Bacardi sues USPTO over renewal of Cuban 'Havana Club' trademark


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https://www.reuters.com/legal/transactional/bacardi-sues-uspto-over-renewal-cuban-havana-club-trademark-2021-12-29/

 

Bacardi sues USPTO over renewal of Cuban 'Havana Club' trademark

Bottles of Havana Club rum are displayed inside a bar in Havana, November 25, 2015. CUBA-USA/TRADEMARKS REUTERS/Alexandre Meneghini

Bottles of Havana Club rum are displayed inside a bar in Havana, November 25, 2015. CUBA-USA/TRADEMARKS REUTERS/Alexandre MeneghiniRegister

  • Summary
  • Bacardi says office should have canceled trademark in 2006
  • PTO renewed Cubaexport's registration in 2016
  • Bacardi, Cuba in long-running dispute over 'Havana Club' name

 

(Reuters) - Bacardi has sued the U.S. Patent and Trademark Office for allegedly violating the law by reviving a Cuban government entity's "Havana Club" trademark, which the liquor giant uses on American rum.

The lawsuit, filed Tuesday in Virginia federal court, is part of a long-running battle between Bacardi and Cuba over the "Havana Club" name, which Bacardi says was unlawfully seized along with the assets of Cuban company Jose Arechabala SA by the Castro regime in 1960.

The complaint said Bacardi began selling Havana Club rum in the U.S. in 1995 after buying the brand from JASA. Cuba's state-run Cubaexport and French spirits company Pernod Ricard sell rum under the same name in other countries, but are barred from selling it in the U.S.

Bermuda-based Bacardi's founders were exiled from Cuba after the Cuban revolution.

 

Cubaexport first registered the "Havana Club" trademark in the U.S. in 1976. According to the complaint, Cubaexport tried to renew the registration in 2006, but was thwarted after failing to get a license from the U.S. Treasury Department's Office of Foreign Assets Control.

The complaint said Cubaexport's trademark should have expired six months later under federal law, but the PTO renewed the registration shortly after OFAC gave it a license in 2016.

Bacardi's complaint said the renewal "some ten years after the registration had expired is a moral outrage to be sure, but also violates the law and must be set aside." It also said Bacardi's application to register its "Havana Club" mark will likely be refused because of it.

"Bacardi has pledged that we would take every means available to protect 'Havana Club,'" and the complaint is "a continuation of that ongoing fight," a Bacardi spokesperson said in a Wednesday email.

 

The PTO didn't immediately respond to a request for comment.

The case is Bacardi & Co v. U.S. Patent and Trademark Office, U.S. District Court for the Eastern District of Virginia, No. 1:21-cv-01441.

For Bacardi: David Zionts of Covington & Burling, Cameron Argetsinger of Kelley Drye & Warren.

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So the OFAC granted a license for a product that can't be sold in the US? And granted Cuba a trademark for a stolen name over the objections of the rightful owner?

This is very odd. I can't imagine how this will stand in court or why Bacardi waited this long to raise the issue. 

 

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15 minutes ago, NSXCIGAR said:

So the OFAC granted a license for a product that can't be sold in the US? And granted Cuba a trademark for a stolen name over the objections of the rightful owner?

This is very odd. I can't imagine how this will stand in court or why Bacardi waited this long to raise the issue. 

 

How did Altadis USA's parent own 50% of HSA?

Yet the Toronto mobile coffee van has it's square account closed because it sells Cuban Coffee  https://www.cbc.ca/news/canada/toronto/square-canada-1.5303143

It is all one big Cluster F. 

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Why does Bacardi want the Havana Club name? It doesn't make any rum in Cuba and shouldn't deceive it's customers as such. Sounds akin to the whole Cohiba name charade that has been fought in courts over the years.

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36 minutes ago, NSXCIGAR said:

So the OFAC granted a license for a product that can't be sold in the US? And granted Cuba a trademark for a stolen name over the objections of the rightful owner?

This is very odd. I can't imagine how this will stand in court or why Bacardi waited this long to raise the issue. 

 

Details:

https://rumporter.com/en/story-havana-club/

Owners let the registration lapse in 1973 and their company went bankrupt in 1974, they tried to get Bacardi interested but they didn't bite at the time and Cubans registered it having the trademark in 80 other countries already.

Then Bacardi bought it in the 90s and started marketing their new product in the US.

Edit: looks like Bacardi only got serious about marketing this US wide in 2016.

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2 hours ago, El Presidente said:

How did Altadis USA's parent own 50% of HSA?

Yet the Toronto mobile coffee van has it's square account closed because it sells Cuban Coffee  https://www.cbc.ca/news/canada/toronto/square-canada-1.5303143

It is all one big Cluster F. 

The Altadis parent isn't American so they can own whatever they like. But the OFAC shouldn't be approving licenses for any exclusively Cuban product...right? They're a sanctioned country. It would be interesting to know if there any other Cuban products OFAC grants licenses to. 

And it just occurred to me that if Square is going to shut down accounts (ostensibly due to US pressure) then the US could pressure Visa and MC to shut down all accounts that sell CCs in every other country...which would be pretty frightening.

1 hour ago, Bijan said:

Owners let the registration lapse in 1973 and their company went bankrupt in 1974, they tried to get Bacardi interested but they didn't bite at the time and Cubans registered it having the trademark in 80 other countries already.

Interesting. It does say that when the trademark lapsed in 1976 the Cuban state "took it over"--whatever that means. I'm assuming Cuba didn't attempt to trademark it in the US at that time. And then in 1993 Cuba Ron and Pernod went to the Arechabala family (not sure why since they didn't own it anymore?) and then in 1995 Bacardi just started producing it? 

Not getting a complete legal picture here...

 

2 hours ago, SCgarman said:

Why does Bacardi want the Havana Club name? It doesn't make any rum in Cuba and shouldn't deceive it's customers as such. Sounds akin to the whole Cohiba name charade that has been fought in courts over the years.

Havana Club is a famous name. I'd want it. 

Cohiba has made millions for Imperial. I'd want that too. 

The fight in the courts is Cuba trying to get them to stop. General has had Cohiba since 1978 and so far, all challenges have failed. No indication the US is going to be inclined to rule in Cuba's favor, although some recent court decisions have upheld their ability to continue to challenge it. 

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40 minutes ago, El Presidente said:

Not if they have US based operations. 

I think Altadis (Spain), Altadis USA and Imperial (UK) are separated enough to avoid that in whatever way they're separated. And what is the extent of Altadis USA's "operations"? Might just be a bedroom and a phone to provide for the Altadis-owned brands' registrations. Branch office. Who knows. And how does Tabacalera USA which is Altadis fit in? I'm sure the lawyers have worked it out. Clearly there's many layers.

It appears there's a solid line between the Tabacalera USA/Altadis USA operations that control Aging Room, Monte, RyJ, HU, Henry Clay etc. and Altadis SA/Imperial. I have no doubt they could partition off USA operations off entirely from a corporate/legal standpoint if they haven't insulated it already. 

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