
It is a basic tenet of U.S. trademark law that rights in a trademark are gained through use of the mark in the United States. Priority in trademark rights, and the ability to stop others from using the same mark, is based on actual use in the marketplace. But a recent Trademark Trial and Appeal Board decision, Empresa Cubana Del Tabaco D.B.A. Cubatabaco v. General Cigar Co., Inc. (TTAB 2022), recognized an exception to this rule, based on a 1929 treaty, the Inter-American Convention for Trade Mark and Commercial Protection, commonly referred to as “the Pan American Convention.”
The proceeding was the latest installment in a 25-year legal battle between Empressa Cubana, a Cuban company, and General Cigar, a U.S. company based in Virginia, over the trademark COHIBA for cigars. Empressa Cubana has been barred for 60 years by the Cuban embargo from selling its cigars in the United States. The dispute has lead to several court opinions, including from the Second and Federal Circuits.
In the latest dispute, Empressa Cubana brought a proceeding to cancel two registrations by General Cigar, based largely on the Pan American Convention. The United States joined that treaty in 1929, and most countries in Latin America, including Cuba, are signatories. The treaty protects (1) nationals of contracting states, and (2) domiciled foreigners who own a manufacturing or commercial establishment or an agricultural development in any of the contracting states.
The treaty provides that where a protected party seeks to register its mark in another member country and is refused registration because of another “interfering” registration, the latter can be cancelled if (a) the petitioner had legal rights in another member state prior to the registration and (b) the owner of the interfering registration had knowledge of the prior mark in another member state.
Empressa Cubana showed that it had trademark rights in Cuba since the 1960s, and that General Cigar, who had applied for its registration in 1992, had knowledge of this. On that basis, the Board cancelled General Cigar’s two registrations.
The implication is that any trademark rights in any country that is a member of the Pan American Convention may be given priority over local users in other member states. U.S. trademark owners, particularly those with products or marks that are used in Latin America, now need to pay attention to rights that other companies may have in these countries, and their impact on U.S. rights.
The proceeding was the latest installment in a 25-year legal battle between Empressa Cubana, a Cuban company, and General Cigar, a U.S. company based in Virginia, over the trademark COHIBA for cigars. Empressa Cubana has been barred for 60 years by the Cuban embargo from selling its cigars in the United States. The dispute has lead to several court opinions, including from the Second and Federal Circuits.
In the latest dispute, Empressa Cubana brought a proceeding to cancel two registrations by General Cigar, based largely on the Pan American Convention. The United States joined that treaty in 1929, and most countries in Latin America, including Cuba, are signatories. The treaty protects (1) nationals of contracting states, and (2) domiciled foreigners who own a manufacturing or commercial establishment or an agricultural development in any of the contracting states.
The treaty provides that where a protected party seeks to register its mark in another member country and is refused registration because of another “interfering” registration, the latter can be cancelled if (a) the petitioner had legal rights in another member state prior to the registration and (b) the owner of the interfering registration had knowledge of the prior mark in another member state.
Empressa Cubana showed that it had trademark rights in Cuba since the 1960s, and that General Cigar, who had applied for its registration in 1992, had knowledge of this. On that basis, the Board cancelled General Cigar’s two registrations.
The implication is that any trademark rights in any country that is a member of the Pan American Convention may be given priority over local users in other member states. U.S. trademark owners, particularly those with products or marks that are used in Latin America, now need to pay attention to rights that other companies may have in these countries, and their impact on U.S. rights.