-Wes Anderson, Attorney
You’d probably assume no TTAB proceedings originated in 1995 remain active, but the HAVANA CLUB dispute has some serious staying power.
As U.S.-Cuba relations unthaw, one particular trademark battle is also returning to the public eye: the battle between Bacardi and the Cuban government for rights to the HAVANA CLUB mark. A peek at the USPTO database reveals just one registration for the mark, owned by “Empresa Cubana Exportadora.” So who really owns HAVANA CLUB?
According to the Wall Street Journal, Bacardi has been selling HAVANA CLUB-branded rum since 1994, after acquiring the U.S. rights to the mark from the “founding family” of Havana Club rum. Bacardi, after all, claims roots in Cuba before leaving after Fidel Castro took power. As an aside, Bacardi’s rum is actually made in Puerto Rico, due to the longstanding U.S. embargo.
But Bacardi isn’t alone in claiming rights to the HAVANA CLUB mark. It turns out the listed owner of the HAVANA CLUB registration, “Empresa Cubana Exportadora,” is an arm of the Cuban government. It sells HAVANA CLUB rum outside the U.S. in a joint venture with distiller Pernod Ricard.
Bacardi, for its part, owns its own applications for HAVANA CLUB, for “rum and rum specialty drinks” and for clothing items in class 25. These applications were filed in 1994 and 1999, respectively, yet remain pending while Bacardi and the Cuban government battle over U.S. rights to HAVANA CLUB.
The Cuban government scored a huge win earlier this year when the Trademark Office granted a highly unique Petition to the Director renewing its registration. Under the terms of the Cuban embargo, the U.S. government could not accept trademark registration and renewal fees unless authorized by the Department of the Treasury. That authorization came through in January 2016, and the USPTO accepted the fee payment and renewed the registration shortly thereafter. This came as a huge setback for Bacardi, which issued a statement saying the government “has reversed long-standing U.S. and international public policy and law that protects against the recognition or acceptance of confiscatory actions of foreign governments.” According to Bacardi:
Bacardi purchased the rights to the HAVANA CLUB trademark from the creators and original owners – the Arechabala family – who made their rum in Cuba from the 1930s until 1960 and exported it to the U.S. and other countries until their rum-making facilities and personal assets were seized without compensation during the Cuban revolution.
Bacardi continues to assert it is the “legitimate owner of the brand,” and no doubt the HAVANA CLUB dispute will rage on.