News Alert: Bacardi Wins Appeal In Havana Club Case

A Bacardi challenge to the U.S. Patent and Trademark Office (USPTO) over the Havana Club rum trademark in the U.S. is set to move forward after the company won its appeal of an earlier decision that would have dismissed its challenge.

This particular case dates to a lawsuit the spirits giant filed in late 2021 against the USPTO alleging that the agency acted illegally when it restored the trademark for Havana Club to Cuban government-owned exporter Cubaexport in 2016.

The filing alleged that the USPTO did not have the discretionary power to make that move, which occurred roughly a decade after Cubaexport was denied its re-registration of the trademark in 2006. Cubaexport, which is partnered with Pernod Ricard for global distribution of Havana Club, originally gained the U.S. trademark in 1976, but has been barred from selling the brand in the U.S. due to the embargo on Cuban goods. According to Impact Databank, the Pernod-distributed Havana Club sold 3.8 million cases globally last year, despite not being marketed in the U.S.

In 2022, U.S. District Court Judge Liam O’Grady dismissed Bacardi’s suit against the USPTO on grounds that the court does not have authority to adjudicate in such disputes over property, such as the trademark in question.

But today the 4th U.S. Circuit Court of Appeals in Richmond, Virginia has reversed that move, allowing the case to go ahead. “The district court believed the Lanham Act precluded judicial review under the Administrative Procedure Act (APA) and so dismissed Bacardi’s lawsuit for lack of subject matter jurisdiction,” wrote U.S. Circuit Judge Allison Rushing for a three-judge panel. “We conclude that the Lanham Act does not foreclose an APA action for judicial review of the PTO’s compliance with statutes and regulations governing trademark registration renewal. We therefore reverse the district court’s judgment.”

This case is only one front in the long-simmering battle over Havana Club in the U.S. A separate suit, in which Bacardi is seeking to have Cubaexport’s U.S. trademark for the brand canceled, is still pending. Bacardi has long held that it owns the “common law rights in the Havana Club mark for rum,” having purchased them from the brand’s founding Arechabala family, which fled Cuba during the Castro revolution.—Daniel Marsteller

Tagged : Bacardi, Havana Club, Pernod Ricard

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