General Cigar Company, Inc. v. Empresa Cubana del Tabaco
781 F.Supp.3d 514
E.D. Va.2025Background
- This case involves a long-standing dispute over the use of the "Cohiba" cigar trademark in the United States between General Cigar Company (a U.S. company) and Empresa Cubana del Tabaco d/b/a Cubatabaco (a Cuban state-owned entity).
- Cubatabaco registered and used the Cohiba mark in Cuba since the early 1970s, while General Cigar registered the Cohiba mark in the United States in 1978 despite knowing of its Cuban use.
- In 1997, Cubatabaco applied to register the Cohiba mark in the U.S. and petitioned to cancel General Cigar’s registrations under Article 8 of the Inter-American Convention (IAC), but faced obstacles due to the Cuban embargo regulations.
- There has been extensive litigation, including a district court action in the Southern District of New York (SDNY), several appeals to the Second and Federal Circuits, and proceedings before the Trademark Trial and Appeal Board (TTAB).
- The core dispute centers on whether cancellation of General Cigar's registrations by TTAB under Article 8 of the IAC is lawful and whether the Cuban embargo regulations (CACR) prohibit such cancellation as an unlawful transfer of property to a Cuban national.
- The current action is General Cigar’s appeal to the Eastern District of Virginia seeking reversal and vacatur of TTAB's cancellation order.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Legal protection of Cuban mixed mark for "Cohiba" | Mixed mark registration in Cuba did not protect word “Cohiba” alone until 1980 word mark | Word element in mixed mark (pre-1978) protects the word “Cohiba” for cigars | Word “Cohiba” protected in mixed mark |
| General Cigar’s knowledge of Cuban use | Company lacked knowledge of Cuban trademark use in 1978; any use was not “trademark use” | General Cigar knew of Cuban use and Cohiba’s association with Castro and cigars | General Cigar had requisite knowledge |
| TTAB’s jurisdiction to cancel under IAC Article 8 | TTAB lacked jurisdiction; issue preclusion applies; IAC not controlling | TTAB has jurisdiction under IAC Article 8; IAC is self-executing U.S. law | TTAB has proper jurisdiction |
| Whether CACR embargo prohibits cancellation | CACR embargo bars any cancellation as it would be a transfer of property to a Cuban national | General license in CACR expressly allows cancellation actions related to trademarks | CACR does not bar TTAB cancellation |
Key Cases Cited
- Bacardi Corp. of Am. v. Domenech, 311 U.S. 150 (U.S. 1940) (IAC is self-executing; liberal construction of treaties for mark protection)
- Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462 (2d Cir. 2005) (CACR bars court-ordered injunctive relief; did not decide TTAB cancellation issue)
- Empresa Cubana Del Tabaco v. General Cigar Co., Inc., 753 F.3d 1270 (Fed. Cir. 2014) (Cubatabaco had standing to seek cancellation; TTAB must determine effect of IAC under U.S. law)
- Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (U.S. 2014) (statutory cause of action, not Article III standing, governs ability to sue for cancellation)