Bloomberg- (7 April 2022)- Court lacks judicial review under the Lanham Act. Bacardi, Cubaexport in decadeslong battle over mark. Bacardi U.S.A. Inc. lost a lawsuit against the U.S. Patent and Trademark Office after a Virginia federal court found it didn’t have the ability to review whether the agency should have renewed a Cuban rum maker’s “Havana Club” trademark registration.

Bacardi and Cubaexport, the Cuban government agency that makes and sells the rum internationally, have been in a decadeslong fight over who owns the rights to the Havana Club trademark. Bacardi, a Florida-based rum maker, argued that the USPTO violated the Administrative Procedure Act by allowing Cubaexport to renew its rights to Havana Club in 2016. Bacardi sells rum internationally using the Havana Club mark and has a trademark application that has been pending since 1994. The Havana Club mark was originally owned and registered in the U.S. by Cuban rum maker Jose Arechabala SA, but the Cuban government took control of the company’s assets in 1960 following the revolution there. Congress passed a law in 1998 that “prevented the registration of trademarks that were seized by the Cuban Government,” the court said.

The U.S. Office of Foreign Assets Control denied Cubaexport a license to renew its registration in 2006, but reversed course a decade later. Bacardi argued the renewal will doom its pending application for the same trademark, and that the court should cancel Cubaexport’s trademark. Judge Liam O’Grady of the U.S. District Court for the Eastern District of Virginia ruled that judicial review of the USPTO’s actions was improper in this case. Judicial review under the APA doesn’t apply when the statute in question, in this instance the Lanham Act, precludes it, O’Grady said. The court said the Lanham Act provides detailed procedures for how to contest trademark registrations, which means Bacardi already has a remedy through traditional trademark litigation. Bacardi is part of a pending 2004 lawsuit against Cubaexport over the Havana Club trademark in a Washington, D.C., federal court. “Congress did not allow for challenges to another party’s registration by filing civil suit against the USPTO,” the court said. The Lanham Act also explicitly precludes the USPTO director, a defendant in the case, from facing civil action, the court said.

Kelley Drye & Warren LLP and Covington & Burling LLP represent Bacardi. The U.S. Attorney’s Office represents the USPTO. The case is Bacardi & Company Limited v. United States Patent and Trademark Office, E.D. Va., No. 1:21-cv-01441, 4/6/22.

(Reuters- 7 April 2022)- The U.S. Patent and Trademark Office has defeated a lawsuit brought by rum maker Bacardi & Co in Virginia federal court over the PTO's revival of a Cuba-owned trademark that the liquor giant uses on American rum. The court said Wednesday that Bacardi could not sue the PTO directly in the liquor giant's long-running dispute with Cuba's state-run Cubaexport over the "Havana Club" trademark, and must challenge the trademark through the PTO itself.

Bacardi attorney Michael Lynch of Kelley Drye & Warren said Thursday that the company is disappointed with the decision and was considering an appeal. Bermuda-based Bacardi's founders were exiled from Cuba after the Cuban revolution. Bacardi says the Cuban government unlawfully seized the "Havana Club" mark along with other assets from Cuban company Jose Arechabala SA in 1960. Cubaexport and French spirits company Pernod Ricard sell "Havana Club" rum outside of the United States. Bacardi bought Jose Arechabala's brand and began selling Havana Club rum in the United States in 1995.

Bacardi's December lawsuit against the PTO said Cubaexport's trademark registration should have expired after it failed to get a license from the U.S. Treasury Department's Office of Foreign Assets Control in 2006. It challenged the agency's decision to renew Cubaexport's trademark in 2016 after OFAC changed course. Bacardi also said its pending application to register its own "Havana Club" mark will likely be refused because of Cubaexport's mark. U.S. District Judge Liam O'Grady said Wednesday that the court could not review the renewal under federal trademark law, and that Bacardi's only recourse was to ask the PTO to cancel Cubaexport's registration. He rejected Bacardi's argument that the court should hear the case because the PTO does not have a process for challenging a trademark based on an improper renewal. O'Grady also noted that Bacardi already went through PTO proceedings and has challenged the agency's decisions in Washington, D.C., federal court, in a case that is still pending. The PTO declined to comment.

The case is Bacardi & Co v. U.S. Patent and Trademark Office, U.S. District Court for the Eastern District of Virginia, No. 1:21-cv-01441. For Bacardi: Michael Lynch, Damon Suden and Cameron Argetsinger of Kelley Drye & Warren; and David Zionts of Covington & Burling

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