Cuban corporations have standing to petition for cancellation of US mark

United States of America

In Corporacion Habanos SA v Rodriguez (Cancellation No 92052146, August 1 2011), in a precedential opinion on a motion to dismiss a cancellation petition for failure to state a claim, the Trademark Trial and Appeal Board (TTAB) has clarified the elements that must be alleged by Cuban companies seeking trademark protection in the United States.

The petitioners were two Cuban corporations that petitioned to cancel a supplemental registration for the mark PINAR DEL RÍO. This mark had been registered for cigars by the respondent, Juan Rodriguez.

As grounds for cancellation, the petitioners alleged that the registered mark was:

The respondent filed a motion to dismiss the petition for cancellation on the grounds that the petitioners lacked standing. In denying the motion, the TTAB held that, to overcome such a motion, a petitioner must allege only facts which, if proved, would establish that it is entitled to the relief sought, namely that:

  • the petitioner has standing to bring the proceeding; and
  • there is a valid statutory ground for cancelling the registration.

To demonstrate standing, the petitioners alleged that:

The petitioners claimed that PINAR DEL RIO is an appellation of origin for raw or manufactured tobacco and goods made in Pinar del Rio Province, Cuba. The petitioners also filed a special licence issued by the Office of Foreign Assets Control (OFAC) authorising them to file and prosecute a cancellation petition in the TTAB.

In the motion to dismiss, the respondent argued that a petitioner can have standing to cancel a registration only if the proceeding is related to an effort by the petitioner to have the USPTO accept an application to register a similar competing mark. The TTAB rejected this argument, noting that there is no requirement for a petitioner to establish ownership of a registration or even a property interest in a mark in a case alleging deceptiveness or deceptive geographical descriptiveness.

The TTAB cited the petitioners’ claim that they were engaged in the sale of tobacco and that they owned rights in Pinar Del Rio as an appellation of origin. This was sufficient to show a real interest and a reasonable basis for believing that, as promoters and manufacturers of cigars, they would be damaged through consumer deception. Thus, the petitioners had alleged a real interest that served to meet the standing requirements.

To state a claim for cancellation on the grounds that a respondent’s mark is primarily geographically deceptively misdescriptive, the following elements must be alleged:

  • the primary significance of the mark is a generally known geographic location; 
  • the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (ie, that a goods/place association exists), when in fact the goods do not come from that place; and 
  • the misrepresentation would be a material factor in the consumer’s decision to purchase the goods.

The TTAB also discussed the fact that Cuban companies need a special licence from OFAC to bring a cancellation proceeding. However, this was a jurisdictional issue, rather than a standing requirement.

Because the petitioners had standing as to at least one properly pleaded ground for cancellation, they were entitled to assert any other legally sufficient ground as well, including the claims based on Section 2(a), the Pan-American Convention and fraud.

Michael A Grow, Arent Fox LLP, Washington DC

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