Cuba Libre! Let the Next Revolution Begin: The Battle for its Brands.

Jose Navarro's taste buds rejoice when he sips Havana Club, a sweet spirit distilled in a small farming town south of Havanna.

"It has to be Cuban," said Navarro, the oldest of the island's nine certified rum experts. "Havana Club can't exist anywhere else."

But it does. Oh does it ever. Another Havana Club is made by Bermuda-based rum giant Bacardi Ltd. Moreover, a variety of Cohiba cigars, once rolled exclusively for Fidel Castro, is produced by Swedish Match North America of Virginia, and a Miami firm offers its own version of Cubita, a top Cuban coffee.

While Washington's 47-year-old trade embargo may have kept Cuban products out of the U.S. — at least officially (FYI - Key West is filled with them) - it hasn't prevented companies from using the communist island's brand names in the development of products in our country.

As the fall of the embargo becomes more of a reality such trademark issues will be pushed to the forefront in the soon-to-be post embargo era.

In one precursor to the numerous issues which will arise, the fight between Bacardi and the Cuban government for the Havana Club name has already played out in the U.S. courts and Congress for more than a decade — and is now before Spain's high court.

But as many in Miami can attest, the battles are about so much more than brand names. They are charged with 50 years of emotion over Fidel Castro's 1959 revolution and expropriation of private companies as he implemented socialism. They are also rooted in the future as U.S. corporations face the specter of new competition from Cuban products, which may carry a special allure after being banned for nearly a half century.

"There are U.S. interests thinking about how they are going to be affected by an influx of Cuban products, and the outlook is not always positive," said Jake Colvin, director of the Washington-based USA Engage, which opposes the embargo.
Americans craving all things Cuban already can buy products inspired by the Caribbean island — just not made there.

Bacardi's Havana Club is an 80-proof rum that has sold in Florida since 2006, and sales have been so strong, it's thinking of expanding the label to other states, said spokeswoman Patricia M. Neal.

Even though Cuba's Havana Club rum can't be sold in the U.S., the Cuban government still sued Bacardi for using the name.

Bacardi argues it owns the name because the original Havana Club was expropriated by Castro from its Cuban producers, the Arechabala family, who went into exile. Bacardi bought the name and recipe from the Arechabalas in 1997.

Cuba says it registered the Havana Club trademark in the U.S. in 1976 after the Arechabalas let their claim on it expire. It has sold the rum internationally since 1993 in a joint partnership with French spirits consortium Pernod Ricard.

So far the U.S. courts have sided with Bacardi based on a 1998 federal law that prevents the registration or renewal of U.S. trademarks tied to companies nationalized by the Cuban government. Cuba has appealed its most recent case to the U.S. District Court of Appeals in Washington.

Meanwhile, Cuba's Havana Club is winning abroad. A Bacardi suit filed in a Spanish court against the Cuban government and Pernod Ricard over the trademark in that country was thrown out in 2007. Bacardi, too, has appealed, and the case is before the Spanish Supreme Court.

The true argument is over who can claim to produce authentic Cuban rum — especially if the country opens up to global commerce.

Bacardi, a family-owned spirits conglomerate founded in Santiago, Cuba, in 1862, pioneered the light, dry smoothness Cuban rum is now famous for, devising a charcoal-filter system and aging in oak barrels for added sweetness.

But the Bacardis joined the fiercely anti-Castro exile community in Miami after Castro nationalized the company in 1960. Havana Club, like all Bacardi rums, is made in Puerto Rico — and says so on the bottle.

Still, Neal says her company's Havana Club transports consumers "back to the time it was created: sultry nights, classy nightclubs, and pulsating Latin music, enjoyed by locals and visitors alike."

Cuba and Pernod Ricard spent $70 million to rehabilitate a Havana Club distillery specializing in darker, higher quality anejo rum in San Jose de Las Lajas.
"If I have a recipe, am I producing a Cuban rum? No. Cuban rum is not a recipe. It's an expression of an entire culture," said Navarro, while scrutinizing stacks of barrels filled with aging rum.

Even without the U.S. market — 40 percent of world rum drinkers — Cuban Havana Club has seen its annual sales soar 13 percent to 3.4 million cases. Bacardi's more than 200 brands and labels sell 20 million cases in 150 countries every year.
It's a debate that may ultimately be decided by consumers.

