Cigar Importer's Lack-Of-Standing Argument Goes Up in Smoke

Reprinted With Permission From INTA Bulletin, Vol. 66, No. 20, November 2011

Both are members of the INTA Bulletin Law & Practice—United States & Canada Subcommittee.

The Trademark Trial and Appeal Board (TTAB) held that two Cuban corporations had standing to pursue cancellation of a U.S. trademark registration for PINAR DEL RÍO for cigars. Corporacion Habanos, S.A. & Empresa Cubana del Tabaco, d.b.a. Cubatabaco v. Juan E. Rodriguez, Cancellation No. 92052146 (T.T.A.B. Aug. 1, 2011) (precedential).

The petitioners initiated the proceeding to cancel the Supplemental Register registration for the trademark PINAR DEL RÍO on grounds of descriptiveness, geographically deceptive descriptiveness, violation of the Pan American Convention of 1929 and fraud. They alleged that PINAR DEL RÍO was an indicator of origin for tobacco goods made in Pinar del Rio Province, Cuba. To file and prosecute the cancellation proceeding, conduct that would normally be prohibited by U.S. embargo regulations, the petitioners obtained a special license from the U.S. Office of Foreign Assets Control (OFAC).

Instead of filing an answer, the respondent, Juan E. Rodriguez, filed a motion to dismiss the proceeding for lack of standing, arguing that the petitioners were not entitled to pursue cancellation of the registration because they did not assert rights in a similar competing mark in the United States. In determining whether to grant the respondent's motion, the TTAB evaluated both whether the petitioners had standing to bring the proceeding and whether a valid statutory ground for cancellation existed.

With regard to the standing issue, the TTAB noted that a property...