Appeals Court Upholds Cubaexport’s Havana Club Trademark Renewal

Bacardi has lost another round in its long-running fight over the Havana Club name in the United States after a federal appeals court upheld the renewal of Cubaexport’s trademark registration.

The 4th U.S. Circuit Court of Appeals in Virginia backed the U.S. Patent and Trademark Office’s decision to renew Cubaexport’s federal Havana Club trademark in 2016, rejecting Bacardi’s challenge to that action. The dispute is one of the most closely watched legal battles in the rum business because it affects who can claim rights to a major brand name in the world’s largest spirits market and could shape licensing, distribution and marketing strategies across the category.

In a statement cited after the ruling, Bacardi said it was “disappointed that the court granted the Cuban government a 10-year grace period for renewing a trademark that was stolen in the first place.”

The case traces back to the early years of Fidel Castro’s government, when the Havana Club brand was confiscated from Jose Arechabala S.A. in Cuba in the 1960s. The Arechabala family later moved production to Puerto Rico. Bacardi bought rights to the Havana Club marque from the family in 1995 and has sold rum under that name in the U.S. since then.

At the same time, Cubaexport, a Cuban state company, continued producing Havana Club rum in Cuba and appointed Pernod Ricard to distribute it internationally. That business has excluded the U.S. because of the embargo on Cuban goods.

A central issue in the litigation is that Cubaexport registered the Havana Club name in the U.S. in 1976 even though it could not sell Cuban rum there. Cubaexport has argued that this registration blocks Bacardi from using the name, particularly because Bacardi’s product is made outside Cuba.

The latest ruling turns on events that began two decades ago. Cubaexport sought to renew its U.S. trademark in 2005, but the effort stalled after the Treasury Department’s Office of Foreign Assets Control declined to issue a license. Near the end of the Obama administration, OFAC reversed course and granted the license, allowing the USPTO to renew the trademark in 2016.

Bacardi then sued the USPTO in federal court in Virginia in 2021, arguing that Cubaexport’s trademark should have expired in 2006. U.S. District Judge Liam O’Grady dismissed that suit in 2022, finding that Bacardi could challenge the mark only through trademark office procedures. The 4th Circuit revived the case in 2024, sending it back for further review.

Last year, U.S. District Judge Leonie Brinkema dismissed the lawsuit again. A three-judge appeals panel has now upheld that ruling.

In its opinion, the appeals court said OFAC’s later approval resolved the earlier legal barrier to payment tied to the renewal process. “The OFAC licence cleared the fog, removing the legal obstacle that had prevented the 2005 transfer from counting as payment,” the court said. “What looked incomplete in 2006 was, by 2016, timely and effective.”

Even with this setback, Bacardi has signaled that the fight is not over. According to its position in the case, Cubaexport’s trademark is due to expire within days and cannot be renewed under a 2024 law that bars U.S. courts and agencies from recognizing trademarks confiscated by the Cuban government.

That means the dispute may continue as both sides seek an advantage in the U.S. rum market, where control of a historic brand name carries commercial value far beyond labeling alone. For spirits producers and distributors, the outcome could influence how companies assess political risk, legacy ownership claims and access to protected trademarks tied to embargoed or disputed products.