Pinar del Rio Brand
Trademark Dispute Page
The Pinar del Rio trademark is claimed to
be owned by
Cuba-based Cubatabaco and Louisiana based PDR
Corporacion Habanos, S.A. and Empresa Cubana del
Tabaco, d.b.a. Cubatabaco
v. Juan E. Rodriguez
The United State Patent and Trademark office's
Trademark Trial and Appeal Board wrote Cancellation No. 92052146 on August 1, 2011 and noted that this opinion is a
precedent of the TTAB.
In summary, applicant’s motion to dismiss the petition
to cancel for lack of standing is denied. Petitioners have alleged standing to survive a motion to dismiss,
although proof of petitioner’s standing is left to trial.
Vito Echevarria of Cuba News writes in
the December 2011 issue that the US embargo against Cuba has been an "undisputed bonanza" for the
neighboring Dominican Republic resulting in more than $445 million in cigar exports.
Dominican cigar makers Abe Flores and Juan E.
Rodríguez, who produce Pinar del Rio cigars, registered the PDR
trademark with U.S. authorities in 2008, and has since marketed cigars in several U.S. states from the PDR
office in New Orleans. However, Cuban cigar producers Habanos SA and Cuba's cigar
export company Cubatabaco don’t want Dominican brands with
Cuban-sounding names being sold in the United States.
In 2010, Cubatabaco secured an OFAC
license to challenge the Pinar del Rio trademark. INTA Bulletin reported in its November 2011 edition
(pdf) that Habanos and Cubatabaco initiated proceedings through the TTAB to cancel PDR’s U.S. trademark “on
grounds of descriptiveness, geographically deceptive descriptiveness, violation of the Pan American Convention
of 1929 and fraud.”
In response, PDR’s Rodríguez filed a motion to dismiss
the suit, alleging that neither Habanos nor Cubatabaco had asserted trademark rights for the Pinar del Río brand or
similarly named competing marks in the U.S. “There has never been a [cigar] brand called "Pinar del
TTAB posting their ruling against PDR in
September, noting that the Cuban cigarmakers had standing after all —
meaning that they can proceed with pursuing the cancellation of PDR’s trademark registration.
The judges deciding that case ruled that under Sections 2(a) and 2(e)
of the U.S. Trademark Act, a property interest in a trademark was not needed to show standing “where a trademark
sought to be cancelled is deceptive or primarily geographically deceptively misdescriptive. They added that “a
petitioner challenging the registration need not, to establish standing, own a pending application for the mark or
be using the term as a mark or otherwise.”
The TTAB still has to decide the case on the merits. Meanwhile, PDR
Cigars continues to produce and market their cigars for sale.
Pinar del Rio cigars for sale
Several websites are offering Pinar del Rio cigars for sale with the title "Pinar
Del Rio Habano Sun Grown". One could wonder why they are using the Cuban
trademarked term Habano in their description especially since these Pinar del Rio cigars are grown in the Dominican
Republic and not in Cuba. Use of the word Habano here only leads to even more confusion of the Pinar del Rio cigar brand.
Interview with Abe Flores