February 5, 2016 – The fight for rights to the trademark for Havana Club rum has heated up with Bacardi filing a Freedom of Information Act (FOIA) request with the U.S. Department of Treasury seeking information as to why and how the trademark for the United States has suddenly been awarded to the Cuban Government.
Bacardi’s FOIA seeks all documents, communications and files that were created, used, or maintained by the U.S. Patent & Trademark Office (PTO), Office of Foreign Assets Control (OFAC), U.S. Department of State, Executive Office of the President of the United States (POTUS), the National Security Council (NSC), U.S. Department of Treasury and/or any third parties relating to the Havana Club rum trademark registration action.
The wrangle over the trademark in the United States is long and complicated and the recent actions of the current administration are certainly questionable. The Arechabala family of Cuba created Havana Club rum in the 1930’s. They fled Cuba after the 1959 revolution that brought Comrade Fidel Castro to power. Their plant was seized and, of course, they were never compensated. In 1973 the trademark lapsed and in 1976, CubaExport registered it in the United States. CubaExport continued to make and export Havana Club around the world, except in the United States, in partnership with the French spirits house, Pernod Ricard.
Bacardi, the largest privately owned spirits company in the world, acquired the name and the recipe from the Arechabala family and has been marketing Havana Club Rum made in Puerto Rico since 1994 in the United States.
CubaExport had renewed the trademark twice but when it tried again in 2006, Treasury’s Office of Foreign Assets Control rejected it as being inconsistent with U.S. policy. CubaExport and Pernod Ricard challenged Bacardi’s use of the name in court and eventually the U.S. Court of Appeals in Philadelphia ruled in favor of Bacardi and the Supreme Court declined to hear the case in May 2012.
It seemed like the case was closed but on January 11, 2016, the U.S. government abruptly reversed its position and granted the license (requested in 2006) to CubaExport. It is good for just 15 days before expiry. CubaExport immediately filed for a 10-year renewal until 2026 and said they expect to get it. Patent & Trademark Office approved the renewal of the registration of the trademark for a brand that was confiscated without compensation from its founders by the Cuban government – even though Congress has prohibited U.S. courts from recognizing it.
“We are filing this Freedom of Information Act request because the American people have the right to know the truth of how and why this unprecedented, sudden and silent action was taken by the United States government to reverse long-standing U.S. and international public policy and law that protects against the recognition or acceptance of confiscations of foreign governments,” says Eduardo Sánchez, senior vice president and general counsel, Bacardi. “When the highest and most powerful government agencies are not transparent about critical changes in policy, the public has the right and the responsibility to use FOIA requests and other tools at their disposal to hold the government accountable for its actions.”