Straight Up Or On The Rocks? The Never-Ending Battle Over HAVANA CLUB – Will Congress Step In And Override The USPTO?

Posted by on Jun 7, 2016 in The Womp Womp Word | 0 comments

009501032At the end of May, the House Appropriations Committee released the 2017 Financial Services Appropriation Bill. One of the provisions included in the bill appears to have been custom-made for Bacardi in its ongoing dispute with Cubaexport, the joint venture between the Cuban government and Pernod Ricard, over the U.S. rights to the HAVANA CLUB trademark:

SEC. 135. (a) None of the funds made available in this Act may be used to authorize a general license or approve a specific license … with respect to a mark, trade name, or commercial name that is the same as or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated unless the original owner of the mark, trade name, or commercial name, or the bona-fide successor-in-interest has expressly consented.

In early 2016, the U.S. Patent and Trademark Office approved the renewal of Cubaexport’s registration for HAVANA CLUB, a registration that has been the subject of litigation and administrative proceedings for roughly two decades. Bacardi has argued for many years that it acquired the U.S. rights to HAVANA CLUB from the Arechabala family, the Cuban founders of HAVANA CLUB who fled the country during the revolution and whose rum-making facilities were seized by the Cuban government. The so-called Bacardi Bill, passed by Congress as part of the 1998 Appropriations Bill, forbids the registration or enforcement of a trademark in the United States that is the same as or similar to one used in connection with a business or assets that were confiscated. It was on the basis of this 1998 law that Bacardi argued that Cubaexport’s HAVANA CLUB registration should not be renewed. Cubaexport, in response, maintained the position that the Bacardi Bill was not retroactive and did not apply to its HAVANA CLUB registration. Until this year, the registration remained in limbo, but the USPTO’s sudden approval of Cubaexport’s renewal breathed new life into the dispute.

Apparently in response to the USPTO’s actions, along with Bacardi’s lobbying efforts, the House Appropriations Bill included the language prohibiting funding with respect to a confiscated trademark. Should this language survive Congressional passage of the 2017 Appropriation Bill, it appears that the HAVANA CLUB registration will remain mired in the decades-long battle over its U.S. ownership. And with the end of the Cuban Embargo much closer to reality than ever, HAVANA CLUB may turn into the political equivalent of a trademark hot potato, bouncing among Congress, the courts, and the USPTO in search of resolution.