Trademark Smoked: The Fall of General Cigar’s COHIBA Registration

After nearly 30 years of litigation, a federal court has canceled General Cigar’s U.S. trademarks for COHIBA cigars — all because of a little-known treaty and a Cuban brand once favored by Fidel Castro. What does this mean for U.S. trademark law and the future of the COHIBA brand? Tune in to this week’s episode of The Briefing as Scott Hervey and Jessica Corpuz unpack this high-stakes decision. Watch this episode on the Weintraub YouTube channel. Show Notes: Scott: It’s a battle decades in the making. Two cigar companies, one Cuban and one American, locked in litigation over one of the most iconic cigar trademarks in the world, Cohiba. And in a recent decision, a federal District Court in Virginia upheld a ruling canceling the US trademark registration long held by General Cigar. The reason? A rarely used international treaty and the trademark’s Cuban origin. I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Jessica Corpuz. We’re going to talk about the Cohiba Trademark decision and what it means for brand owners on today’s installment of The Briefing. Jessica, welcome to The Briefing. It’s been a little while, but it’s good to have you back. Jessica: Thanks for having me, Scott. Scott: So this case isn’t It’s new. In fact, this dispute has been going on for nearly 30 years, and it’s between Cigar General, which is a US company, and Cuba Tobacco, a Cuban state-owned enterprise. Both claim rights to the Cohiba trademark. Have you ever had a Cohiba cigar? Jessica: Not personally, no. Have you? Scott: I have, yes. Outside of the United States, of course. Cigar General in the US, which held the Cohiba trademark, and Cuba Tobacco, which held that trademark in Cuba. Jessica: Yeah, that’s right. So it all started in the late 1990s, when Cuba Tobacco applied to register Cohiba in the United States. The problem was that General Cigar already had registered the Cohiba marks, a wordmark and a stylized version, both used for cigars. Cuba Tobacco asked the USPTO to cancel General Cigar’s registrations, claiming it had prior rights under international law. Scott: Right. Initially, the ETTAp suspended the cancellation case while Cuba Tobacco pursued litigation in federal court. That case made its way all the way up to the Second Circuit, which blocked Cuba Tobacco from getting injunctive relief, saying that any court-ordered transfer of the trademark to a Cuban company would violate US sanctions under the Cuban Assets Control Regulations. Jessica: Exactly. But then things shifted. The federal circuit later said that Cuba Tobacco could still pursue cancellation Installation of General Cigar’s marks at the T tab under a separate theory. Article 8 of the Inter-American Convention, sometimes known as the Pan-American Convention, a treaty both the US and Cuba are parties to. Scott: Okay, so let’s pause here for a second and let’s unpack a few things. First, let’s get some background on the Pan-American Convention. The Pan-American Convention, now you know why they call it the Pan-American Convention, is formerly known as the General Inter-American Convention for Trademarks and Commercial Protection. That’s a long one, was signed in 1929 and entered into force in 1931. It was one of the earliest multinational efforts to create a uniform protection system for trademarks and commercial names across the Americas. And this was at a time when international trademark protection was really still developing. The convention was groundbreaking for expanding reciprocal rights among member nations and recognizing foreign trademark rights that went way beyond traditional territorial principles. Jessica: Yeah. So the convention’s core goal was to protect legitimate business interests and prevent unfair competition across national borders. It sought to establish a framework whereby companies in one signatory country could assert rights against conflicting registrations in another. This included not just registration-based protections, but also protections based on prior use and legal recognition in the country of origin. Article 8, which is the key provision issue in the Coheba litigation, reflects that exact purpose, allowing a trademark owner in one contracting state to cancel conflicting mark registered another if it had prior legal protection and the registrate had knowledge of the original use. Scott: While the Pan-American Convention has often taken a back seat to more prominent treaties like the Paris Convention or the TRIPS Agreement, the Pan-American Convention remains in force and has been recognized by US courts as self-executing, meaning that it becomes US law upon ratification without the need for additional legislation to actually implement the treaty. That status gives it the