The Trademark Trial and Appeal Board (TTAB) applied Article 8 of the Pan-American Convention on December 20, 2022, to cancel two trademark registrations for COHIBA covering cigars. This is the latest in a 25-year battle between Empresa Cubana Del Tabaco d/b/a Cubatabaco (CT) and General Cigar Co. (GC). Empresa Cubana Del Tabaco D.B.A. Cubatabaco v. General Cigar Co., Inc., No. 92025859, 2022 WL 17844056 (TTAB, Dec. 20, 2022) [precedential].

Fidel Castro favored COHIBA cigars, which CT (owned by the Cuban government) began distributing outside Cuba in 1982, but the U.S. trade embargo meant they could not be sold in the United States. During this time, GC, a U.S. company with no ties to Cuba, started making cigars in the Dominican Republic for sale in the United States under the brand name COHIBA, and registered the marks at issue in the United States in 1981 and 1995.

CT first filed a cancellation in 1997 on various grounds, including that it had prior rights in another member country of the Pan-American Convention (also known as the Inter-American Convention). In 1998, the case was suspended pending civil litigation between the parties.

The civil litigation was active for many years, and ultimately U.S. federal courts dismissed all of CT’s claims. However, they specifically noted that the TTAB could decide the cancellation issues.

The cancellation was taken out of suspension in 2011 and, after standing issues were resolved, proceedings resumed in October 2015.

In December 2022, the TTAB ordered that GC’s registrations be canceled. The Pan-American Convention provides in Article 8 that the owner of a trademark in a member country can seek cancellation of a later-filed registration for a similar trademark in another member country, provided the owner of the later-filed registration knew about the earlier mark. There is no requirement for the owner of the later-filed registration to have ever used the mark in the other member country. As CT owned COHIBA in Cuba before GC filed its applications in the United States, and because GC had knowledge of CT’s mark at the time it filed, CT was entitled to cancel GC’s registrations.

The Second Circuit’s dismissal of CT’s claim in the federal litigation did not bar it because that only went to the infringement claim, not the cancellation.

GC appealed the TTAB decision to the U.S. District Court for the Eastern District of Virginia on February 20, 2023.

Source:https://www.inta.org/perspectives/law-practice/united-states-ttab-invokes-the-pan-american-convention-to-cancel-two-cohiba-registrations/