I don’t know what the record is for the longest time it has taken for a trademark application to clear the Trademark Office, but I’m pretty sure that Havana Club would medal. The application for the Havana Club mark for rum was filed on September 12, 1994. That’s 21 years ago, old enough to drink the rum behind the name.

The brand has been caught up in litigation for much of the time. Bacardi bought the rights to brand from the Arechabala family, which owned the brand until it’s company was nationalized by Cuban government after the revolution. Bacardi, another Cuban family company, had distilleries and other assets outside of Cuba. After the revolution they moved out and continued to produce in Puerto Rico.

Old Havana Club Advert

The Cuban government, through a state held company, produced Havana Club and registered the mark in the United States in 1976 based on its Cuban registration. Bacardi has been contesting the trademark since at least 1994. Due to the diplomatic situation, Cuba had to secure a license from the U.S. Treasury’s Office of Foreign Assets Control to be able to pay to renew its registration. In 2006 that license was denied and Cuba was unable to renew the license. It appears that a cancellation was never ordered and that proceedings were on hold while fights in the courts proceeded. On January 13 of this year, the Trademark Office accepted the 2006 payments and renewed the registration after the Office of Foreign Assets Control granted a license.

This brings about an interesting situation. The Cuban state held company had partnered with Pernod Ricard, another spirits maker, to sell Havana Club just about everywhere. Pernod sued Bacardi for selling Havana Club in the U.S., but Bacardi won. So, Bacardi has continued to sell Havana Club in the United States while Cuba and Pernod have produced Havana Club in Cuba and sold it everywhere else (they couldn’t sell in the U.S. because of the embargo). Now Bacardi is selling Havana Club (with the apparent blessing of courts) while Cuba holds the valid trademark registration. The likelihood of confusion is pretty high if the embargo is lifted and Pernod begins selling Havana Club in the U.S.

Havana Club

(My guess is that this one is Cuban – but only because of the stamp on the bottom)


On another point, there has been a lot of discussion about whether the ® symbol acts as something of a government seal of approval, mainly revolving around marks like “The Slants” and “The Redskins.” It’s fairly apparent at this point that the government has been willing to bring trademarks into its diplomacy. So, by allowing the Cuban government to register the mark of a brand that it nationalized without compensation, is the government approving of nationalization without compensation?