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Bacardi sues USPTO over renewal of Cuban 'Havana Club' trademark

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Bottles of Havana Club rum are displayed inside a bar in Havana, November 25, 2015. CUBA-USA/TRADEMARKS REUTERS/Alexandre Meneghini

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  • Bacardi says office should have canceled trademark in 2006
  • PTO renewed Cubaexport's registration in 2016
  • Bacardi, Cuba in long-running dispute over 'Havana Club' name

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(Reuters) - Bacardi has sued the U.S. Patent and Trademark Office for allegedly violating the law by reviving a Cuban government entity's "Havana Club" trademark, which the liquor giant uses on American rum.

The lawsuit, filed Tuesday in Virginia federal court, is part of a long-running battle between Bacardi and Cuba over the "Havana Club" name, which Bacardi says was unlawfully seized along with the assets of Cuban company Jose Arechabala SA by the Castro regime in 1960.

The complaint said Bacardi began selling Havana Club rum in the U.S. in 1995 after buying the brand from JASA. Cuba's state-run Cubaexport and French spirits company Pernod Ricard sell rum under the same name in other countries, but are barred from selling it in the U.S.

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Bermuda-based Bacardi's founders were exiled from Cuba after the Cuban revolution.

Cubaexport first registered the "Havana Club" trademark in the U.S. in 1976. According to the complaint, Cubaexport tried to renew the registration in 2006, but was thwarted after failing to get a license from the U.S. Treasury Department's Office of Foreign Assets Control.

The complaint said Cubaexport's trademark should have expired six months later under federal law, but the PTO renewed the registration shortly after OFAC gave it a license in 2016.

Bacardi's complaint said the renewal "some ten years after the registration had expired is a moral outrage to be sure, but also violates the law and must be set aside." It also said Bacardi's application to register its "Havana Club" mark will likely be refused because of it.

"Bacardi has pledged that we would take every means available to protect 'Havana Club,'" and the complaint is "a continuation of that ongoing fight," a Bacardi spokesperson said in a Wednesday email.

The PTO didn't immediately respond to a request for comment.

The case is Bacardi & Co v. U.S. Patent and Trademark Office, U.S. District Court for the Eastern District of Virginia, No. 1:21-cv-01441.

For Bacardi: Michael Lynch, Damon Suden and Cameron Argetsinger of Kelley Drye & Warren; and David Zionts of Covington & Burling.

(Editor's Note: This story has been updated with additional attorney information for Bacardi.)

Read more:

Bacardi demands U.S. explain giving Havana Club brand to Cuba

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Our Standards: The Thomson Reuters Trust Principles.

Washington-based correspondent covering court cases, trends, and other developments in intellectual property law, including patents, trademarks, copyrights, and trade secrets. Previous experience at Bloomberg Law, Thomson Reuters Practical Law and work as an attorney.

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