Appeals Court Rules Against Bacardi, Says Havana Club Rum Trademark Belongs to Cubaexport — Update

By Elias Schisgall

The trademark for Havana Club rum can remain with a Cuban state-owned business, a federal appeals court ruled Tuesday, in a blow to Bacardi Ltd.'s efforts to secure the trademark as its own.

The U.S. Court of Appeals for the Fourth Circuit upheld a lower court's ruling that the patent was rightly awarded to Cubaexport by the U.S. Patents and Trademark Office, rejecting Bacardi's argument that the agency lacked the authority for the decision and failed to reasonably explain it.

The case dates back to 2005, when Cubaexport filed with the USPTO to renew the Havana Club, which it had successfully renewed every decade since 1976. The 2005 filing was denied, however, based on Cubaexport lacking a license from the Treasury Department's Office of Foreign Assets Control to pay the renewal fee.

In 2015, after rounds of petitioning and litigation, Cubaexport again sought a license from OFAC to renew the trademark. OFAC granted that request, and the USPTO decided that the OFAC license meant that the company's 2005 filing was complete and acceptable.

Bacardi then sued the USPTO, arguing the office hadn't sufficiently explained its decision and lacked the authority to renew a trademark registration that had already expired. Cubaexport later intervened as a defendant.

A three-judge panel on the Fourth Circuit rejected Bacardi's argument on Tuesday, finding that the OFAC license specifically authorized the renewal of Cubaexport's 2005 trademark. The USPTO director's explanation for the decision was "brief but adequate," the judges added.

"The OFAC license cleared the fog, removing the legal obstacle that had prevented the 2005 transfer from counting as payment," the judges wrote. "What looked incomplete in 2006 was, by 2016, timely and effective. The director recognized as much, and so did the district court."

USPTO and an attorney for Cubaexport declined to comment.

"Bacardi is disappointed that the court granted the Cuban government a 10-year grace period for renewing a trademark that was stolen in the first place," the company said in a statement.

It said that Cubaexport's next renewal application, due later this month, should be rejected by the USPTO under the No Stolen Trademarks Honored in America Act, which was signed into law by President Biden in 2023.

"This dispute is likely to be resolved soon," the company said. "Bacardi is eager to see justice served in this long-running saga."

Write to Elias Schisgall at elias.schisgall@wsj.com

(END) Dow Jones Newswires

June 16, 2026 16:11 ET (20:11 GMT)