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Feb. 1 — In the latest round of the long-running fight over ownership of the “Havana Club” brand name for rum, Bacardi is seeking disclosure of documents leading to the renewal of a Cuban government entity's trademark registration.
The registration had been declared “cancelled/expired” in 2006, after the Treasury Department's Office of Foreign Assets Control (OFAC) refused to give Cubaexport a license to renew its trademark registration .
However, earlier this month, Cubaexport renewed its nearly decade-old petition before the Patent and Trademark Office, stating that it now had a license from OFAC, and the PTO renewed the 1976 registration.
Bacardi has stated that it is seeking any relevant documents from Treasury, OFAC, the PTO, the State Department, the Executive Office of the President, and the National Security Council that would explain this reversal.
The Arechabala family starting distilling rum in Cuba in the 1870s. In the 1930s, the Arechabala distillery launched its “Havana Club” brand.
After the Cuban revolution, the Castro regime seized the Arechabala company's assets and gave them to a government-owned exporter, the Cuban Food and Varied Products Export Enterprise (Empresa Cubana Exportadora de Alimentos y Productos Varios, known as “Cubaexport”).
In 1963, the U.S. government prohibited importation of Cuban goods into the United States, and the U.S. trademark registration held by the Arechabala company lapsed in 1973. In 1976, Cubaexport applied to register “Havana Club” in the United States.
Bacardi was another Cuban distillery, but it moved its operations out of Cuba after the Castro revoluion. In 1994, the Arechabala family sold its rum recipe and its trademark rights to Bacardi, which began selling rum under the “Havana Club” brand in the United States.
At the same time, Cubaexport gave rights to France-based Pernod Ricard to sell Havana Club worldwide. Cubaexport tried to renew the trademark registration, but under the federal laws imposing the embargo against Cuba, Cubaexport had to have a license from OFAC in order to pay the required fees to the PTO.
Since then, Bacardi and Pernod Ricard have been tussling over U.S. rights to the “Havana Club” name. Bacardi has been selling rum domestically with the “Havana Club Brand Puerto Rican Rum” label.
In 2006, OFAC said that Cubaexport did not have a license to pay the registration fees to the PTO. But, on Jan. 12, Cubaexport filed a supplement to its nearly 10-year-old petition, saying that OFAC had now granted it the necessary license.
On Jan. 13, the PTO, granted Cubaexport's petition to renew the “Havana Club” trademark registration.
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