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IP LitigationFederal Circuit

Cuban companies have statutory right to petition to cancel trademark registrations, despite lacking standing in infringement action

June 17, 2014

IP LitigationFederal Circuit

Cuban companies have statutory right to petition to cancel trademark registrations, despite lacking standing in infringement action

June 17, 2014

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Federal Circuit vacates and remands TTAB decision finding that Empresa Cubana del Tabaco (d/b/a Cubatabaco) lacked standing to seek cancellation of General Cigars’ registrations of the trademark COHIBA.

Empresa Cubana Del Tabaco (d/b/a Cubatabaco) v. General Cigar Co., Inc., __ F.3d __ (Fed. Cir. June 4, 2014) (RADER, Taranto, Hughes) (TTAB) (2 of 5 stars)

Standing:  Cubatabaco did not lack standing under the Lanham Act to seek cancellation of General Cigars’ registrations.  TTAB relied on the 2nd Cir opinion that Cubatabaco lacked standing to seek injunctive relief because that remedy would violate the Cuban Assets Control Regulations (“CACR”) prohibition of transfer of property in the underlying mark.  However, the 2nd Circuit specifically did not address Cubatabaco’s ability to seek cancellation at TTAB, and TTAB erred in determining Cubatabaco lacked standing to do so.

Preclusion:  Although TTAB declined to address preclusion, the Federal Circuit addresses the issue in the first instance as a legal issue that the parties fully briefed below.  Issue preclusion did not apply because:  (1) the issues were not addressed by, or necessary to, the 2nd Cir’s final judgment; (2) the bad faith determination affirmed by the 2nd Cir was not identical to the one in the proceeding before TTAB; and (3) the 2nd Cir’s dismissal under Article 7 and 8 of the General Inter American Convention for Trade Mark and Commercial Protection (IAC) does not preclude TTAB from cancelling registrations under Article 8 of the IAC pursuant to 15 U.S.C. § 1067(a).  Claim preclusion did not apply either because of “the ‘array of differences in transactional facts’ between claims of infringement and cancellation, ‘claim preclusion cannot serve to bar a petition for cancellation based upon an earlier infringement proceeding.’”  Id. at 14 (citations omitted).

Related Tags

appellate
CAFC Summary
Trademark
Federal Circuit

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