-674-4614 !!


96/103

EXHIBIT G


97/103

Daniel Reich

From: Daniel Reich

Sent: Thursday, May 06, 2010 8:01 PM

To: [email protected]

Subject: Corporacion Habanos, S.A. v. Finck Cigar Company (TTAB Cancellation No. 92051542)

Page 1 of 1

6/8/2010

Dear Jeff,

I left you a message earlier today and am following up by email as I have not heard back from you. Morethen three weeks have passed since our April 14 teleconference regarding discovery issues, and we havenot received any response from you regarding the issues raised during that call regarding your incompletedisclosures in response to Petitioners First Set of Interrogatories and First Request for Production ofDocuments and Things, although you advised you would get back to us within the next few daysregarding additional information or representations that no other information existed.

Under the circumstances, we insist that you provide us with any additional documents and interrogatoryresponses, or any representations that there is no additional information in response to particularrequests, no later than May 14, 30 days after our phone call and 49 days after the agreed deadline ofMarch 26 for you to respond to our discovery requests.

If we have not received the materials by that date, we will proceed accordingly, including filing a motion tocompel the undisclosed information and documents.

Best regards,

Daniel Reichfor Corporacion Habanos, S.A. and Empresa Cubana del Tabaco d.b.a. Cubatabaco

Daniel S. Reich, Esq.Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C.111 Broadway, Eleventh FloorNew York, NY 10006Tel: 212-254-1111 ext. 104

Fax: 212-674-4614


98/103

EXHIBIT H


99/103


100/103


101/103


102/103


103/103