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

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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