John Verburg, manager at Cafe Habana in Ann Arbor, Michigan, uses Barcardi to mix his mojitos, the famous Cuban cocktail of rum, sugar and mint. But he's asked all the time when he will get rum "authentically from Cuba."

"I don't know if people are salivating yet," Verburg said, "but it could be something very exciting."

The thought of competing with Cuba is already keeping executives at Swedish Match North America up nights. The Richmond, Virginia-based company owns General Cigar Inc., which has sold Dominican Republic-made Cohiba cigars in the U.S. since 1997.
"It's not the brand that's going to make the difference, it's whether it's Cuban or not," said Gerry Roerty, the company's vice president and general counsel. And smokers are willing to pay a premium for Cuban, he said.

Cohiba was founded in Cuba to make cigars for Castro and visiting dignitaries. Today it is the flagship of 27 premium brands produced by Habanos, equally owned by the government and Madrid-based Altadis SA, which was acquired last year by Britain's Imperial Tobacco Group PLC.

Cuba never registered its version of Cohibas in the United States but still sued General Cigar. The U.S. Supreme Court sided with General Cigar, which has factories in the Dominican Republic and Honduras and produces versions of signature Cuban brands Partagas, Hoyo de Monterrey, Bolivar and Punch. It also makes the La Gloria Cubana, Rico Habano and Havana Honeys brands, which despite their names are unknown on the island.

U.S. industry estimates show 85 million Cuban cigars could be shipped to the U.S. annually in a post-embargo world, slashing profits for U.S. companies that sell about 255 million premium cigars a year.

Roerty said not only would General Cigar face a trademark war, but the company would not have access to Cuban tobacco leaves or other raw materials to match its new competitors.

Some say the forbidden-fruit factor around Cuban cigars and other products won't last if the embargo vanishes.

Still, most U.S. aficionados are anxious to get their hands on real Cubans.
At Havana Connections, a cigar shop in suburban Richmond — General Cigar's own backyard — mention of Cubans sparked an hour-long discussion.

"When you smoke, it's taste. And the Cuban seed and Cuban cigar — they're smoother and creamier," said 60-year-old Dan Tater, a smoker for about a quarter-century. "There's got to be something to that lore that this is really a better cigar."

Americans hankering for super-strong, Cuban-style espresso can get Cubita, a coffee imported by Universal Brands Inc. in Florida that shares a name with the Cuba's best-seller on the island.

Universal Brands President Raul Diaz said his company has held a U.S. trademark for Cubita since the early 1990s and is confident it will stand regardless of any change in America's Cuba policy. But he acknowledged that "at some point, if Cubita from Cuba is sold in the U.S., one of the Cubitas is going to suffer."

More than 3,000 U.S. brands continue to hold trademarks in Cuba, with everything from McDonald's to Macy's to Mr. Peanut paying periodic registration fees in case the island one day embraces the free market, according to a 2002 list compiled by U.S.-Cuba Trade and Economic Council, Inc. in New York.

Experts worried the 2006 decision to nullify Cuba's Havana Club trademark in the U.S. would prompt Cuba to stop respecting American brand names on the island — especially after Castro famously threatened to produce Cuban Coca-Cola.
So far, there has been no retaliation.

Colvin said Cuban leaders know that violating U.S. trademarks will weaken the island's case before the World Trade Organization and other groups, where it claims American laws have allowed multinational companies to trample its trademarks.

"They've always made the case that they are right on this issue and they are the victims," he said. "If they start violating trademarks, they lose the moral high ground."

The Trademark Company

Oprah Sues Dietary Supplement Peddler – No Surprise

Talk show host and overall media magnate Oprah Winfrey has filed a federal trademark-infringement suit against 40 peddlers of dietary supplements alleging that the internet marketers are using her name without permission.

During her shows, Winfrey would feature segments about foods or products that can lead to better health, and the shows often included appearances by a Dr. Mehmet Oz.

According to Marc Rachman, an attorney for Ms. Winfrey’s corporation Harpo, last year, after Oz praised the anti-aging properties of the acai berry, Internet marketers began to sell acai products with implications that Winfrey or Oz had endorsed them.

