Prof. Christine Haight Farley Explains the Pan American Convention and the COHIBA Decision

After reading the COHIBA decision,  I decided that I had to turn to Professor Christine Haight Farley of American University Washington College of Law for her help in explaining what this is all about. Many thanks to Prof. Farley for providing the insightful comments below.

You’ve Heard of COHIBA Cigars,
But Have You Heard of the Pan-American Convention?

On December 20, 2022, in a precedential opinion in Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. General Cigar Co., Inc., the TTAB ordered cancellation of two registrations for the mark COHIBA for cigars, one in typeset and one in stylized form. The owner of the cancelled registrations is General Cigar Co., Inc., a U.S.-based cigar manufacturer that first obtained a COHIBA registration in 1981 and has sold COHIBA cigars in the U.S. The successful petitioner was Empresa Cubana Del Tabaco d.b.a. Cubatabaco, a Cuban company that first obtained a Cuban registration for COHIBA for cigars in 1972 and sells COHIBA cigars throughout the world, with the exception of the U.S. due to the embargo. The case is noteworthy for three reasons.

First, this decision is the latest in an ongoing saga focused on two globally valuable Cuban trademarks: COHIBA for cigars and HAVANA CLUB for rum. Both ownership disputes began in the mid-1990s and are as of yet not fully resolved. The HAVANA CLUB trademark dispute has produced numerous decisions, including ones by the DC Circuit, the Second Circuit, and the Third Circuit courts of appeals as well as a WTO Appellate Body ruling, and an unsuccessful attempt by Bacardi to sue the USPTO earlier this year. The COHIBA dispute has likewise resulted in numerous decisions including ones by both the Second Circuit and Federal Circuit courts of appeals. The petition to cancel the COHIBA marks that was granted in this case was first filed in 1997. I should disclose that I was involved in this litigation in the 1990s and even I have a hard time keeping all of these decisions straight. These are complex cases in which U.S. trademark law intersects with international treaties, administrative law, and international relations. At the heart of each dispute is the question of the status of trademarks not used in the U.S. because of the embargo against Cuba that has now lasted 60 years.

The second interesting feature of this decision is that the basis of the TTAB’s cancellation was the substantive provisions of the 1929 General Inter-American Convention for Trademarks and Commercial Protection, referred to as “the Pan American Convention” by the TTAB. In particular, the TTAB ruled that the registrations were a violation of Article 8 of the convention, which provides the right to cancel the registration of a conflicting by a party that has priority for the same mark in another member state when the registrant had knowledge of the petitioner’s prior right. That is, the owner of a trademark right in another country that has neither used the mark nor applied for registration in the U.S., can cancel a subsequent trademark registration in the U.S. if it can show that the registrant knew of its mark. The foreign trademark need not be well-known or famous, just known to the applicant. And there is no requirement of bad faith, just knowledge. The foreign mark just needs to be protected under the trademark law of that jurisdiction, whether that be by common law or registration.

If this grounds for cancellation sounds unlike anything you’ve ever heard of in trademark law, you are not alone. Articles 7 and 8 of the Pan American Convention are unique in both U.S. and international trademark law. They offer a novel mechanism to protect foreign marks from preemptive local registration that has never been seen before or since. Article 7 goes beyond cancellation and provides the owner of a mark in a contracting state the right to challenge the use of a conflicting mark in another contracting state upon proof that the interfering party had knowledge of the challenger’s mark. Unlike the Paris Convention’s priority right, Articles 7 and 8 are not time limited. Moreover because of the knowledge requirement, Articles 7 and 8 don’t create a trap for the “innocent filer” as the Paris Convention priority right does.

While these innovative provisions seem incongruous with U.S. trademark law, there’s reason to believe that they originated with Edward S. Rogers, “the father of the Lanham Act,” who was one of three U.S. delegates who participated—likely in an outsized way—in the drafting of this convention. Rogers in particular contributed to the knowledge standard in Articles 7 and 8, insisting that it be satisfied by either actual or constructive knowledge. In this case, Cubatabco proved actual knowledge since General Cigar had two internal memos that mentioned the Cuban cigar brand. The TTAB indicated that even without these memos, there was likely constructive knowledge based on a 1977 Forbes magazine article about the Cuban COHIBA brand.

I have been on somewhat of a personal mission to draw attention to this underappreciated treaty, having written several articles and book chapters about it. The convention, also called “the Inter-American Convention” and “the Washington Convention,” at least in Latin America, remains enigmatic even though it remains in force today in every one of the original member states: Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, Peru, and the United States.

The TTAB applied Article 8 based on its precedent that the Pan-American Convention is a self-executing treaty, meaning that the convention’s substantive provisions can be given legal effect in U.S. courts without any need for Congress to implement its provisions. This is the fourth TTAB case to apply the convention as self-executing. This precedent was noted without comment or question by the Federal Circuit. Though remarkable, the holding that the convention is self-executing is sound. The Supreme Court has also held, in a 1940 unanimous opinion in Bacardi Corp. of America v. Domenech, that “[t]his treaty on ratification became a part of our law. No special legislation in the United States was necessary to make it effective.” Although many treaties need implementing legislation, this convention’s  provisions, as illustrated in Articles 7 and 8, are precise enough that direct judicial application is possible.

The third point to take away from this TTAB decision is that the protection of well-known marks under U.S. law is uneven to say the least. This case marks the first time the Pan American Convention has been applied in the service of a well-known mark. In this way, the convention offers a novel means to circumvent the lack of implementation of Article 6bis of the Paris Convention into U.S. law.

There is currently a circuit split on the protection of well-known foreign marks that are neither used nor registered in the U.S. with the Second Circuit noticing the absence of protection in the Lanham Act, the Ninth Circuit devising its own exception to territoriality, the Fourth Circuit skirting the issue by finding that trademark rights aren’t required under 43(a), and the Federal Circuit expressing skepticism of the Fourth Circuit's approach earlier this year. Reliance on the Pan American Convention adds one more approach to the mix of strategies to protect well-known marks in the U.S. A claim under articles 7 and 8 simply bypasses the absence of a well-known marks claim. Drafted just five years after the 1925 Hague revision of the Paris Convention that introduced Article 6bis, the Pan American Convention surprisingly did not simply copy Article 6bis, but instead created a whole new approach to the problem of foreign preemptive registration. It also leapfrogged Article 6bis, which offered only a means to cancel or refuse the registration of an interfering mark, by also prohibiting the use the of mark in the foreign state, something the Paris Convention didn’t add until 1958.

This latest TTAB decision will not put an end to the enduring trademark cold war between the U.S. and Cuba. Although a major blow to General Cigar, after a quarter century of litigation I would be surprised if it did not appeal. Moreover, since the cancellation of General Cigar’s COHIBA registrations does not prevent it from continuing to sell COHIBA branded cigars in the U.S., Cubatabaco is not likely to stop pursuing its claims under the Pan Am Convention. In the meantime, this TTAB decision may provide a roadmap for mark owners with rights in any of the nine other member states for how to cancel a U.S. registration without regard to any well-known marks protections.

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Article Text Copyright Christine Haight Farley 2023.