Trademarks

• Author: International Law Group

In 1963, the United States imposed an embargo on trade with Cuba.

The Cuban Asset Control Regulations (CAR)), 31 C.F.R. Section 515.201 etc. based on Section 5(b) of the Trading with the Enemy Act of 1917, codified as amended at 12 U.S.C. Section 95a (2000), set forth the ban. Thirty-three years later, Congress codified the Regulations in the Cuban Liberty and Democratic Solidarity Act of 1996 (LIBERTAD Act), codified at 22 U.S.C. Section 6032(h)). The Secretary of the Treasury has delegated its administration to the Office of Foreign Assets Control (OFAC).

The Embargo Regulations ban Cuban companies such as Empresa Cubana del Tabaco, d.b.a. Cubatabaco (plaintiff) from marketing cigars in the U.S. Plaintiff nevertheless claims that it owns the U.S. COHIBA mark and that the sale by Culbro Corp., and General Cigar Co. (defendants), U.S. companies, of COHIBA cigars in the U.S. unlawfully infringes its mark.

In 1969, plaintiff registered the COHIBA mark within Cuba. By January 1978, plaintiff set about to register the COHIBA mark in seventeen nations, including most Western European countries, but not the U.S. In 1983, plaintiff thought about registering its COHIBA mark in the U.S. until it found out that defendant had already secured the U.S. registration.

In February 1985, plaintiff applied to the U.S. Patent and Trademark Office (PTO) to register its BEHIQUE mark with the same trade dress that it was using on its COHIBA cigars elsewhere. Two years later, plaintiff pondered challenging defendant's 1981 COHIBA registration, but decided against it.

Defendant first discovered the name "Cohiba" in the late 1970s. After seeing reports that plaintiff was intending to sell its COHIBA cigars outside of Cuba, defendant applied to register the COHIBA mark with the PTO in March 1978, with a claimed first use date of February 13, 1978. Defendant obtained the unopposed registration in February 1981. Defendant concedes that the Cuban COHIBA was already well known to U.S. cigar consumers when defendant was selling COHIBA cigars in the U.S. from 1978 until late 1987. In early 1997, defendant launched a new cigar under the COHIBA name.

Plaintiff sued defendant in a New York federal court in November 1997. The first six claims alleged violations of various treaty provisions and asserted that plaintiff was entitled to relief under Sections 44(b) and 44(h) of the Lanham Act, 15 U.S.C. Section 1126(b), (h). Specifically, of the claims actually passed on by the...