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Cubatabaco, the Cuban company that produces the famous Cohiba cigar, cannot stop a U.S. company from selling cigars of the same name, a federal appeals court ruled in late February. The unanimous ruling from the U.S. Court of Appeals for the 2nd Circuit reversed a ruling last year that gave Cubatabaco rights to the Cohiba trademark in the United States under the “famous marks” doctrine, even though it had never registered the mark here. The 2nd Circuit held that since Cubatabaco is barred from selling its cigars by the U.S. embargo against Cuba, it cannot acquire property rights in U.S. trademarks. The court also rejected arguments that Cubatabaco was entitled to relief because the use of its famous mark in the United States caused consumer confusion. “None of United States law, the facts in this case, or international treaties warrants such acrobatics in this case,” Judge Chester Straub wrote in Cubatabaco v. General Cigar Co. General Cigar had registered the name “Cohiba” in 1981 but abandoned the mark in 1987. When the popularity of cigars began to rise, the company registered the mark again and reintroduced its Cohiba line. Cubatabaco sued, alleging that its cigars were famous enough to afford it protection under the famous-marks doctrine. In March 2004, U.S. District Judge Robert Sweet agreed. The judge canceled General Cigar’s trademark registration, awarded Cubatabaco judgment for infringement, and barred General Cigar from using the mark. General Cigar appealed. THE VALUE OF FAME In November, the Justice and Treasury departments weighed in to assert that the regulations of the Cuban embargo barred Cubatabaco’s acquisition of a U.S. trademark and required reversal of the finding of trademark infringement. But, the government said, the regulations did not stop Judge Sweet from canceling General Cigar’s trademark registration or enjoining it from selling cigars under the name “Cohiba.” Given the judge’s factual findings about the mark’s fame and “strong evidence” that General Cigar was trading off that fame, the government said, canceling General Cigar’s registration was appropriate relief. The 2nd Circuit did not find that argument persuasive. Judge Straub explained: “Cubatabaco cannot obtain relief on a theory that General Cigar’s use of the mark causes confusion, because, pursuant to our holding today, General Cigar’s legal right to the COHIBA mark has been established as against Cubatabaco. General Cigar has a right to use the mark in the United States because it owns the mark in the United States.” The court said it need not decide the issue of whether an entity that has not used a trademark on products in the United States can acquire a U.S. trademark through the famous-marks doctrine. Maureen Mahoney of the D.C. office of Latham & Watkins represented General Cigar. Michael Krinsky of N.Y.’s Rabinowitz, Boudin, Standard, Krinsky & Lieberman represented Cubatabaco. Tom Perrotta ( [email protected]) is a reporter forNew York Law Journal , an ALM newspaper, where this article first appeared.

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