## Facts

- Empresa Cubana del Tabaco (Cubatabaco), a Cuban state enterprise, owned the COHIBA trademark in Cuba and marketed COHIBA cigars internationally beginning around 1982.
- Due to the U.S. embargo on Cuban goods and related sanctions, Cubatabaco never lawfully sold COHIBA cigars in U.S. commerce.
- General Cigar, a U.S. company, obtained a federal registration for COHIBA (1981) and sold COHIBA-branded cigars in the United States from 1978–1987 and again beginning in 1992.
- Cubatabaco sued in federal court seeking cancellation of General Cigar’s U.S. registration and an injunction barring U.S. use of COHIBA, asserting infringement and priority based on the Paris Convention’s protection for “well-known” marks as implemented through Lanham Act § 44.
- The district court found General Cigar had abandoned the mark from 1987–1992, found COHIBA “well known” in the United States by 1992, held Cubatabaco had superior U.S. rights despite nonuse, and permanently enjoined General Cigar’s use.
- General Cigar appealed; Cubatabaco cross-appealed to preserve relief under its treaty-based “well-known marks” theory.
- The Cuban Assets Control Regulations (CACR) broadly prohibit transfers of property rights to Cuban entities absent authorization, while providing limited licensing related to trademark registration and renewal.

## Issues

1. Whether a foreign owner that has never used a mark in U.S. commerce can claim protectable U.S. trademark rights based on the Paris Convention’s “well-known marks” concept via Lanham Act § 44.
2. Whether the CACR bar a Cuban entity from acquiring or enforcing U.S. trademark ownership interests (including through cancellation and injunctive relief) absent specific authorization.
3. Whether U.S. trademark law recognizes a stand-alone “well-known marks” doctrine granting priority without U.S. use.

## Decision

- The Second Circuit reversed the judgment granting Cubatabaco relief and vacated the permanent injunction against General Cigar.
- The court held Cubatabaco could not acquire ownership of the COHIBA mark in the United States because the CACR prohibit transfers or acquisitions of property rights by Cuban entities without specific authorization.
- The court held the Paris Convention and Lanham Act § 44 do not independently create substantive U.S. trademark rights absent use in U.S. commerce (or another recognized domestic basis).
- The court declined to recognize a free-standing “well-known marks” doctrine that would confer U.S. rights solely from fame or foreign ownership.

## Legal Principles

- U.S. trademark rights are territorial and generally acquired and maintained through use in U.S. commerce; foreign use or reputation alone is not enough to establish ownership in the United States.
- The Paris Convention is not treated as self-executing for creating substantive U.S. trademark rights beyond those provided by the Lanham Act; Lanham Act § 44 provides procedural/national-treatment benefits rather than new nonuse-based rights.
- The CACR can prevent a Cuban entity from acquiring or enforcing U.S. trademark property interests when the requested relief would effect a prohibited transfer of property rights, absent specific licensing.
- Limited sanctions licensing for trademark registration/renewal does not necessarily authorize broader ownership acquisition or enforcement remedies that would vest property rights in a sanctioned entity.

## Conclusion

The Second Circuit held that Cubatabaco lacked enforceable U.S. rights in COHIBA because U.S. trademark law does not grant ownership without U.S. use based on “well-known mark” status, and the CACR independently bar relief that would transfer U.S. trademark property rights to a Cuban entity without authorization.


Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462 (2d Cir. 2005)