With Three Days Remaining In 2021, Bacardi Sues United States Patent And Trademark Office For In 2016 Authorizing The Registration Of "Havana Club" Rum

Bacardi & Co v. U.S. Patent and Trademark Office, U.S. District Court for the Eastern District of Virginia, No. 1:21-cv-01441.

Covington & Burling (plaintiff)
Kelley Drye & Warren (plaintiff)

Excerpts:

COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF
Plaintiffs Bacardi & Company Limited (“BACO”) and Bacardi U.S.A. Inc. (“BUSA”) (collectively, “Bacardi”), by and through their attorneys Kelley Drye & Warren LLP and Covington & Burling LLP, as and for their complaint against the United States Patent and Trademark Office (“PTO”), alleges as follows:

NATURE OF THE ACTION
1. Bacardi brings this action to set aside the unlawful and arbitrary actions of the PTO which purported to renew the HAVANA CLUB trademark registration held by Empresa Cubana Exportadora de Alimentos y Productos Varios d/b/a Cubaexport (“Cubaexport”) ten years after the registration had expired by operation of the Lanham Act and was declared “cancelled/expired,” because Cubaexport had failed to pay the required filing fee within the time period required by statute.

On January 11, 2016, OFAC issued Cubaexport a specific license purporting to authorize Cubaexport to “engage in all transactions necessary to renew and maintain the HAVANA CLUB trademark registration No. 1,031,651.”

13. Only three days later, the PTO suddenly acted on Cubaexport’s ten-year-old petition in a brief decision by the Commissioner for Trademarks acting under delegated authority from the Director.

14. The PTO granted the petition and purported to authorize renewal of Cubaexport’s long-dead HAVANA CLUB registration on the grounds that it had somehow retroactively paid the filing fee.

LINK To Complaint (12/28/21)

Reuters Americas
New York, New York
29 December 2021

Bacardi has sued the U.S. Patent and Trademark Office for allegedly violating the law by reviving a Cuban government entity's "Havana Club" trademark, which the liquor giant uses on American rum. The lawsuit, filed Tuesday in Virginia federal court, is part of a long-running battle between Bacardi and Cuba over the "Havana Club" name, which Bacardi says was unlawfully seized along with the assets of Cuban company Jose Arechabala SA by the Castro regime in 1960.

The complaint said Bacardi began selling Havana Club rum in the U.S. in 1995 after buying the brand from JASA. Cuba's state-run Cubaexport and French spirits company Pernod Ricard sell rum under the same name in other countries, but are barred from selling it in the U.S.
Bermuda-based Bacardi's founders were exiled from Cuba after the Cuban revolution.

Cubaexport first registered the "Havana Club" trademark in the U.S. in 1976. According to the complaint, Cubaexport tried to renew the registration in 2006, but was thwarted after failing to get a license from the U.S. Treasury Department's Office of Foreign Assets Control. The complaint said Cubaexport's trademark should have expired six months later under federal law, but the PTO renewed the registration shortly after OFAC gave it a license in 2016.

Bacardi's complaint said the renewal "some ten years after the registration had expired is a moral outrage to be sure, but also violates the law and must be set aside." It also said Bacardi's application to register its "Havana Club" mark will likely be refused because of it. "Bacardi has pledged that we would take every means available to protect 'Havana Club,'" and the complaint is "a continuation of that ongoing fight," a Bacardi spokesperson said in a Wednesday email. The PTO didn't immediately respond to a request for comment.