General Cigar Co. Files New Lawsuit Against Cuba in Cohiba Trademark Dispute

General Cigar Co. has filed a new lawsuit against Cubatabaco, the Cuban tobacco monopoly, as part of the two companies’ more than 25-year dispute over who should own the Cohiba trademark in the U.S.

General Cigar Company, Inc. v. Empresa Cubana del Tabaco, D.B.A. Cubatabaco was filed yesterday in the U.S. District Court for the Eastern District of Virginia. It’s a response to a ruling by the United States Trademark Trial and Appeal Board (TTAB) in December 2022 that canceled General’s two Cohiba trademarks in the U.S. This new lawsuit calls for a de novo action, i.e. an entirely new trial that will be decided without factoring in previous rulings. In its filing, General Cigar Co. says that a de novo action is appropriate so that a court can review whether TTAB properly made its December ruling, something General Cigar Co. says was done improperly.

The recent TTAB ruling focused on Article 8 of the Inter-American Convention for Trade Mark and Commercial Protection, a document known as the Pan American Convention, to which both the United States and Cuba are parties. Cubatabaco argued to TTAB that it had rights to cancel General Cigar Co.’s trademark per the Pan American Convention because it argued that General knew about the Cohiba trademark prior to filing the trademark in the U.S., something that the treaty protects against.

Cubatabaco applied for registration of the Cohiba mark in Cuba in 1969 and was granted a trademark in 1972. Between that registration and General’s filing for the mark in 1978, the brand gained prominence, including mentions in Forbes magazine in November 1977 that it was one of the brands that Cubatabaco was developing for possible export. Edgar Cullman, the former owner and president of General Cigar Co., acknowledged that he “must have read” the article as he received Forbes magazines. That meant that Cullman would have had knowledge of the registered brand prior to General’s filing for it the following year.

General Cigar Co. argues that Cubatabaco has already lost this claim as part of the original lawsuit, Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Culbro Corp., et al, filed in the U.S. District Court for the Southern District of New York in 1997. Yesterday’s complaint cites favorable decisions for General—then known as Culbro Corp.—by the District Court and the U.S. Court of Appeals for the Second Circuit as well as a denial for Cubatabaco’s appeal by the U.S. Supreme Court in 2006. General goes as far as pointing out that not only did Cubatabaco lose those decisions, but that Cubatabaco also asked the TTAB to suspend its actions with the trademark board while the litigation was pending.

Because of all of this, General argues that Cubatabaco should have been prevented from relitigating the Article 8 claims before TTAB and General’s trademarks should not be canceled.

There are 32 active Cuban brands today which can be purchased in pretty much every country other than the U.S. In America, non-Cuban versions of those brands are sold, largely by General Cigar Co. or Altadis U.S.A., a sister company to Habanos S.A. Outside of the U.S., Habanos S.A. owns the trademarks to the Cuban brands in pretty much every other country.

Cohiba differs from most of the other 31 active Cuban brands in that it was created after the Cuban Revolution in the 1950s, and notably after the Cuban government seized cigar factories and brands in 1959. Unlike Montecristo, for example, which was created in 1935, or Partagás, created in 1845, there was no owner of Cohiba prior to the revolution. Cohiba was created by the Cuban government, first as a personal cigar for Fidel Castro before being launched worldwide in the 1980s.

While many of the Cuban brands and non-Cuban counterparts look identical, Cohiba is unique in that the packaging has always been distinctly different. While the Cuban version relies on a gold and black color scheme, now with a graphic of the head of a Taino Indian, the non-Cuban version is known for its black and red color scheme, notably with the O in Cohiba filled in with red, which leads to its common name as a red dot Cohiba.

In 1997, Cubatabaco filed the aforementioned lawsuit seeking to cancel General’s Cohiba trademark. The dispute has been incredibly lengthy and rather complex due to both the importance of the Cohiba trademark in the U.S.—almost certainly the single most important cigar trademark—and the U.S. embargo towards Cuba. As General Cigar Co. notes in this lawsuit, Cubatabaco has never sold a Cohiba cigar in the U.S. during the 25 years of litigation. Even with General Cigar Co.’s trademarks canceled, the company would still be prevented from doing so.

General Cigar Co. says that in addition to this new lawsuit, it is also exercising its right to directly appeal the TTAB ruling.

“General Cigar has appealed the Board’s decision as it is improperly based on the re-litigation of a claim that was decided in General Cigar’s favor by the US Court of Appeals for the Second Circuit more than a decade ago,” said Owen McKeon US general counsel for Scandinavian Tobacco Group, parent of General Cigar Co., in a press release. “As such, General Cigar maintains that the Board’s ruling is contrary to clear U.S. Supreme Court precedent.”

Habanos S.A. has not returned a request for comment.

Charlie Minato

I am an editor and co-founder of halfwheel.com/Rueda Media, LLC. I previously co-founded and published TheCigarFeed, one of the two predecessors of halfwheel. I have written about the cigar industry for more than a decade, covering everything from product launches to regulation to M&A. In addition, I handle a lot of the behind-the-scenes stuff here at halfwheel. I enjoy playing tennis, watching boxing, falling asleep to the Le Mans 24, wearing sweatshirts year-round and eating gyros. echte liebe.