U.S. Appeals Court Revives Bacardi's "Havana Club" Trademark Dispute

U.S. Appeals Court Revives Bacardi's "Havana Club" Trademark Dispute

Bacardi has successfully persuaded a U.S. appeals court to reinstate its lawsuit against the U.S. Patent and Trademark Office (USPTO) over the "Havana Club" rum trademark, reigniting its long-standing battle with the Cuban government.

The 4th U.S. Circuit Court of Appeals in Richmond, Virginia, ruled that Bacardi could contest the USPTO's decision in federal court. The Trademark renewal for "Havana Club" was upheld by the USPTO a decade after Bacardi argued that it should have expired.

While the USPTO declined to comment, Bacardi expressed satisfaction with the court’s decision.

Cubaexport, owned by the Cuban government, and French spirits company Pernod Ricard market Havana Club rum internationally. Cubaexport initially registered the "Havana Club" Trademark in the U.S. in 1976.

Bacardi, exiled from Cuba after the Cuban Revolution, claims that the Cuban government unlawfully seized the "Havana Club" name and assets from José Arechabala S.A. in 1960. Bacardi acquired the rights to the José Arechabala brand and began selling Havana Club rum in the United States in 1995.

In a 2021 lawsuit filed in Virginia, Bacardi argued that Cubaexport's trademark should have expired in 2006 after the company failed to obtain a license to pay the renewal fee from the U.S. Treasury Department's Office of Foreign Assets Control (OFAC).

Bacardi’s lawsuit challenged the USPTO’s 2016 decision to renew Cubaexport's Trademark following OFAC’s change in stance and issuance of the necessary license. However, U.S. District Judge Liam O’Grady dismissed the case in 2022, ruling that Bacardi could only challenge the trademark through the Trademark office’s procedural channels.

However, on Thursday, U.S. Circuit Judge Allison Rushing, writing for a unanimous three-judge panel, ruled that Bacardi's legal challenge can proceed. Rushing clarified that federal law does not bar Lawsuits Concerning the USPTO's Trademark-renewal decisions, even if it might restrict court challenges against the office's registration decisions. Additionally, Bacardi has initiated a separate lawsuit contesting the USPTO's denial of its request to cancel Cubaexport's trademark, which remains unresolved.