Trademark Board Smokes Defense of Two "COHIBA" Registrations for Cigars

Timothy J. Lockhart

The Trademark Trial and Appeal Board (“TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) granted a petition to cancel two registrations for COHIBA marks as used with cigars. Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. General Cigar Co., Inc., 2022 USPQ2d 1242, 2022 WL 17844056 (TTAB 2022) [precedential] (Opinion by Judge George C. Pologeorgis). The TTAB found that because Empresa Cubana Del Tabaco d.b.a. Cubatabaco (“Cubatabaco”) had legal protection for the COHIBA mark in Cuba before General Cigar Co. (“GCC”) used the mark in the United States and because GCC knew of Cubatabaco’s Cuban rights in the mark, Article 8 of the Pan American Convention entitled Cubatabaco to cancel GCC’s registrations. GCC argued that federal litigation between the parties over the course of 25 years barred the Article 8 claim under the doctrine of issue preclusion, but the TTAB did not agree.

GCC registered the COHIBA mark with the USPTO in standard characters in 1981 and in a slightly stylized form in 1995. Cubatabaco filed its own application for COHIBA in 1997, and later that year, after the application was refused in view of GCC’s registrations, Cubatabaco petitioned the TTAB to cancel GCC’s registrations. But because of a trademark infringement suit against GCC brought (and ultimately lost) by Cubatabaco, the cancellation proceeding remained suspended until 2011. When the proceeding finally resumed, GCC moved for summary judgment, alleging that, in view of the outcome of the litigation between the parties, Cubatabaco lacked standing and its claims were barred by the doctrines of claim and issue preclusion. The TTAB granted the motion solely on the ground of lack of standing.

Cubatabaco appealed to the U.S. Court of Appeals for the Federal Circuit. In 2014 the court ruled that because Cubatabaco had a statutory cause of action to petition for cancellation—i.e., Article 8—it did not lack standing. The court also ruled that claim and issue preclusion did not bar Cubatabaco’s amended petition for cancellation. The court remanded the matter to the TTAB for further proceedings consistent with the court’s rulings.

On remand, the TTAB noted that, according to Article 8, “[w]hen the owner of a mark seeks the registration or deposit of the mark in a Contracting State [i.e., a party to the Convention] other than that of origin of the mark and such registration or deposit is refused because of the previous registration or deposit of an interfering mark, he shall have the right to apply for and obtain the cancellation or annulment of the interfering mark.” Under Article 8 that right is contingent upon: (a) the owner’s having legal protection for its mark in another Contracting State; and (b) the registrant’s having knowledge of such legal protection or (c) the owner’s having circulated its goods in the Contracting State of the registrant. After discussing the evidentiary record, which included references to Fidel Castro’s giving COHIBA brand cigars to prominent U.S. journalists and politicians, the TTAB held that Cubatabaco had satisfied prongs (a) and (b) of the Article 8 test.

GCC did not argue otherwise. Rather, as the TTAB put it, “[i]nstead of arguing the merits of the Article 8 claim and commenting on the evidence [Cubatabaco] proffers in support this claim, [GCC] only contends that [Cubatabaco’s] Article 8 claim is barred by the doctrine of issue preclusion,” relying heavily relies on the U.S. Supreme Court’s decision in B & B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 113 USPQ2d 2045 (2015).” In B & B Hardware the Supreme Court ruled that TTAB decisions are entitled to preclusive effect so long as the ordinary elements of issue preclusion are met. GCC argued that because the Federal Circuit’s Empresa decision came before the B & B Hardware decision, the Empresa decision was not “law of the case” preventing the TTAB from applying issue preclusion as required, GCC said, by B & B Hardware.

The TTAB disagreed, noting that B & B Hardware did not concern “the Pan American Convention or treaty claims at all and endorsed the authority the Federal Circuit relied upon in its issue preclusion analysis” in the Empresa decision. GCC “has failed to persuade us,” the TTAB said, “that the decision in [B & B] Hardware changed ‘governing law’ as it pertains to [Cubatabaco’s] Article 8 claim. The Federal Circuit applied the rule [GCC] says [B & B] Hardware established, namely, that district court rulings have preclusive effect before the [TTAB] if ordinary issue preclusion standards are met” (citing Empresa, 111 USPQ2d at 1063).

Thus, the TTAB concluded that Cubatabaco had “proven its claim to cancel [GCC’s] registrations under Article 8 of the Pan American Convention by a preponderance of the evidence and [GCC] has failed to prove its affirmative defense that the claim is barred by the doctrine of issue preclusion.” Accordingly, the TTAB ordered GCC’s two registrations for the COHIBA mark to be canceled.


UNITED STATES: Prosecutions Show Value of Trademarks of Rare Whiskey

Timothy J. Lockhart

As Published in the INTA Bulletin on December 21, 2022, and updated on January 31, 2023.

The 2020 publication of Wright Thompson’s bestselling book Pappyland: A Story of Family, Fine Bourbon, and the Things That Last highlighted the goldrush-like search for rare—and therefore expensive—bourbons, such as PAPPY VAN WINKLE’S, that has developed over the past decade. A recent criminal case in Virginia highlights the same thing, as prosecutors have charged two men with, in effect, insider trading of information about the availability of rare bourbons.

As first reported in the Virginia Mercury, a story that The Washington Post followed up more extensively, Rob Adams has been charged with embezzlement and other felonies for selling information about which Virginia Alcoholic Beverage Control Authority (Virginia ABC) stores were scheduled to receive limited shipments of rare bourbons, such as ANGEL’S ENVY Cask Strength, OLD FITZGERALD 17-Year Bottled-In-Bond, and W.L. WELLER Antique 107. Mr. Adams allegedly obtained the information from former Virginia ABC employee Edgar Garcia, who has admitted passing it to Mr. Adams and has pleaded guilty to illegally copying government data.

Mr. Adams allegedly sold the information to members of a bourbon group on Facebook, some of whom reportedly told Virginia ABC employees which rare bourbons their stores would be receiving. Based on this information and tips from the public, Virginia ABC agents conducted an investigation that led them to Mr. Adams and Mr. Garcia. A jury trial of Mr. Adams was scheduled for December 2022. One of his attorneys claimed that although their client did distribute the information he received from Mr. Garcia, Mr. Adams did not commit a crime because he had no legal obligation to keep it secret. Prosecutors ultimately dropped three of the four charges made against Mr. Adams, who, on December 7, 2022, pleaded guilty to the fourth: conspiracy to commit computer trespassing. The Circuit Court for Hanover County, Virginia, is scheduled to sentence Mr. Adams for that crime on March 20, 2023.

Authors’ Insight

Meanwhile, the craze for rare bourbon continues. Want a bottle of PAPPY VAN WINKLE’S 23-year-old Family Reserve Bourbon? It can be yours for approximately US $5,400 from one of the few bourbon-reseller websites that offers it. Fine whiskies require years or even decades of aging in their charred oak barrels, limiting how much well-aged whiskey distillers can produce. As one bourbon fan lamented in The Washington Post story on Mr. Adams and Mr. Garcia, “Quite simply, the world is nearly out of old whiskey.” For trademark owners and practitioners, the lesson is clear: the value of the trademarks for premier whiskies will continue to grow.

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