TTAB Upholds Havana Club’s Trademark Registration in the U.S.

In a much-anticipated ruling, the U.S. Trademark Appealing Bureau (TTAB) turned down a motion to cancel the Havana Club trademark in that country, a move that automatically upholds the registration renewal presented by Havana Club Holding (HCH), a joint venture founded by Pernod Ricard S.A. back in 1993.

The legal scuffle started out with a demand for the cancellation of the Havana Club trademark registration in U.S. soil filed by the Bacardi Co. on the basis that such registration had been made under fraudulent circumstances.

The TTAB ruling that espoused the registration validity also rejects allegations that the Havana Club trademark had only been registered in 1976 after the company’s former owner had left the firm and renovation rights had consequently expired since 1973.

The TTAB also established that Havana Club Holding had made an adequate registration request in 1996 and that the U.S. Patent and Trademark Office had acted appropriately when it accepted the renovation request and eventually renewed the trademark registration on behalf of HCH.

“We praise the TTAB for making a right and fair decision solely based on the merits of the case,” said Mark Z. Orr, vice president for North American Affairs at U.S. Pernod Ricard.

As a matter of fact, the TTAB ruling also calls a law known as Section 211 to account for allowing discriminatory treatment of certain Cuban trademarks by banning renovation requests and preventing holders from filing legal lawsuits in U.S. courts.

While the original intention of the law was to help specific plaintiffs in judicial cases, long-term implications go way beyond that purpose. And Section 211 also cuts both ways because it jeopardizes over 5,000 American trademarks and brands registered in Cuba.

Section 211 also violates U.S. obligations in international treaties to such an extent that the World Trade Organization outlawed it back in 2002.

“The decision also confirms that both the TTAB and the courts are absolutely capable of ruling on issues involving Cuban trademarks in a fair and impartial way,” Mr. Orr concluded.