Bacardi loses again in 'Havana Club' lawsuit against US Trademark Office

Jan 24 (Reuters) - A Virginia federal court on Friday ruled against Bacardi [RIC:RIC:BCARDU.UL] for the second time in the liquor company's fight with the U.S. Patent and Trademark Office over the Cuban government's trademark rights to "Havana Club" rum.

U.S. District Judge Leonie Brinkema granted requests from the USPTO and Cuba's Cubaexport to dismiss Bacardi's lawsuit over the trademark office's decision to renew Cubaexport's federal "Havana Club" trademark, according to a filing summarizing a Friday court hearing.

U.S. President Joe Biden separately enacted a law in December barring U.S. agencies from recognizing trademarks confiscated by the Cuban government following the country's Communist revolution.

The court filing did not describe Brinkema's reasoning for her decision. Bacardi said in a statement that it would appeal, and that Brinkema had deferred "entirely to the discretion of the USPTO despite the USPTO ignoring established law and its own regulations and policies."

A spokesperson for the USPTO declined to comment.

Cubaexport and French spirits company Pernod Ricard (PERP.PA) sell Havana Club rum outside of the United States. Pernod Ricard said in a statement that it was pleased with the decision.

Bacardi, which was exiled from Cuba after the Cuban Revolution, said that the Cuban government unlawfully seized the Havana Club name and assets from Jose Arechabala SA in 1960. Bacardi bought Jose Arechabala's brand and started selling Havana Club rum in the United States in 1995.

Cubaexport first registered its Havana Club trademark in the U.S. in 1976.

Bacardi argued in its 2021 lawsuit that Cubaexport's trademark should have expired in 2006 after failing to get a license to renew it from the U.S. Treasury Department's Office of Foreign Assets Control. The lawsuit challenged the USPTO's 2016 decision to renew Cubaexport's trademark after OFAC changed course and issued the license near the end of the Obama Administration.

U.S. District Judge Liam O'Grady dismissed the case in 2022, finding that Bacardi could only challenge the mark through trademark office procedures. The 4th U.S. Circuit Court of Appeals revived the case last year.

A judge in Washington, D.C. ruled for Bacardi last year against Cubaexport's trademark infringement allegations in a separate case.

The Virginia case is Bacardi & Co v. U.S. Patent and Trademark Office, U.S. District Court for the Eastern District of Virginia, No. 1:21-cv-01441.