Empresa Cubana Del Tabaco v. Culbro Corp.
| Citation | 399 F.3d 462 |
| Decision Date | 24 February 2005 |
| Docket Number | Docket No. 04-3005-CV (XAP).,Docket No. 04-2527-CV(L). |
| Parties | EMPRESA CUBANA DEL TABACO, doing business as Cubatabaco, Plaintiff-Counter-Defendant-Appellee-Cross-Appellant, v. CULBRO CORPORATION, Defendant-Counter-Claimant, General Cigar Co., Inc. and General Cigar Holdings, Inc. Defendants-Counterclaimants-Appellants-Cross-Appellees. |
| Court | United States Courts of Appeals. United States Court of Appeals (2nd Circuit) |
Maureen E. Mahoney, Latham & Watkins LLP, Washington, DC (John J. Kirby, Jr. and Alexandra A.E. Shapiro, Latham & Watkins LLP, New York, NY, on the brief; E. Marcellus Williamson, Latham & Watkins LLP, Washington DC, on the brief; Harry C. Marcus and Janet Dore, Morgan & Finnegan, L.L.P., New York, NY, of counsel), for Defendants-Counterclaimants-Appellants-Cross-Appellees.
Michael Krinsky, Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C. (David B. Goldstein, Christopher J. Klatell, and Carrie Corcoran, Boudin, Standard, Krinsky & Lieberman, P.C.; Kevin Walsh and Steven J. Young, Winston & Strawn, on the brief), New York, NY, for Plaintiff-Counter-Defendant-Appellee-Cross-Appellant.
Peter D. Keisler, Assistant Attorney General; Douglas N. Letter and Jonathan H. Levy, Attorneys, Civil Division, U.S. Department of Justice, Washington DC; David N. Kelley, United States Attorney for the Southern District of New York, New York, NY; Arnold I. Havens, General Counsel, U.S. Department of the Treasury, Washington, DC, for Amicus Curiae United States of America.
Before: CABRANES, STRAUB, WESLEY, Circuit Judges.
Defendants-Counterclaimants-Appellants-Cross-Appellees, General Cigar Co., Inc., and General Cigar Holdings, Inc. ("General Cigar"), appeal from a judgment and permanent injunction of the United States District Court for the Southern District of New York (Robert W. Sweet, Judge), entered on May 6, 2004, finding in favor of Plaintiff-Counter-Defendant-Appellee-Cross-Appellant, Empresa Cubana del Tabaco, doing business as Cubatabaco ("Cubatabaco"), on its claim of trademark infringement under Section 43(a) of the Lanham Act, ordering cancellation of General Cigar's United States trademark registration for COHIBA cigars, permanently enjoining General Cigar from further use of the COHIBA mark, and ordering General Cigar to deliver to Cubatabaco all merchandise, packaging and other materials bearing the COHIBA name, to recall from retail customers and distributors products bearing the mark, and to inform customers and distributors that they could not sell General Cigar's COHIBA-labeled products in the United States. Cubatabaco has cross-appealed from the District Court's dismissal of its treaty-based and state law claims.
This appeal arises from a dispute between Cubatabaco, a Cuban company, and General Cigar, an American company, over who has the right to use the COHIBA mark on cigars. After filing an application to register the COHIBA mark in Cuba in 1969, Cubatabaco began selling COHIBA cigars in Cuba. Cubatabaco has sold COHIBA cigars outside of Cuba since 1982, but, because of the United States embargo against Cuban goods, imposed in 1963, Cubatabaco has never sold COHIBA cigars in the United States. General Cigar obtained a registration for the COHIBA mark in the United States in 1981 and sold COHIBA cigars in the United States from 1978 until late 1987. In 1992, General Cigar relaunched a COHIBA cigar in the United States and has sold cigars under that mark in the United States since that time.
