Empresa Cubana Del Tabaco v. General Cigar Co., Inc.
753 F.3d 1270
Fed. Cir.2014Background
- Cubatabaco challenges the USPTO Board's grant of summary judgment to General Cigar, dismissing Cubatabaco's Amended Petition to cancel the COHIBA registrations.
- Cubatabaco, a Cuban entity, owns COHIBA abroad and sought cancellation to clear the way for U.S. registration under Lanham Act §1064.
- CACR generally restricts Cuban-related transactions; Cubatabaco relied on a general license to pursue U.S. trademark registration and cancellation actions.
- Second Circuit previously held that the CACR barred injunctive relief against General Cigar in federal court, not addressing cancellation before the Board.
- Board relied on the Second Circuit’s conclusion about standing and did not reach issue/claim preclusion; Board treated Cubatabaco as lacking standing based on that decision.
- Court applies de novo review to whether Cubatabaco has a statutory cause of action and whether preclusion bars apply, vacating and remanding for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Cubatabaco has a statutory Lanham Act cause of action to cancel registrations | Cubatabaco has a real interest and damages; Section 1064 authorizes cancellation by a party with legitimate interest. | Board is bound by Second Circuit decision denying standing under CACR constraints; no independent standing to cancel. | Cubatabaco has a Lanham Act cause of action to seek cancellation. |
| Whether issue or claim preclusion bars Cubatabaco’s Amended Petition | Preclusion does not apply due to different issues, facts, and the Board’s authority under §1064. | Second Circuit decision and related proceedings could preclude relitigation of related issues. | Neither issue nor claim preclusion bars the Amended Petition. |
| Whether the CACR’s effects prevent Cubatabaco from pursuing cancellation before the Board | CACR authorizes general licenses allowing Cubatabaco to seek cancellation to protect Cuban marks. | CACR precedents limit Cubatabaco’s rights; Board must respect prior federal court rulings. | CACR does not bar Cubatabaco from cancellation before the Board; action remains viable. |
| Whether Cubatabaco’s IAC claims and related grounds are precluded | IAC grounds were not fully decided by the Second Circuit and remain viable. | Second Circuit effectively resolved IAC grounds against Cubatabaco. | Issue preclusion does not bar Grounds 5 and 7 (IAC claims). |
| Whether the Board properly rejected grounds based on bad faith, unfair competition, and famous-marks doctrine | Bad-faith and related doctrines support cancellation under 1064; grounds not foreclosed by res judicata. | Second Circuit’s ruling limited the scope of those theories; preclusion may apply to some issues. | Grounds 4, 8 survive preclusion analysis for cancellation considerations; not barred. |
Key Cases Cited
- Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024 (CCPA 1982) (regarding standing to cancel based on legitimate interest)
- Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360 (Fed. Cir. 2000) (preclusion principles in parallel contexts)
- Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462 (2d Cir. 2005) (CACR limitations on injunctive relief; ownership implications for mark)
- Havana Club Holding S.A. v. Galleon S.A., 203 F.3d 116 (2d Cir. 2000) (well-known marks and related international protection)
- Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367 (Fed. Cir. 2013) (principles for applying issue preclusion in complex contexts)