Trademarks

A Blocked Application Is a Real Interest: Empresa Cubana v. General Cigar and Standing Through the Embargo

The Federal Circuit held that the Cuban embargo did not strip a Cuban tobacco entity of its statutory cause of action to cancel General Cigar's COHIBA registrations.

October 8, 2025
Premium cigars arranged on a wooden surface
A decades-long fight over the COHIBA cigar mark turned on whether an embargoed foreign entity could even ask the Board to cancel. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270 (Fed. Cir. 2014), No. 13-1465 (decided June 4, 2014), the U.S. Court of Appeals for the Federal Circuit confronted a question that sits at the intersection of trademark procedure and foreign policy: can a Cuban state entity, barred by the U.S. embargo from selling its product in the United States, nonetheless invoke the Trademark Trial and Appeal Board to cancel a competitor’s registration for the same mark? Writing for the panel, Judge Rader held that it can. The court reversed the Board’s dismissal and ruled that Cubatabaco — the entity behind the famous COHIBA cigar mark in Cuba — possessed a statutory cause of action to petition for cancellation under Section 14 of the Lanham Act, and that neither the Cuban Assets Control Regulations nor a prior Second Circuit judgment closed the door.

At a glance

  • Case: Empresa Cubana del Tabaco (Cubatabaco) v. General Cigar Co., 753 F.3d 1270 (Fed. Cir. 2014), No. 13-1465.
  • Decided: June 4, 2014; opinion authored by Judge Rader.
  • Marks at issue: General Cigar’s U.S. registrations for COHIBA for cigars (issued 1981 and 1995); Cubatabaco owns COHIBA for cigars in Cuba and applied to register it in the United States.
  • The trigger: The USPTO refused Cubatabaco’s U.S. application (filed under Section 44(e), based on its Cuban registration) because of a likelihood of confusion with General Cigar’s COHIBA registrations.
  • The Board’s ruling: Dismissed Cubatabaco’s cancellation petition for lack of standing, reasoning the embargo deprived it of a cognizable interest.
  • The holding: Because the PTO refused Cubatabaco’s application based on General Cigar’s registrations, Cubatabaco has a real interest in their cancellation and a statutory cause of action under 15 U.S.C. § 1064; the embargo does not bar that interest, and claim and issue preclusion do not apply.
  • Outcome: Reversed and remanded.

The COHIBA dispute is one of the longest-running brand fights in modern trademark law. Cubatabaco, a Cuban state enterprise, has used COHIBA on premium cigars in Cuba for decades. General Cigar, a U.S. company, obtained American registrations for COHIBA and built a domestic business around the name. The two cannot meet in the U.S. marketplace in the ordinary way, because the Cuban Assets Control Regulations (CACR) — the regulatory machinery of the embargo administered by the Treasury Department’s Office of Foreign Assets Control — prohibit Cubatabaco from selling cigars in the United States.

The procedural posture that reached the Federal Circuit grew out of registration, not sales. Cubatabaco filed a U.S. trademark application for COHIBA, relying on Section 44(e) of the Lanham Act, which allows a foreign applicant to seek U.S. registration on the basis of a home-country registration. The PTO refused that application under Section 2(d), citing a likelihood of confusion with General Cigar’s existing COHIBA registrations. Blocked at the registration stage, Cubatabaco petitioned the Board to cancel General Cigar’s registrations — the marks standing directly in the path of its own. The Board dismissed the petition, holding that the embargo deprived Cubatabaco of the kind of interest needed to maintain a cancellation. That dismissal was the ruling the Federal Circuit reversed.

The blocked application as the source of entitlement

The heart of the decision is its treatment of what the court framed as Cubatabaco’s statutory cause of action to seek cancellation. Section 14 of the Lanham Act, 15 U.S.C. § 1064, permits cancellation to be sought by a person “who believes that he is or will be damaged” by a registration. The Federal Circuit located Cubatabaco’s damage in the most concrete place imaginable: the PTO’s own refusal. “Because the USPTO refused Cubatabaco’s registration based on likelihood of confusion with General Cigar’s Registrations,” the court reasoned, “Cubatabaco has a real interest in cancelling the Registrations.” The injury was not hypothetical or remote. General Cigar’s registrations were the express, identified reason Cubatabaco could not obtain its own — a textbook example of a registration causing the kind of harm the cancellation remedy exists to address.

