DuetsBlog Collaborations in Creativity & the Law

HAVANA CLUB: The Rum’s Back on Ice

Posted in Agreements, Branding, Counterfeits, Famous Marks, Food, Law Suits, TTAB, USPTO

Last year, I blogged about the decades-long dispute for the HAVANA CLUB trademark in the United States. Nearly ten months later, well, its spirit lives on.

To briefly recap: in one corner, Empresa Cubana Exportadora, an arm of the Cuban government, owns a registration for the HAVANA CLUB trademark. In the other corner, Bacardi claims rights to the HAVANA CLUB trademark in the U.S. based on an acquisition from the “founding family” of HAVANA CLUB rum – who were exiled from Cuba in the 1960s. Bacardi has its own application for HAVANA CLUB for “rum and rum specialty drinks.” Examination of that application has been suspended since its filing in 1994 – while the parties duke out a cancellation action against the Cuban registration also dating back to Bill Clinton’s first term. That cancellation is itself suspended pending a civil action in federal court for the District of Columbia.

Cuba_US_Rum_Wars

Last year, it seemed the U.S. government put its thumb on the scale to end the dispute, by allowing the Trademark Office to renew the Cuban government’s registration. But, as is the recurring theme of the last few months: what the government giveth, the government can taketh away.

Lawmakers (on both sides of the aisle) from Florida are asking the Trump administration to revoke the license granted by the Office of Foreign Assets Control. This would effectively eliminate the Cuban government’s ability to maintain the HAVANA CLUB trademark in the United States. The lawmakers cite the Trump administration’s “Cuba policy review” for justification – essentially reinstating a particular sanction against Cuba lifted by the Obama administration.

In short? The chaos continues, though Bacardi notes “nothing has yet moved in court.” It seems a dispute that began when I was all of eight years old will still be on the TTAB’s docket well into my thirties.