Let's Do Business: How Lifting The Embargo Has Opened The Door For Cuban Trademark Suits

from the hola! dept

I’ll miss the Cuban embargo. The easing of relations that it brings with it will likely mean the end of the 1950s-style spy games and crazy plots — like the CIA plot designed to make a leader’s beard fall out. Instead, we’ve finally decided that the United States is open for Cuban business. And you know what that means: trademark lawsuits!

The U.S. Supreme Court recently ruled in favor of a Cuban state-owned company and refused to intervene in a dispute over the “Cohiba” trademark. This is the most recent development in the long-standing rivalry between General Cigar Co Inc., an American (and Scandinavian) company, and Cubatabaco, a Cuban company.

How fun! We finally open up the borders for some business with Cuba and one of the Castro companies decides it’s trademark time! Keep in mind, of course, that the state that owns Cubatabaco is a communist nation, but not so communist that they’ll refuse to use our capitalist tools to make that money. This dispute actually goes back nearly two decades, with Cubatabaco originally filing a trademark claim in 1997, which was eventually tossed in 2005 by the Second Circuit court, finding that any transfer of property, including a trademark, to a Cuban company would violate the embargo.

But now that the embargo is gone, Cubatabaco has refiled, with a lower court ruling that the Cuban company could challenge General Cigar’s mark with the USPTO even before the embargo was lifted — a ruling the Supreme Court has refused to send back for review. So there appears to be nothing standing in the way of a trademark challenge.

All that said, it’s difficult to see how valid a challenge is, actually, given several factors. First, the two companies as yet don’t compete in the same markets, due to the legacy of the embargo. Second, the word “cohiba” might not deserve a trademark held by anyone, given that it is simply a foreign word that means “tobacco” in Taino, a language of the Caribbean. That would be like getting a trademark on your beer brand, Cerveza.

However this turns out, welcome officially to business in the States, Cuba! Now that the embargo doesn’t keep property from transfering your way, it’s all trademark, patents and copyright from here on out!

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Companies: cubatabaco, general cigar co

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Comments on “Let's Do Business: How Lifting The Embargo Has Opened The Door For Cuban Trademark Suits”

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Anonymous Coward says:

Re: Re: Kennedy should have known better

… or if you got cancer from the radioactive cloud

… of the nuke that landed on target on the foreign country. Collateral damage ain’t picky.

But hey, think of those Florida fisherman who would be gaining Three-eyed Fish powers after getting bitten…

David says:

You should be glad

You should be glad they are playing by your and corporation rules when doing business with you: that’s the whole point of TIPA and its ilk.

If you don’t like your own rules, do what is necessary to get them changed. After all, you have a democratic representative election system.

Too bad the best chance to get them changed still seems to get a nuclear war and occupation by Communist forces. Finding politicians to vote for that actually care for their constituents seems like the trickier option.

But at the current point of time, it increasingly looks like your only option.

Anonymous Coward says:

“the word “cohiba” might not deserve a trademark held by anyone, given that it is simply a foreign word that means “tobacco” in Taino, a language of the Caribbean.”

Not quite. The word “COHIBA” was coined specifically as a brand name, and this made-up word was claimed by its creators to mean “tobacco” in the long-extinct aboriginal language of Cuba which never had any written form. So we basically just have to take their word that they didn’t embellish this back-story just a bit … or even just make it up completely. Unlike the word “APPLE” — a common English language word with many different trademarks attached to it — the word “COHIBA” only means one thing: the post-revolution cigar brand .

While many existing privately-owned Cuban cigar brands were nationalized after the 1950s communist revolution — giving the original owners a hypothetically valid claim against the Cuban government over their trademarks — Cohiba was not one of them. Cohiba was not even marketed as a brand name until the 1980s. Despite its recent vintage, Cohiba soon became (arguably) the most well known premium cigar brand in the world.

The Cohiba trademark fiasco demonstrates the hypocrisy of the US government’s stand on intellectual property, by allowing a counterfeit knockoff to commandeer the legal rights of an established (and world-famous) brand name. The US has for decades refused to recognize these trademarks that the rest of the world recognizes, while recognizing the trademarks of companies considered by the rest of the world to be basically traffickers of counterfeit goods.

And it’s not like no one ever saw this messy situation coming. Trade embargoes are never intended to be permanent, and although the Cuban embargo lasted far longer than anyone would have imagined, its eventual dissolution was bound to create an adversarial set of duplicate trademarks in the US, which was bound to be litigated in the courts sooner or later.

I have a solution: so as not to pick sides (and to save legal costs) let’s just ban all the Cuban cigar brand names, both pro-Castro and anti-Castro clones. Or better yet, let’s ban all tobacco trademarks and brand names entirely.

Anonymous Coward says:

Re: Re:

Or better yet, let’s ban all tobacco trademarks and brand names entirely.

Just switch to numeric identification of brands… have the UPC bar code and number as the only thing printed on an otherwise completely white cardboard box.
(or maybe add a sick lung image just as deterrent against smoking too)

Don’t allow anything else to be printed on any of the packaging materials (either internal or external packaging), just the UPC number and numeric bar code, without anything else.

PT (profile) says:

“Keep in mind, of course, that the state that owns Cubatabaco is a communist nation”

I fail to see how the political party running their government is in any way relevant – we don’t seem to have a problem doing business with odious regimes at the other end of the spectrum. Cohiba always has and always will mean Cuban cigars. Everyone knows that the Cohibas you can legally purchase in the United States are a cheap counterfeit, and illegally imported real Cohibas have always been at a premium, but this is a case where an idiot in a hurry could be genuinely misled. The trademark should revert to Cuba.

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