For U.S. cigar smokers, Cohiba is a well-recognized brand, having been trademarked in the United States for over thirty years and applied to domestically-produced cigars. For Cubans, and in 114 other countries, Cohiba is a mark linked to one of the island’s most famous products. The Empresa Cubana del Tabaco (Cubatabaco) would like to add another country to that list, and here enters the Cuban Assets Control Regulations (CACR). Implemented in 1963, the CACR, 31 C.F.R. § 515, is the main mechanism for domestic enforcement of the United States embargo against the Republic of Cuba. Among its provisions are severe restrictions on the ability of the Cuban government or Cuban companies to hold property rights in the United States. Id. § 515.201(b).

Relying on this language, the Second Circuit ruled in 2005 that Cuban companies could not acquire property rights in U.S. trademarks and therefore Cubatabaco could not seek cancellation of the Cohiba mark. Empresa Cubana Del Tabaco v. Culbro Corp., 399 F.3d 462, 471-72 (2d Cir. 2005). This decision was not the last word, as Cubatabaco revived a petition before the Trademark Trial and Appeal Board (TTAB), but the amended petition was dismissed for lack of standing. Empresa Cubana Del Tabaco v. General Cigar Co., Inc., Cancellation No. 92025859, 2013 WL 3168090 (TTAB 2013). Undeterred, Cubatabaco appealed to the Court of Appeals for the Federal Circuit (CAFC), which held in 2014 that Cubatabaco had a proper cause of action under the Lanham Act and remanded the case to the TTAB. Empresa Cubana Del Tabaco v. General Cigar Co., Inc., 753 F.3d 1270 (Fed. Cir. 2014).

Seeking a definitive answer, General Cigar has since filed a petition for a writ of certiorari. Two questions are presented. The first is relatively straightforward: does the CACR bar a Cuban corporation from seeking cancellation of a U.S. trademark registration? The second turns on the issue of claim preclusion, and asks “[w]hether the Federal Circuit’s categorical rule that a prior judgment in a trademark infringement action that affirms the validity of a trademark registration cannot, as a matter of law, bar the challenger from petitioning an administrative agency for cancellation of the same registration is contrary to established claim preclusion standards.”

January 2015 will mark the 18th year of the dispute over the COHIBA mark – perhaps the Supreme Court will dive into this smoky matter and clear the air.

Source: http://pub.bna.com/ptcj/140512petition.pdf

For more information on this topic, please visit our Trademark Litigation service page.

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