Despite Embargo, Cuban Cigar Makers Have Standing to Seek Cancellation of Registration

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• Case Summary: The TTAB rejects a motion to dismiss for lack of standing a petition by Cuban cigar makers to cancel a trademark registration by a Dominican cigar company.

• Key Takeaway: Even under the strictures of the Cuban embargo, a Cuban company might have standing to seek cancellation of a U.S. registered trademark.

Despite the Cuban embargo, a Cuban entity might have standing to petition the Patent and Trademark Office for cancellation of a trademark registration, particularly when alleging that the registration is geographically deceptively misdescriptive, the Trademark Trial and Appeal Board ruled Aug. 1 (Corporacion Habanos S.A. v. Rodriguez, T.T.A.B., No. 92052146, 8/1/11).

Denying a motion to dismiss for lack of standing, the court also noted the Cuban cigar maker's assertion of use of the relevant term internationally as well as in advertisements in U.S. publications.

Dominican Cigar Maker Registers Term With PTO

In 2008 Juan E. Rodriguez obtained a registration, listed on the secondary register, for the term “Pinar del Río” for cigars made in the Dominican Republic. Corporacion Habanos S.A. d/b/a Habanos S.A. and Empresa Cubana del Tabaco d/b/a Cubatabaco are Cuba-based cigar companies. In 2003, Cubatabaco obtained a registration for Pinar del Río under the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration of 1958.

In 2010 the U.S. Department of the Treasury's Office of Foreign Assets Control issued a license to Cubatabaco to petition for cancellation of Rodriguez's registration.

Habanos and Cubatabaco then petitioned to cancel the Pinar del Río mark, based on the argument that the registration was fraudulent, that the mark was deceptive under 17 U.S.C. §1052(a), and that it was primarily geographically deceptively misdescriptive under 17 U.S.C. §1052(e)(3). Additionally, Habano asserted that the mark was a geographical indicator under Articles 23-28 of the Pan-American General Inter-American Convention for Trade Mark and Commercial Protection of 1929 and thus should be cancelled under 17 U.S.C. §§1126(b) and (h).

Cubatabaco alleged that term Pinar del Río indicates that the goods in question originate from the Cuban province of Pinar del Río

Rodriguez moved to dismiss for lack of standing.

Petitioner Need Not Be Seeking Registration

In a per curiam decision, the TTAB rejected Rodriguez's argument that under Empresa Cubana del Tabaco v. Culbro Corp., 478 F. Supp. 2d 513 (S.D.N.Y. 2007), Cubatabaco could not have standing to seek cancellation of the registration unless Cubatabaco itself was trying to register a mark that was likely to be confused with the registered mark.

The board distinguished the facts in Culbro. The board said:

At issue in the Culbro line of cases was whether acquiring a priority right under Trademark Act Section 43(a), through advertising in the United States, where the goods were available for purchase only outside the United States, amounted to the acquisition of a property interest under Trademark Act Section 43(a), and thus a transfer of property to the Cuban plaintiffs which had to be specifically licensed.

In contrast, the question of the establishment of a property interest was not at issue in the instant proceeding. The board also emphasized that the OFAC had specifically granted Cubatabaco a license to pursue its petition.

Next, the board ruled that the Cuban petitioners could have standing based on enforceable rights, even under the regime of the Cuban embargo. The board noted that Cubatabaco claimed use in commerce throughout the world and widespread dissemination of the assertion that its cigars were also made in Cuba.

Significantly, such promotional activity also spread to the United States through advertisements in publications. Furthermore, the board noted that Cubatabaco had asserted that it would be damaged by Rodriguez's registration of the term, a real interest for the purposes of standing.

The allegation that the registration was geographically misdescriptive also could be entertained absent any effort on Cubatabaco's part to obtain a registration itself. Indeed, the board said, Cubatabaco and Habanos “do not need to own a pending application for the mark, do not have to be using the term as a mark, or even use the term at all, in order to establish their standing.”

Cubatabaco's assertions under the relevant provisions of the Lanham Act were sufficient to avoid a motion to dismiss, the board said, emphasizing that such allegations of fact must still be supported by evidence at trial.

The TTAB panel comprised Administrative Trademark Judges T. Jeffrey Quinn, Lorelei Ritchie, and Frances Wolfson.

By Anandashankar Mazumdar

Opinion at