Summary: Cuban cigar company has a statutory cause of action to petition for cancellation of trademark registrations under the Lanham Act, and neither issue nor claim preclusion bars the petition.

Case: Empresa Cubana Del Tabaco v. Gen. Cigar Co., Inc., No. 2013-1465 (Fed. Cir. June 4, 2014) (precedential). On appeal from Trademark Trial and Appeal Board in Cancellation No. 92025859. Before Rader, Taranto and Hughes.

Procedural Posture: Appellant appealed TTAB’s grant of summary judgment of no standing in cancellation proceedings. CAFC vacated and remanded.

  • Standing: The CAFC found that appellant had a cause of action under the Lanham Act to seek cancellation of the COHIBA mark because the TTAB refused its application for registration of the mark in the U.S. based on a likelihood of confusion with appellee’s registrations, thereby creating a reasonable belief that appellee’s registrations are blocking appellant’s application and causing it damage. Section 44(e) of the Lanham Act allows a foreign registrant to rely on a foreign registration in seeking a U.S. registration for the same mark, and only requires bona fide intent to use the mark in commerce rather than actual use.
  • Issue Preclusion: The CAFC found issue preclusion does not bar any of the grounds for which appellant seeks cancellation of appellee’s registrations because the issues raised by appellant were either not addressed by, not necessary to, or not identical to the Second Circuit’s judgment that federal regulations limited the district courts’ authority to grant the injunctive relief sought.
  • Claim Preclusion: The CAFC found claim preclusion does not bar the petition seeking cancellation of appellee’s registrations for the COHIBA mark because earlier infringement proceedings do not bar subsequent petitions for cancellation and because the underlying transactional facts involved in the Second Circuit decision were different from those in the cancellation proceedings.

Aryn Conrad