Cigar trademark up in smoke

In a recent precedential decision, the Trademark Trial and Appeal Board granted a petition from a junior user to cancel two COHIBA registrations for cigars. Marking another skirmish in a decades-old trademark battle, Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. General Cigar Co., Inc., 2022 USPQ 2d 1242 (TTAB 2022), appeal docketed, No. 1:23-cv-00227 (E.D. Va. Feb. 20, 2023), has heightened awareness of the Inter-American Convention for Trade Mark and Commercial Protection, 46 Stat. 2907 (1929) (the "Pan American Convention") for many trademark practitioners.

Until this case, the Pan American Convention was a little-known international agreement, dating back nearly a century. It is a self-executing treaty that neither invokes the Lanham Act nor relies on standard American trademark principles--namely that trademark rights are based on that mark's use in commerce within a particular sovereign state. Article 8, upon which the TTAB relied, provides the right to cancel a conflicting registration that has priority for the same mark registered for the specific goods to which the mark is applied in another [treaty] member state when the registrant had knowledge--actual or constructive--of the petitioner's prior right. The owner of a trademark in another country that has neither used the mark in the U.S. nor applied for registration here can nonetheless cancel a subsequent trademark registration in this country with a few conditions. There must be a showing that the foreign registration predated the application for U.S. registration and that the U.S. registrant knew of the petitioner's use of the mark for the specific goods to which the offending mark is applied, or that the petitioner traded with or in the United States and the goods designated by the mark circulated here prior to the registration of the offending mark. In contrast to comparable theories for applying extraterritorial trademark rights (such as the unratified Article 6bis of the Paris Convention), the foreign trademark need not be well known or famous, there is no requirement of bad faith, and there is no time bar to using Article 8 to cancel U.S. registrations. Article 7 applies similar principles to unregistered marks, thereby allowing petitioners to "employ all legal means," including judicial injunction, to prevent the use of such a mark for similar goods in the United States.

Taken together, these provisions prove a potent one-two punch. First, a petitioner can use Article 8 to cancel a senior U.S. user's mark based on priority rights from a member state. Then, Article 7 allows a court to enjoin the senior user's use of the newly unregistered mark. The TTAB's statutory authority extends only to the registration or cancellation of marks

The Convention grants rights in ten member states: Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, Peru, and of course, the United States. Yet, the U.S. is a historical outlier with relatively little associated litigation. As Christine Farley, Professor of Law at American University Washington College of Law, has observed, the Convention has been employed across non-U.S. member states to assert trademark rights for years. Multinational corporations have relied on the treaty to assert their rights in such well-known marks as CROSSFIT, CALVIN KLEIN, VOGUE, and LAMBORGHINI--though the marks' name-recognition was in no way a requirement for protection. Such cases emphasize an important aspect of the treaty. Although it applies priority rights across member states for citizens of those member states, there is no prohibition against a corporation, traditionally associated with a nonmember state but asserting corporate citizenship in a member state, from taking advantage of the Convention's benefits.

Commenting for this column, Prof. Farley suggests that the Convention's absence from U.S. courts has much to do with the nature of U.S. trademark practice, where "self-executing treaties are so uncommon" that we often think "the only treaty rights we can utilize must be implemented in U.S. legislation." Thus, until now, the few U.S. practitioners "familiar with the convention know it from asserting it in Latin America on behalf of US mark owners."

Now that the Pan American Convention has gotten its moment in the sun thanks to the COHIBA litigation - in which traditional U.S. trademark law provided few protections to a petitioner barred from business in the country since the implementation of the Cuban Assets Control Regulations at the height of the Cold War - there is increased focus on its relevance to U.S. litigation. Experts like Prof. Farley expect that the Convention, so far relegated to successful invocation at the TTAB, may see more time in U.S. courtrooms. In the absence of a well-known marks doctrine, foreign trademark owners are left to search for alternative litigation strategies in the U.S. As Prof. Farley observes: "This is exactly what Articles 7 and 8 were designed for."

Grant Gabriel is an associate at Irell & Manella LLP.