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A federal trademark board has dismissed Bacardi U.S.A.’s long-running claim to the “Havana Club” rum label in a decision that also absolved Florida Gov. Jeb Bush of accusations that he improperly sought to influence the head of the Patent and Trademark Office to resolve the case in Bacardi’s favor. For Bacardi, the Jan. 29 ruling by the Trademark Trial and Appeal Board means that the U.S. rights to the well-known Havana Club label will remain with a Cuban corporation called CubaExport. That company has sought to transfer the U.S. rights to Havana Club Holdings (HCH), a joint venture owned by Cuba and French liquor giant Pernod Ricard. But Bacardi, a Bermuda-based multinational whose U.S. operations are headquartered in Miami, contends that it rightfully purchased the trademark from the original owner, Jose Arechabala S.A., in 1996. The dispute over the Havana Club name can be traced back 40 years. When Fidel Castro took power in Cuba, he nationalized Cuban businesses, and the Arechabala family fled the country. In exile, they let the U.S. trademark rights lapse in 1973. Three years later, Cuba stepped in and registered the Havana Club mark with the PTO. Today HCH sells Havana Club rum in more than 80 countries. But because of the U.S. embargo, it is not sold in the United States. Now the trademark board has rejected both Bacardi’s request that it cancel CubaExport’s trademark and HCH’s allegations that Gov. Bush engaged in improper lobbying. For Bush, it means that there will likely be no further probing by HCH’s American lawyers into the contacting of federal officials in 2002 by the governor and his staff on Bacardi’s behalf. The governor’s lobbying work was detailed in dozens of e-mails made public by his office in October 2002. HCH accused the governor of using illegal “political pressure” to help Bacardi. A Bush spokeswoman said that the governor was merely trying to help a local business. The governor’s e-mails flowed, however, while the world’s biggest rum maker and its Miami executives were pouring tens of thousands of dollars into the political war chests of Gov. Bush and the Florida Republican Party — more than $200,000 since 1998. The donations included a $50,000 contribution to the GOP two weeks before Gov. Bush wrote a letter to James Rogan, then director of the PTO, urging a swift and favorable ruling for Bacardi. The trademark board is part of the PTO, and the director is a political appointee of the president — who is, of course, Gov. Bush’s brother. The board’s ruling also exonerated Rogan, who stepped down in January, and another top PTO official, Jon Dudas, who was lobbied on Bacardi’s behalf by Bush’s office. Dudas replaced Rogan and is now acting director. “Simply put, the evidence submitted with HCH’s original motion does not persuade us that there is cause to grant the relief HCH seeks, i.e. issuing a show cause order or requiring full disclosure by the petitioners, Gov. Bush, [ex-PTO] director Rogan and Mr. Dudas,” the board said in its 56-page ruling. The long-running Havana Club dispute has also produced a 1999 federal law, Section 211, which prohibits U.S. courts from enforcing trademark rights expropriated by foreign governments. A month after the law passed, another lawsuit — by HCH against Bacardi — was dismissed. Since then, the World Trade Organization has held that Section 211 violates international intellectual property protections. A bill is pending in Congress to repeal it. And former Sen. Connie Mack (R-Fla.) recently registered to lobby on Section 211 on Bacardi’s behalf. Dan Christensen is a staff writer with the Daily Business Review, an American Lawyer Media newspaper. He can be reached at [email protected].

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