Are General Cigar’s COHIBA Cigar Trademark Registrations Going Up in Smoke?

Are General Cigar’s COHIBA Cigar Trademark Registrations Going Up in Smoke?

Brief Answer – at least right now, based on a recent ruling from the United States District Court for the Eastern District of Virginia, the answer is “yes.”

Many moons ago, I wrote a law journal article about a nascent trademark dispute between General Cigar Co., a very large U.S. cigar company and Cubatabaco, the government entity in Cuba responsible for Cuban cigars, over the trademark for COHIBA, Cuba’s most famous cigar brand.

No joke – over 25 years later – this dispute is still raging! There has been a never-ending battle between General Cigar and Cubatabaco over whether General Cigar had (and has) the right to secure trademark rights in the U.S. for COHIBA cigars. To be clear, at this time, General Cigar owns two (2) registered trademarks in the U.S. for COHIBA in connection with cigars.

One substantial issue that would seem to impact this question is whether the embargo on selling Cuban goods in the U.S. would somehow preclude a challenge to General Cigar’s COHIBA trademark registrations in the U.S. by Cubatabaco. General Cigar has argued at various times that Cubatabaco has no ability to secure trademark rights in the U.S. because of the embargo, so there would be no basis for a challenge or for Cubatabaco to be prejudiced by General Cigar owning the rights to the COHIBA name in the U.S.

A nice history of the dispute can be checked out courtesy of Cigar Aficionado.

The recent court opinion also has a detailed history of the dispute between the parties, which has been pending for 28 years!

Anyways, the twist in the Eastern District of Virginia opinion is that Cubatabaco has seized on a little-known treaty called the General Inter-American Convention for Trademark and Commercial Protection, which has been in force since 1930.

In particular, Article 8 in Chapter II of the treaty affords an entity in one signatory country (“Entity No. 1”) the ability to cancel the trademark registrations of another entity in another signatory country (“Entity No. 2”) where:

Entity No. 1 has legal protection for its trademark in a signatory country that pre-dates the application filing date for the registration sought to be cancelled, and

Entity No. 2 knew about Entity No. 1’s trademark rights for the same goods in another signatory country prior to its own adoption and use of the trademark for which cancellation is sought.

Here, through the long and winding road of this dispute, Cubatabaco learned in discovery that General Cigar knew COHIBA was a Cuban cigar brand before General Cigar sought to register and use the mark. Furthermore, Cubatabaco owned trademark rights in Cuba for COHIBA prior to General Cigar’s adoption and use of the COHIBA brand in the U.S.

Ultimately, Cubatabaco presented this basis for cancellation of General Cigar’s U.S. trademark registrations for COHIBA to the Trademark Trial and Appeal Board (“TTAB”) in the form of a cancellation proceeding. Based on Chapter II, Article 8 of the Inter-American Convention, as well as Cuban entities’ ongoing right (even under the embargo) to engage in trademark-related proceedings before the United States Patent and Trademark Office, the TTAB granted Cubatabaco’s petitions to cancel. General Cigar appealed the TTAB’s decision to the Eastern District of Virginia, which, in May of 2025, affirmed the cancellation in the opinion linked at the top of this article. General Cigar has appealed this decision to the United States Court of Appeals for the Federal Circuit.

Overall, I cannot say I am surprised. While the embargo argument is a decent one, the fact remains that COHIBA is a very well-known cigar brand, even in the U.S., and I would surmise that it is largely perceived among the cigar-smoking public to be a Cuban brand, not a U.S. brand.

Hopefully, the Federal Circuit Court of Appeals can put this dispute to bed once-and-for-all.

Finally, take a read through my law journal article from 1999, particularly about the Inter-American Convention (or Pan American Convention as I then called it), at pages 647 and 657 in here. Looks like I knew what I was talking about 25 years ago, as a wee law student!