UNITED STATES: Board Dismisses Cuban Cigar Maker’s Pan-American Convention Claim

The Trademark Trial and Appeal Board (Board) dismissed a cancellation petition (Cancellation No. 92/082,877) in Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Kretek International, Inc., Cancellation No. 92082877, where the petitioner alleged likelihood of confusion and violation of Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 (Pan-American Convention). However, the Board, which issued its decision on November 14, 2024, granted petitioner leave to amend.

Respondent Kretek International Inc. owns Registration Nos. 6,380,838 and 6,380,839 for the marks depicted below for use on “cigars” in Class 34:

The marks are used on bands that wrap around the cigar. Petitioner Empresa Cubana del Tabaco d.b.a. Cubatabaco alleged ownership of Registration Nos. 2,145,804; 3,402,158; and 4,244,461 for the following marks:

and pending application, Serial No. 98/086,821, for this mark:

Kretek filed a motion to dismiss, alleging that Empresa failed to state an Article 8 claim. Article 8 offers a novel mechanism for canceling a U.S. registration if (i) a party’s mark is refused because of the previous registration of an “interfering mark”; (ii) the party enjoyed legal protection for the mark in another member state; and (iii) the owner of the interfering mark had prior knowledge of the use or registration of the party’s mark. The Board applied Article 8 based on precedent that the Pan-American Convention is a self-executing treaty that can be given legal effect even if Congress has not implemented its provisions.

Kretek argued that Empresa’s Article 8 claim was premature because the U.S. Patent and Trademark Office had not cited Kretek’s registrations as a bar to registration of Empresa’s mark but rather suspended that application pending resolution of Empresa’s cancellation proceeding. Kretek further argued that Empresa had not sufficiently alleged Kretek’s prior knowledge of Empresa’s marks.

The Board held that the “potential for refusal” is sufficient to bring a counterclaim for cancellation. (Opinion at 10, citing Lacteos De Honduras S.A. v. Industrias Sula, S. De R.L. De C.V., Opp. No. 91243095, 2020 TTAB LEXIS 13, at *7–8 (TTAB 2020).) However, the Board still dismissed the proceeding because Empresa’s petition did not include the required allegation that its application had either been refused or that the examining attorney had identified a potential basis for refusal.

The Board granted leave to amend, and Empresa filed a motion to amend on December 4, 2024. Kretek again moved to dismiss on January 3, 2025, and the motion was fully briefed as of April 3, 2025, but the Board has yet to rule.

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