But, as it turns out, neither has ever sponsored such a product or any other that involved health benefits.

“The subject is discussed on the show, then the scams start. It’s brazen,” the Chicago Tribune quoted Rachman as saying.

Of note, products involving the acai berry had been the main target, and Winfrey’s Web site has fielded more than 2,000 complaints related to it. Some involve viewers who mistakenly believed that a product was actually endorsed by Oz or Winfrey; while others are from consumers who felt they’d been defrauded.

The Trademark Company

“Nude” Rocker’s Wife Sues for Infringement

Do you remember the good ole’ days when you would search for a rock star and “nude” and it would bring up, well, interesting web sites. Sure, neither do we (wink).

Sure Gene married Shannon and a search of those two and nude brings up, well, you may just crash Google.

It seems rockers have an affinity for people who have, at one time or another, considered clothing an optional accessory in front of cameras. And of course the camera swings both ways, those clothing optional ladies love them bad boys.

But as rockers age it seems that even once interesting terms with which they could be associated come with completely different, and less interesting, results.

Take this latest case. Alison Hewson, the wife of U2 rock front man Paul Hewson (you know him as Bono), has sued Stella McCartney for trademark infringement. Stella, an English fashion designer and the daughter of former Sir Paul McCartney – yes that Paul – is accused of knocking off Hewson’s “Nude” trademark in the sale of perfume.

Alison Hewson and her business partner Bryan Meehan, as it is alleged, own the "Nude" trademark in the European Union for perfumes. They also own a company called Nude Skincare.

A press release NudeSkincare clarified its position “Nude Skincare is suing for compensation, not because of anything to do with the scent of the perfume but because of branding and the use of the word ‘nude’."

In reply, a McCartney representatives said “Stella isn’t likely to make any changes now because the fragrance is coming out in September and nudity is a big part of the perfume’s look, the bottle, for example, is a nude color.”

So as the case progresses it will receive more and more press thus diluting true legitimate efforts to search nude and insert rocker’s name here on the web.

A sad sad day in rock history.

The Trademark Company

Google Can Be Sued for Trademark Infringement for its Ad Words Program

The Second Circuit recently reversed a district court's dismissal of an action for trademark infringement, false designation of origin, and dilution under the Lanham Act surrounding Google’s Ad Words and/or Ad Sense programs.

In Rescuecom Corp. v. Google, Inc. Plaintiff Rescuecom alleges trademark infringement against the search engine giant stating that Google is violating trademark law and Rescuecom’s rights by allowing its competitors to bid on its trademark to receive placement of their own competing ads when a user of the search engine searches for Rescuecom.

Although the district court granted a motion to dismiss stating, in essence, Google’s actions could not amount to “use” under the Lanham Act and, accordingly, could not constitute infringement the Second Circuit disagreed.

In short, the Second Circuit concluded that where plaintiff's allegations that Google's recommendation and sale of plaintiff's mark to its advertisers triggers the appearance of plaintiff's advertisements and links in a manner likely to cause consumer confusion when a Google user launches a search of plaintiff's trademark, such complaint adequately pleads a use in commerce and is a proper claim under the Lanham Act.

The case has now been remanded for actions consistent with the Second Circuit’s opinion. More will surely follow.

The Trademark Company

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The Trademark Company

Wal-Mart Sues to Prevent Use of Its Name by Wal-Mart Workers

Wal-Mart ,an American public corporation that runs a chain of large, discount department stores filed a court injunction arguing that a website infringes on their trademarks.

This website, www.walmartworkerscanada.ca ,was created to help Canadian Walmart workers.

Wayne Hanley,the president of UFCW Canada National says about this injuction :“This injunction request is an over the top assault on effective freedom of speech. It’s a kneejerk response by Walmart to the idea of its employees trying to understand their options as workers, and trying to share experiences with other ‘associates’.”
“Walmart’s response to the success of www.walmartworkerscanada.ca is just another outrageous example of how the largest retailer in the history of the world will use its bottomless legal budget to manipulate the collective bargaining process and do just about anything to discourage its ‘associates’ from joining the union.”

What will happen? Only time will tell.

The Trademark Company