Trademark battle ends badly for Bacardi in US court appeal.

In a significant setback for Bacardi, a US appeals court handed down an unfavorable ruling on Tuesday, dealing a blow to the company's protracted battle with Cuba over the "Havana Club" trademark.

A US court setback for Bacardi has unfolded as the Richmond-based 4th U.S. Circuit Court of Appeals overturned its challenge to a trademark renewal, specifically the 2016 decision by the U.S. Patent and Trademark Office favoring Cubaexport's "Havana Club" registration.

Bacardi expressed dismay at the court's decision, which granted the Cuban government a 10-year reprieve to reapply for a trademark it had initially seized unfairly. The company pointed out that Cubaexport's trademark will lapse this month and cannot be reinstated due to a 2024 law prohibiting U.S. courts from validating trademarks confiscated by the Cuban authorities.

Attorneys from Cubaexport and a USPTO representative chose not to provide statements.

Bacardi's departure from Cuba following the Cuban Revolution led to a long-standing dispute over ownership of the Havana Club name and assets seized by the Cuban government in 1960. The company acquired Jose Arechabala's brand, launching Havana Club rum sales in the US market in 1995.

In 1976, Cubaexport, a state-owned Cuban business, secured initial registration for its Havana Club trademark in the US market. Pernod Ricard, a leading French spirits company, has successfully expanded sales of Havana Club rum beyond American borders.

Bacardi's trademark battle has ended unfavorably in a recent US court hearing, with no statement from Pernod yet received.

In 2005, Cubaexport attempted to revive its U.S. trademark registration but was thwarted by the Office of Foreign Assets Control, which refused to grant a necessary license. The Treasury Department later reversed course during the final days of the Obama administration, paving the way for the USPTO's 2016 renewal of the trademark.

In a federal court in Virginia, a lawsuit was filed by Bacardi against the USPTO in 2021, contending that Cubaexport's trademark should have lapsed in 2006. However U.S. District Judge Liam O'Grady ruled against them in 2022, stating that Bacardi could only contest the mark through official channels at the trademark office. The case was subsequently reinstated by the 4th U.S. Circuit Court of Appeals in 2024.

Last year, U.S. District Judge Leonie Brinkema's decision was reaffirmed by a 4th Circuit panel of three judges on Tuesday.

The OFAC license lifted a significant hurdle, rendering the 2005 transaction eligible for consideration as payment, according to the appeals court's assessment of the matter. By 2016, what had initially appeared incomplete in 2006 was deemed timely and effective.

The case is Bacardi & Co Ltd v. Squires, 4th U.S. Circuit Court of Appeals, No. 25-1355.

Bacardi's lawyer, David Zionts from Covington & Burling.

The US Patent and Trademark Office received a submission from Weili Shaw.

Carl Micarelli, representing Cubaexport, appeared before Debevoise & Plimpton.

Bacardi suffers a second defeat in its trademark dispute with the US Trademark Office.

The Richmond, Virginia-based 4th U.S. Circuit Court of Appeals the Richmond-based 4th U.S. Circuit Court of Appeals overturned its challenge to a trademark renewal, specifically the 2016 decision by the U.S. Patent and Trademark Office favoring Cubaexport's "Havana Club" registration.