Cigar Trademark Fight Takes Another Turn

ALEXANDRIA, Va. — A U.S. federal court has ruled against General Cigar Co. in a decades-long legal battle over the rights to the COHIBA trademark, siding instead with Cuba’s state-owned tobacco company, Cubatabaco.

The ruling came down this week from Judge Leonie Brinkema of the U.S. District Court for the Eastern District of Virginia. It upholds a 2022 decision by the United States Trademark Trial and Appeal Board (TTAB) that canceled General’s two federal trademarks for COHIBA cigars.

Nearly Three Decades of Legal Disputes

The dispute centers on the use of the COHIBA name in the U.S., where General Cigar Co. has sold cigars under the brand since the late 1970s. In contrast, Cubatabaco markets COHIBA cigars internationally, excluding the U.S., where the Cuban embargo prevents direct sales.

Since 1997, the two companies have been locked in a complex legal fight that has stretched across the U.S. Patent and Trademark Office, federal district courts, and appeals courts.

Judge Rejects General’s Arguments

In this latest case, filed in 2023, General Cigar challenged Cubatabaco’s right to the trademark. But Judge Brinkema found that the evidence favored the Cuban company. She dismissed General’s objections to the evidence as “nothing more than boilerplate,” and concluded that General likely knew of the COHIBA brand before filing for the trademark in the U.S. in 1978.

The judge pointed to a 1977 article in Forbes magazine that identified COHIBA as Fidel Castro’s favorite cigar and noted the brand’s development in Cuba. Just one month later, internal notes from General’s trademark team began discussing COHIBA, raising questions about the timing of its registration.

Cuban Trademark Protections Take Precedence

Another key issue was whether Cubatabaco had valid trademark rights in Cuba before General filed in the U.S. Judge Brinkema determined that Cubatabaco had registered the COHIBA trademark in Cuba in 1972, under Decree-Law 805/1936, which was the governing law at the time.

Although General argued that Cubatabaco had modified its mixed mark — potentially invalidating the trademark — the court found no evidence of a change and no complaints were filed with the Cuban Secretary of Commerce, as required for cancellation.

Embargo Rules Do Not Block Cuban Claims

General also argued that granting Cubatabaco trademark rights would violate the U.S. embargo against Cuba. But the court rejected this, pointing to earlier rulings by the U.S. Court of Appeals for the Federal Circuit, which held that Cuban companies can seek U.S. trademarks under certain exemptions.

General Cigar Co. Plans to Appeal

Following the ruling, General issued a statement signaling its intent to keep fighting.

“We are of course disappointed by this decision,” said Régis Broersma, chief commercial officer of STG, General’s parent company. “We and our advisors will now study the ruling closely and of course consider the opportunity to appeal to the US Court of Appeals for the Fourth Circuit.”

General added that while the federal trademarks are now canceled, it still retains common law trademark rights based on long-standing use of the COHIBA name in the U.S.

For now, the ruling means Cubatabaco has the upper hand — but the legal battle over the famed cigar brand appears far from over.