In General Cigar Co. v. Empresa Cubana del Tabaco (Cubatabaco), the U.S. District Court for the Eastern District of Virginia upheld the TTAB's cancellation of two U.S. trademark registrations for the mark "COHIBA" owned by U.S. company General Cigar. Cuban state-owned cigar company Cubatabaco, the original producer of "COHIBA" cigars in Cuba, petitioned to cancel the registrations under the 1929 General Inter-American Convention for Trade Mark and Commercial Protection ("IAC"). This treaty governs the protection of trademarks and trade names, and provides remedies for unfair competition, among parties in the member states. The Convention was signed in Washington, D.C., on February 20, 1929, by the United States and most Latin American countries, and was ultimately ratified by Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, Peru, and the United States. Although still in force, the IAC is seldom invoked in U.S. trademark litigation, making this case a rare modern example of its application.
Article 8 of the IAC provides that a trademark registration in a contracting state can be cancelled if the petitioner's mark enjoyed legal protection in another contracting state before the registrant filed its application, and the registrant knew of the petitioner's prior use or registration of the mark in its home country. Cubatabaco's Cuban rights to COHIBA predate General Cigar's U.S. applications by approximately nine years, and General Cigar's own business records established its knowledge of Cubatabaco's use as of the U.S. filing date. The ruling underscores how international treaty provisions can empower foreign rightsholders to cancel conflicting U.S. registrations in cases involving prior rights and prior knowledge of foreign use.
TTAB's Decision
Cubatabaco filed a petition to cancel General Cigar's two U.S. registrations for COHIBA, alleging that General Cigar had registered the mark with knowledge of Cubatabaco's longstanding use in Cuba. The TTAB found in Cubatabaco's favor, holding that the company satisfied the two key requirements under Article 8 of the IAC:
- Cubatabaco had legal protection for the mark in Cuba prior to General Cigar's application in the U.S. in 1978; and
- General Cigar had knowledge of the Cuban brand's existence and use before filing.
The TTAB relied on Cuban trademark registrations with an original filing date of 1969 and a registration date of 1972. The TTAB record also established that Cubatabaco had extensive use of the COHIBA brand within Cuba (including selling Cohiba cigars at luxury hotels and for diplomatic gifts) and the brand had received significant worldwide press that identified COHIBA as "Fidel's favorite." Finally, the TTAB record included documentary evidence showing not only that General Cigar had an interest in acquiring Cuban cigar brands because U.S. consumers associated them with premium cigars, but that its executives were aware of the specific COHIBA brand and had made handwritten notes labeling COHIBA as "Castro's cigar brand."
District Court Decision
Seeking to overturn the TTAB ruling, General Cigar filed suit in the Eastern District of Virginia under 15 U.S.C. § 1071(b). The court reviewed the matter de novo and sided with Cubatabaco on both issues.
First, the court held that Cubatabaco's Cuban composite logo registration—combining a graphic element with the word COHIBA—provided sufficient legal protection under Cuban law to support a claim under Article 8 for cancellation of General Cigar's registration of the word mark COHIBA. Citing expert testimony and Cuban jurisprudence, the court rejected General Cigar's argument that only a word mark registration could satisfy this requirement. The court also confirmed that the Cuban registration had not lapsed for non-use.
Second, the court found that General Cigar had actual knowledge of Cubatabaco's use of COHIBA by the time it applied for U.S. registration in 1978. Among other evidence, the court cited an internal General Cigar memo from December 1977 explicitly noting the Cuban use of COHIBA and referencing it as "Castro's brand."
The court also rejected General Cigar's narrow interpretation of "use," holding that Article 8 does not require the mark to have been used in a commercial, sales-based context. Public, well-known use—such as for diplomatic gifts—was sufficient.
Cuban Embargo Argument Rejected
General Cigar argued that cancelling its registrations would violate the Cuban Assets Control Regulations (CACR), which prohibit transfers of U.S. property to Cuban nationals. The court disagreed, reaffirming earlier Federal Circuit precedent holding that cancellation of a mark—unlike a grant of ownership or injunction—does not constitute a prohibited transfer of property. The court further noted that such cancellation actions fall within a general license under 31 C.F.R. § 515.527(a)(1), which permits Cuban entities to engage in registration-related proceedings before the USPTO.
Takeaway
This decision highlights the powerful role that international treaties like the IAC can play in U.S. trademark law. When a foreign party can show (1) prior legal protection in its home country and (2) that the registrant knew of the brand before filing in the U.S., Article 8 of the IAC provides a clear legal pathway to cancel even longstanding U.S. registrations. This case is a reminder that treaty-based rights can be a valuable and often overlooked tool in addressing bad-faith registrations—particularly in cross-border disputes where territorial rights would otherwise limit enforcement options.
Case citation: General Cigar Co. v. Empresa Cubana del Tabaco, No. 1:23-cv-227 (E.D. Va. May 7, 2025).
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