United States’ trademark board rules in favor of Cuban Company in fight over rights to COHIBA Cigar Trademark
- Cubatabaco (Empresa Cubana del Tabaco) started legal proceedings back in 1997 to cancel General Cigar’s registration of COHIBA, the well-known Cuban brand, and obtain the trademark rights for COHIBA in the United States.
- The United States’ Trademark and Trial Appeal Board ruling orders the cancellation of General Cigar’s registrations of COHIBA in the US under the Inter-American Convention for Trademark and Commercial Protection (1929), to which both Cuba and the United States are parties.
- The cancellation of General Cigar’s registrations opens the way for Cubatabaco to register the COHIBA trademark mark in the United States, as it has exclusive rights over the brand.
Habanos, S.A., world leader in the commercialization of premium Cuban cigars, including COHIBA, celebrates the United States’ Trademark and Trial Appeal Board ruling (20th December, 2022) in favor of the Cuban company Empresa Cubana del Tabaco (Cubatabaco) in its decades-old fight for the United States rights to the trademark COHIBA for cigars.
COHIBA is famous throughout the world, including the United States, as a Cuban cigar of the highest quality, the best of the best.
The U.S. Trademark Board ordered cancellation of General Cigar’s registrations of COHIBA in proceedings brought by Cubatabaco. Cancellation of General Cigar’s registrations opens the way for Cubatabaco to register the COHIBA trademark mark in the United States.
The Trademark Board found that General Cigar, a United States company, knew that COHIBA was the name of a Cuban cigar when it first applied to register COHIBA in March 1978. Among other evidence, the Board pointed to internal memoranda in the files of General Cigar unearthed by Cubababaco that COHIBA was already a “brand in Cuba” and “Castro’s brand cigar.”
Under the Inter-American Convention for Trademark and Commercial Protection (1929), to which both Cuba and the United States are parties, countries are obligated to refuse or cancel a registration when the applicant – here, General Cigar – knew the trademark is already used in another treaty country. General Cigar has been selling cigars in the U.S. under the well-known COHIBA name despite this.
Cubatabaco’s fight for the trademark rights to COHIBA in the United States dates back more than 25 years, when it first brought proceedings in the Trademark Board in 1997. The litigation between Cubatabaco and General Cigar included extended proceedings in the federal courts as well as before the Trademark Board.
Michael Krinsky of Rabinowitz Boudin Standard Krinsky & Lieberman, P.C., a New York law firm, has been lead counsel for Cubatabaco.
The Trademark Board’s decision is available at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions. The case number is 92025859.
General Cigar has the right to appeal the decision.