Bacardi files legal action against USPTO in Battle of Havana Club
December 30, 2021
Bacardi Ltd has fired another salvo in the long battle over the Havana Club brand in the US market. The spirits giant filed a lawsuit in federal court this week against the United States Patent and Trademark Office (USPTO) alleging that the agency acted illegally when it returned Havana Club’s trademark to the Cuban exporter Cubaexport in 2016.
The record alleges that the USPTO did not have the discretion to make this decision, which came about a decade after Cubaexport was denied its trademark re-registration in 2006. Cubaexport, which is in partnership with Pernod Ricard for the worldwide distribution of Havana Club, initially obtained the brand in the United States in 1976, but was not allowed to sell the brand in the United States due to the embargo on Cuban products.
This costume continues the long saga of the American brand for Havana Club. Bacardi claims to have rightly acquired the Havana Club brand from the founders of the Arechabala family, who fled Cuba after its assets were seized during the Cuban Revolution. Bacardi has been selling Havana Club rum produced in Puerto Rico in the United States since the mid-1990s, but its brand has not been approved since its filing in 1994. According to the lawsuit, Bacardi expects its application to trademark be refused, due to the USPTO’s decision to re-register Cubaexport’s trademark in 2016.
“Over 15 years ago, the USPTO recognized that Cuba’s registration of the Havana Club trademark” would be canceled / expired “because Cuba failed to timely meet the mandatory renewal requirements set out in the trademark law, ”a Bacardi spokesperson told SND. “And yet, the Trademark Office inexplicably changed course in 2016 when it overstepped its statutory authority and illegally accepted Cuba’s renewal request in violation of established law. This latest Bacardi complaint asks the federal court to remedy this injustice.
“Cubaexport has been the rightful owner of the Havana Club brand in the United States since 1976,” a Pernod Ricard spokesperson told SND. “In 2016, the trademark was legally renewed with the United States Patent and Trademark Office until 2026. At the same time, the Havana Club trademark dispute between Cubaexport and Bacardi is still pending before the United States District Court of District of Columbia. We are confident that this case will be decided in favor of Cubaexport on the merits in the US courts. “– English Shane
Tagged: Bacardi, Havana Club, pernod