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Bacardi Files Lawsuit Against USPTO In Havana Club Battle

December 30, 2021

Bacardi Ltd has fired a new salvo in the long-running battle over the Havana Club trademark in the U.S. market. The spirits giant filed a lawsuit in federal court this week against the U.S. Patent and Trademark Office (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 alleges 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.

This suit continues the lengthy saga of the U.S. trademark for Havana Club. Bacardi contends that it rightfully acquired the Havana Club brand from founders the Arechabala family, who fled Cuba after its assets were seized during the Cuban revolution. Bacardi has sold a Puerto Rico-produced Havana Club rum in the U.S. since the mid 1990s, but has not had its trademark approved since it was filed in 1994. According to the lawsuit, Bacardi expects that its trademark application will be denied, owing to the USPTO’s move to re-register Cubaexport’s mark in 2016.

“More than 15 years ago, the USPTO acknowledged that Cuba’s registration of the Havana Club trademark ‘will be cancelled/expired’ because Cuba had failed to timely fulfill the mandatory renewal requirements set forth in the Trademark Act,” a Bacardi spokesperson told SND. “And yet, the Trademark Office inexplicably reversed course in 2016 when it exceeded its statutory authority and illegally accepted Cuba’s renewal application in contravention of established law. This latest complaint by Bacardi is asking the federal court to remedy this injustice.”

“Cubaexport has been the rightful owner of the Havana Club trademark in the United States since 1976,” a Pernod Ricard spokesperson told SND. “In 2016, the trademark was lawfully renewed with the U.S. Patent and Trademark Office until 2026. In parallel, the dispute over the Havana Club trademark between Cubaexport and Bacardi is still pending in front of the U.S. District Court of the District of Columbia. We are confident that this matter will be decided in favor of Cubaexport on the merits in the U.S. courts.”—Shane English

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