HAVANA, April 7th (Reuters) – 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