1. How does the Paris Convention impact this case?

2. If Cubatabaco is successful in cancelling the mark, is it likely to be able to register COHIBA in the United States?

Both Cubatabaco and General Cigar manufacture and distribute cigars using the COHIBA mark. General Cigar is a Delaware corporation. It owns two trademark registrations for the COHIBA mark for use in connection with cigars. Cubatabaco is a Cuban entity that owns the COHIBA mark in Cuba and supplies cigars bearing the mark throughout the world. Cubatabaco does not distribute its cigars in the United States due to import restrictions imposed by the Cuban Assets Control Regulations (CACR). An exception to the CACR allows Cuban entities to engage in transactions related to the registration and renewal of trademarks before the USPTO. Cubatabaco sought to register COHIBA for cigars and related goods. Cubatabaco also sought to cancel General Cigar’s registrations. General Cigar opposed the cancellation.

JUDICIAL OPINION

RADER, C. J.… Because the USPTO refused Cubatabaco registration based on a likelihood of confusion with General Cigar’s Registrations, Cubatabaco has a real interest in cancelling the Registrations and a reasonable belief that the Registrations blocking its application are causing it damage. Cubatabaco therefore has a cause of action under the Lanham Act to seek cancellation of the Registrations. The Lanham Act provides a cause of action to “any person who believes that he is or will be damaged … by the registration of a mark” to petition the USPTO to cancel the mark. 15 U.S.C. § 1064.

Furthermore, Cubatabaco has a legitimate commercial interest in the COHIBA mark. Indeed, that interest appears evident in the USPTO’s refusal of the pending application based on a likelihood of confusion with the Registrations. A petitioner is authorized by statute to seek cancellation of a mark where it has “both a ‘real interest’ in the proceedings as well as a ‘reasonable’ basis for its belief of damage.”

ShutEmDown Sports, Inc. v. Lacy, 102 U.S.P.Q.2d 1036, 1041 (TTAB 2012) (citing Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999)). And a pending application that has been refused registration based on a likelihood of confusion with a registered mark is sufficient to show that the petitioner seeking to cancel the registered mark is the type of party Congress authorized under 15 U.S.C. § 1064. Id. (citing Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029 (CCPA 1982)). Section 44(e) of the Lanham Act, 15 U.S.C. § 1126(e), only requires that Cubatabaco have a bona fide intent to use the mark in commerce rather than requiring actual use before registration. Cubatabaco therefore has a legitimate interest in the cancellation of the Registrations that are causing Cubatabaco damage by blocking its application. Indeed, if Cubatabaco proves successful in the cancellation proceedings, it could obtain registration of the COHIBA mark.