A Cuban cigar maker's alleged advertising activities in connection with the mark GUANTANAMERA did not constitute unfair competition under Sec. 43(a) of the Lanham Act, according to the federal district court in Washington, D.C. A U.S. cigar maker seeking to register its own GUANTANAMERA mark failed to provide sufficient evidence that the Cuban company's actions would produce substantial effects on U.S. commerce, justifying extraterritorial application of the Lanham Act.

In a 2008 decision, the Trademark Trial and Appeal Board determined that the U.S. company's mark was geographically misdescriptive (TRADEMARK LAW GUIDE ¶61,208) and sustained the Cuban company's opposition to the U.S. company's registration application. The U.S. company filed an appeal of the ruling and a civil action in federal district court, seeking reversal of the TTAB's order sustaining the opposition and bringing Lanham Act claims against the Cuban company.

Use in Commerce

The U.S. company asserted that the Cuban company had placed ads featuring the GUANTANAMERA mark in foreign cigar industry magazines with U.S. circulation. There was no allegation that the Cuban company sold its products in the United States.

More than mere advertising was needed to constitute unfair competition, the court said. The U.S. company failed to show that the Cuban company was launching an ad campaign aimed at U.S. consumers. The ad in question was in a European magazine in the German language. Advertising in a German magazine did not constitute use in commerce in the United States. In addition, a third-party website based in Canada that made reference to the Cuban company's brand did not "use" the mark in the United States.

In addition, a third-party website based in Canada that made reference to the Cuban company's brand did not "use" the mark in the United States and did not create a likelihood of confusion, the court said. As of 2002, the Cuban company held registrations or applications for GUANTANAMERA in more than 75 countries and sold its cigars worldwide. Thus, its products were likely to be found on foreign websites. Moreover, any use of the mark would be by the website operator, not the Cuban company.

Discovery Dispute

The U.S. cigar maker was precluded from calling certain witnesses from lists of thousands of potential witnesses included in its initial disclosures in the case. The U.S. company listed several purported categories of witnesses, including the names of thousands of cigar retailers and distributors, as potential witnesses. These disclosures failed to adhere to the reasonable inquiry and specificity requirements of the Federal Rules of Civil Procedure, the court said.

In responses to interrogatories, the U.S. company later narrowed its list of potential witnesses to 56, but it indicated that the 56 names constituted some, but not all, of the potential witnesses it might use. This response failed to put the Cuban company on notice as to what depositions would be necessary.

The U.S. company was required to provide a list of either (1) all the persons of the 56 contained in the interrogatory responses that it had actually interviewed concerning the case or (2) any 15 of the witnesses from the categories in its initial disclosures. It was precluded from the use of any other witnesses from those categories and was required to pay the Cuban company's reasonable expenses for depositions of up to 15 witnesses. The U.S. company was also directed to supplement its responses to certain interrogatories regarding its business.

The Cuban company was entitled to an award of approximately $17,000 in attorney's fees and costs incurred in connection with its motion to preclude and compel.

Guantanamera Cigar Co., D D.C., ¶61,563, ¶61,564, ¶61,565.