same force as federal law. And as the Cohiba case shows, it can be a powerful tool in cross-border trademark disputes, especially among countries, well, primarily among countries that are parties to the treaty like the United States and Cuba. Jessica: So, Scott, what other countries are members of the Pan-American Convention? Scott: In addition to US and Cuba, member states include Mexico, Guatemala, Honduras, Nicaragua, Costa Rica, Panama, Colombia, Venezuela, Peru, Brazil, and Paraguay. Jessica: It’s really too bad that China isn’t a member, huh? Scott: Right. Given the problems US brands have in China with Chinese actors filing for Chinese trademarks that belong to a growing brands in the US before those brands file in China, the ability to use Article 8 in China to cancel a trademark would be a wonderful thing. Jessica: It would be great. But here, let’s talk about Article 8. So it allows a trademark owner in one contracting state, in this case, Cuba, to cancel a mark registered another here in the United States if two key elements are met, right? Scott: Right. And the first element is that the foreign mark was protected in the country of origin prior to the US registration. And the second is that the US registrant had knowledge of the foreign mark’s use before the filing in the US. The idea is to prevent companies from racing to the trademark office in another country to grab a brand that they know is being used abroad, exactly like they do in China. In this case, Cuba Tobacco had registered its Cohiba mark in Cuba in the early 1970s and had been selling the cigars since 1970, including diplomatic gifts and retail outlets for foreign nationals in Havana. And yes, Cohiba really was Fidel Castro’s favorite cigar, and he often gave it to dignitaries as gifts. Jessica: Well, the court actually found that General Cigar knew all of this. In fact, internal memos from 1977 referred to Cohiba as, Castro’s Cigar, and noted that it was used in Cuba. Still, General Cigar pushed ahead with its application in March of 1978, apparently deciding that securing a US registration was more important than avoiding a conflict. Scott: So the TTAB ultimately canceled General Cigar’s registration under Article 8, finding both legal protection of the Cuban mark and knowledge on the part of General Cigar. And when General Cigar appealed to the federal court in Virginia, the court upheld the TTAB’s decision. Jessica: So, General Cigar tried to argue that the cancellation itself was a prohibited transfer of property under US embargo laws. But the court disagreed, finding that the Cuban Assets Control Regulations didn’t bar the T-Tab from canceling the registration because a cancellation, unlike a court order transferring a mark, doesn’t hand property over to a Cuban entity. It simply removes the registration. Scott: Right. Now, that’s right. And that’s an important distinction and one that could have broader implications. This ruling reinforces that international treaties, even lesser-known ones like the Pan-American Convention, can create real, enforceable rights in US trademark law. Jessica: Yeah. And it also underscores the importance of good trademark hygiene. If a company knows about an existing foreign brand and still tries to register it here without disclosure, it may be vulnerable under Article 8. Scott: So Jessica, what do you think? Is this the end of the line for General Cigar and its use of Cohiba? Jessica: Not necessarily. The ruling doesn’t actually give Cuba tobacco the US rights yet. It just clears the way. Whether Cuba tobacco can actually register and use the market in the US still remains to be seen, especially since the embargo is still in place and the CACR limits Cuban companies’ ability to acquire US trademarks. Scott: Okay. So let’s talk about what happens now for a General Cigar, given that its trademark registration for Cohiba has been canceled. Cancellation doesn’t automatically mean that General Cigar has to stop using the mark. In the United States, trademark rights are based on use, not just registration. That means that General Cigar could, in theory, continue using the Coheba brand in commerce just without the benefit and legal presumptions that come with federal registration. Jessica: Yeah, but that comes with some serious risk. Without a federal registration, General Cigar loses the legal presumption of ownership, the to enforce the mark in certain venues and keep protections like nationwide constructive notice. More importantly, Cuba Tobacco, now holding a potential priority claim under Article 8 of the Pan-American Convention, may be in a stronger position to argue that general cigars continued use of cohiba actually constitutes infringement. Scott: So could Cuba tobacco sue for trademark infringement in the Unite...