That move reframes the standing question in a way that is broadly important beyond the embargo context. The right to seek cancellation does not depend on present participation in the U.S. market for the relevant goods. It depends on a real interest in removing a registration that operates to the petitioner’s legal disadvantage. A foreign entity that cannot sell in the United States — for embargo reasons or any other — still has a cognizable interest in clearing a blocking registration if that registration is what defeats its own application. The cause of action attaches to the registration’s effect on the petitioner, not to the petitioner’s commercial footprint.

Why the embargo did not foreclose the claim

General Cigar’s strongest argument was that the embargo itself should be fatal: if Cubatabaco cannot lawfully sell cigars in the United States, what genuine interest can it have in U.S. registration rights? The court rejected the inference. The CACR do not prohibit everything; they operate through a system of general and specific licenses, and OFAC’s regulatory framework expressly contemplates transactions related to the registration and renewal of trademarks by Cuban entities. The embargo restricts commerce in goods, but it does not strip a Cuban entity of the capacity to protect and pursue intellectual property rights through the U.S. trademark system. An interest in registration is legally distinct from an interest in immediate sales, and the embargo’s bar on the latter does not negate the former.

The court therefore declined to convert a foreign-policy restriction on commerce into a categorical jurisdictional bar at the Board. The embargo is a constraint on what Cubatabaco may do in the market; it is not a rule about who may appear before the PTO to challenge a registration. Keeping those two questions separate is what allowed the cancellation petition to survive.

Preclusion and the shadow of the Second Circuit

A second obstacle was the litigation’s own history. In earlier proceedings, the U.S. Court of Appeals for the Second Circuit had denied Cubatabaco injunctive relief on embargo-related grounds, and General Cigar argued that the prior judgment precluded the cancellation action. The Federal Circuit disagreed on both branches of preclusion. Claim preclusion did not apply because the earlier litigation had not produced a final judgment on the merits of the cancellation claims themselves — the remedies and the legal questions were not the same. Issue preclusion likewise failed, because the Second Circuit had either not decided the specific issues governing cancellation or had resolved them in ways not essential to its judgment. The distinct nature of the cancellation remedy, and the distinct legal questions it raised, kept the prior judgment from controlling.

Open questions

  • How broadly does the “blocked application” theory of interest extend? The decision ties Cubatabaco’s interest tightly to the PTO’s Section 2(d) refusal; how far the same logic reaches for petitioners whose injury is less direct remains to be tested.
  • What survives on the merits? Reversal addressed only the threshold; the validity of General Cigar’s COHIBA registrations and the ultimate cancellation grounds were left for remand.
  • How do later entitlement cases interact with this holding? The Federal Circuit’s subsequent refinements of the zone-of-interests and statutory-cause-of-action analysis raise questions about how Empresa Cubana is characterized today.
  • What is the continuing role of treaty obligations? The dispute implicates inter-American trademark commitments whose interaction with domestic registration practice the opinion did not fully resolve.

Implications

  • Standing follows the blocking registration. A petitioner whose own application is refused because of the challenged registration has, by that fact, a real interest in cancelling it.
  • Market exclusion is not standing exclusion. Inability to sell in the United States — including under the embargo — does not by itself defeat the right to pursue cancellation.
  • Distinguish registration rights from commercial rights. OFAC’s licensing framework treats trademark registration and renewal as permissible even where sales are barred.
  • Prior litigation does not automatically preclude cancellation. A judgment denying a different remedy, on different issues, may leave the cancellation claim free to proceed.
  • Foreign entities have a real path to the Board. The decision keeps the cancellation forum open to non-U.S. parties with genuine registration interests, even amid significant geopolitical constraints.

Frequently asked questions

Why did Cubatabaco have standing despite the Cuban embargo? Because the PTO refused Cubatabaco’s own U.S. application for COHIBA based on a likelihood of confusion with General Cigar’s registrations, Cubatabaco had a real interest in cancelling those registrations. The embargo bars sales, not the capacity to pursue trademark registration rights, so it did not extinguish that interest.

Did the Federal Circuit cancel General Cigar’s COHIBA registrations? No. The court reversed the Board’s dismissal for lack of standing and remanded. It decided that Cubatabaco could bring the cancellation claim; it did not resolve the merits of whether the registrations should ultimately be cancelled.

Why didn’t the earlier Second Circuit decision bar the case? Neither claim nor issue preclusion applied. The prior judgment was not a final decision on the merits of the cancellation claims, and the issues controlling cancellation were either not decided or not essential to the Second Circuit’s judgment.

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