Cubatabaco claims that it owns the U.S. COHIBA trademark because General Cigar abandoned its 1981 registration in 1987 and that, by the time General Cigar resumed use of the mark in 1992, the Cuban COHIBA mark was sufficiently well known in the United States that it deserved protection under the so-called "famous marks doctrine." The District Court agreed and found that, although Cubatabaco had never used the mark in the United States and was prohibited from doing so under the embargo, it nonetheless owned the U.S. COHIBA mark. The District Court concluded that by failing to use the COHIBA mark from late 1987 to 1992, General Cigar abandoned its 1981 registration. It found further that because the Cuban COHIBA mark was sufficiently well known in the United States by November 1992, the date General Cigar resumed its use of the mark, Cubatabaco was entitled to priority in asserting ownership of the mark. After finding that there was a likelihood of confusion between the Cuban COHIBA mark and the General Cigar COHIBA mark, the court granted judgment to Cubatabaco on its claim for trademark infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), cancelled General Cigar's registration of the mark, and enjoined General Cigar from using the mark. The court dismissed all other claims brought by Cubatabaco, including claims under international trademark treaties and New York law.
We do not reach the question of whether an entity that has not used a mark on products sold in the United States can nonetheless acquire a U.S. trademark through operation of the famous marks doctrine. We need not reach that question in this case because even were we to recognize and apply the famous marks doctrine, the Cuban embargo bars Cubatabaco's acquisition of the COHIBA mark via the famous marks doctrine. Therefore, we reverse the District Court's grant of judgment to Cubatabaco on its claim of trademark infringement under Section 43(a) of the Lanham Act. We affirm the District Court's dismissal of all other claims brought by Cubatabaco.
In 1963 the United States imposed an embargo on Cuba. The Cuban Asset Control Regulations ("Embargo Regulations" or "Regulations"), 31 C.F.R. § 515.201 et seq., which were promulgated pursuant to Section 5(b) of the Trading with the Enemy Act of 1917, ch. 106, § 5(b), 40 Stat. 415 (), contain the terms of the embargo. See Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116, 120 (2d Cir.), cert. denied, 531 U.S. 918, 121 S.Ct. 277, 148 L.Ed.2d 201 (2000). In 1996 Congress codified the Regulations in the Cuban Liberty and Democratic Solidarity Act of 1996 ("LIBERTAD Act"), Pub.L. No. 104-114, Title I, § 102, Mar. 12, 1996, 110 Stat. 792 (1996) (codified at 22 U.S.C. § 6032(h)). "The Secretary of the Treasury has the authority to administer the Cuban embargo, which he has delegated to the Office of Foreign Assets Control (`OFAC')." Havana Club, 203 F.3d at 120 (citing 31 C.F.R. § 515.802). The Embargo Regulations prevent Cuban entities, such as Cubatabaco, from selling cigars in the United States. Despite its inability to sell cigars here, Cubatabaco claims that it owns the COHIBA mark in the United States and that General Cigar's sale of COHIBA cigars in the United States unlawfully infringes its mark.
The District Court, after a bench trial, issued a comprehensive opinion setting forth its factual findings. See Empresa Cubana del Tabaca v. Culbro Corp., No. 97 Civ. 8399, 2004 WL 602295, at *3-27 (S.D.N.Y. Mar.26, 2004) ("Empresa III"). Here we recount only those facts necessary to explain our holding.
In 1969 Cubatabaco filed an application to register the COHIBA mark in Cuba. Throughout the 1970s it sold COHIBA cigars in Cuba. By January 1978 Cubatabaco had applied to register the COHIBA mark in seventeen countries, including most Western European countries, but did not apply to register the mark in the United States. In 1982 Cubatabaco began selling COHIBA cigars outside of Cuba. In 1983 Cubatabaco considered registering its COHIBA mark in the United States but learned that General Cigar had already obtained the United States registration. On February 22, 1985, Cubatabaco filed an application with the United States Patent and Trademark Office ("PTO") to register its BEHIQUE mark in the United States with the same trade dress that it used on its COHIBA cigars elsewhere. In 1987 Cubatabaco considered challenging General Cigar's 1981 COHIBA registration, but chose not to take any action.
General Cigar first learned of the name "Cohiba" in the late 1970s after General Cigar executives read a Forbes magazine article stating that Cubatabaco was planning to sell its COHIBA cigars outside of Cuba. General Cigar filed an application to register the COHIBA mark with the PTO on March 13, 1978, with a claimed first use date of February 13, 1978. The application was unopposed, and General Cigar obtained the registration on February 17, 1981. General Cigar sold COHIBA cigars in the United States from 1978 until late 1987.
In February 1992 The Wine Spectator magazine published articles describing COHIBA as Cuba's "finest" cigar and "the hot brand." In September 1992, the premier issue of Cigar Aficionado magazine, which had a United States circulation of 115,000 copies, featured a story about Cubatabaco's Cuban COHIBA cigars. The magazine rated cigars and gave the Cubatabaco's COHIBA Robusto the highest ranking. Shortly thereafter, General Cigar decided to use COHIBA on a new premium cigar, which it launched on November 20, 1992. The District Court noted that General Cigar "acknowledges that the reintroduction was at least in part a response to Cigar Aficionado's coverage of the Cuban COHIBA." General Cigar filed for a second COHIBA registration on December 30, 1992, and the application was granted without opposition in 1995.
In late 1992 and early 1993 General Cigar considered seeking permission to use Cubatabaco's registered trade dress. In a January 1993 memo, General Cigar's then in-house counsel wrote that having permission to use the trade dress would help General Cigar "to exploit the popularity, familiarity, brand recognition and overall success of the Cuban Cohiba." General Cigar did not pursue further the plan to seek permission to use the trade dress.
In late January or February 1997 General Cigar decided to launch a new cigar under the COHIBA...
To continue reading
Request your trial
-
Shandong Shinho Food Indus. Co. v. May Flower Int'l, Inc.
...NYGBL § 360–l ], [a plaintiff] must show ownership of a distinctive mark and a likelihood of dilution." Empresa Cubana del Tabaco v. Culbro Corp. , 399 F.3d 462, 485–86 (2d Cir. 2005) (citing Sports Auth., Inc. v. Prime Hosp. Corp. , 89 F.3d 955, 966 (2d Cir. 1996) ). Standing for state dil......
-
Pure Power Boot Camp, Inc. v. Warrior Fitness Boot Camp, LLC
...awarded, a viable common law claim for unfair competition requires an additional showing of bad faith. See Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 485 (2d Cir.2005); Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 149 (2d Cir.1997); see also Saratoga Vichy Spr......
-
Itc Ltd. v. Punchgini, Inc.
...a defendant need show only an intention to resume use `within the reasonably foreseeable future.'" Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 468 n. 2 (2d Cir.2005) (quoting Silverman v. CBS, Inc., 870 F.2d at 45). ITC submits that the district court erred in imposing a strict......
-
LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.
...claim fails as a matter of law. LV is thus entitled to summary judgment on this claim. See, e.g., Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 485 (2d Cir.2005) ; Denimafia, 2014 WL 814532, at *26 n. 101 ; Gameologist, 838 F.Supp.2d at 165 ; Lopez, 883 F.Supp.2d at 430–31.110 3.......
-
The Copymark Creep: How the Normative Standards of Fan Communities Can Rescue Copyright
...Ltd. v. Sterling Purchasing & Nat'l Distrib. Co., 520 F.3d 393, 399 (5th Cir. 2008); Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462, 478 (2d Cir. 2005); Zyla v. Wadsworth, 360 F.3d 243, 251 (1st Cir. 2004). But see Bretford Mfg., Inc. v. Smith Sys. Mfg. Corp., 419 F.3d 576, 580 (7t......
-
Eric Goldman, Deregulating Relevancy in Internet Trademark Law
...v. Culbro Corp., 2004 WL 602295 (S.D.N.Y. Mar. 26, 2004) (IIC found even though the trademarked goods are embargoed), rev'd in part, 399 F.3d 462 (2d Cir. 2005). 272 See PACCAR Inc. v. TeleScan Techs., LLC, 319 F.3d 243 (6th Cir. 2003) (providing information about accessories and dealers us......
-
Mindy Pava, the Cuban Conundrum: Proposing an International Trademark Registry for Well-known Foreign Marks
...as Bacardi and General Cigar have seized on this opening inId. at 381.10 Id. at 381–82.Compare Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462 (2d Cir. 2005), with Int’l Bancorp, 329 F.3d at 381.The principality of Monaco encompasses less than one square mile, but became known for H......