Bacardi and Company Limited v. John Squires

CourtCourt of Appeals for the Fourth Circuit
DecidedJune 16, 2026
Docket25-1355
StatusPublished

This text of Bacardi and Company Limited v. John Squires (Bacardi and Company Limited v. John Squires) is published on Counsel Stack Legal Research, covering Court of Appeals for the Fourth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Bacardi and Company Limited v. John Squires, (4th Cir. 2026).

Opinion

USCA4 Appeal: 25-1355 Doc: 45 Filed: 06/16/2026 Pg: 1 of 15

PUBLISHED

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

No. 25-1355

BACARDI & COMPANY LIMITED; BACARDI USA, INC.,

Plaintiffs – Appellants,

v.

JOHN A. SQUIRES, in his official capacity as the Director of the United States Patent & Trademark Office; UNITED STATES PATENT & TRADEMARK OFFICE,

Defendant – Appellee,

and

EMPRESA CUBANA EXPORTADORA DE ALIMENTOS Y PRODUCTOS VARIOS,

Intervenor/Defendant – Appellee.

Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. Leonie M. Brinkema, District Judge. (1:21-cv-01441-LMB-IDD)

Argued: December 9, 2025 Decided: June 16, 2026

Before NIEMEYER, RICHARDSON, and RUSHING, Circuit Judges.

Affirmed by published opinion. Judge Richardson wrote the opinion, in which Judges Niemeyer and Rushing joined.

ARGUED: David Meir Zionts, COVINGTON & BURLING LLP, Washington, D.C., for Appellants. Weili Justin Shaw, UNITED STATES DEPARTMENT OF JUSTICE, USCA4 Appeal: 25-1355 Doc: 45 Filed: 06/16/2026 Pg: 2 of 15

Washington, D.C.; Carl Jonas Micarelli, DEBEVOISE & PLIMPTON LLP, New York, New York, for Appellees. ON BRIEF: Michael C. Lynch, Damon W. Suden, Edwin Adlam Herod, KELLEY DRYE & WARREN, LLP, New York, New York; Alexander J. Cave, Yevgeniy Pilipovskiy, COVINGTON & BURLING LLP, Washington, D.C., for Appellants. Brett A. Shumate, Assistant Attorney General, Daniel Tenny, Civil Division, UNITED STATES DEPARTMENT OF JUSTICE, Washington, D.C., for Appellees John Arthur Squires and United States Patent & Trademark Office. David H. Bernstein, DEBEVOISE & PLIMPTON LLP, New York, New York, for Appellee Empresa Cubana Exportadora de Alimentos y Productos Varios.

2 USCA4 Appeal: 25-1355 Doc: 45 Filed: 06/16/2026 Pg: 3 of 15

RICHARDSON, Circuit Judge:

This spirited trademark dispute lands before our Court yet again. In 2005,

Cubaexport applied to renew a trademark registration with the United States Patent and

Trademark Office (PTO). But Cubaexport’s payment of renewal fees was legally void

without a specific license issued by the Treasury’s Office of Foreign Assets Control

(OFAC). For over a decade, OFAC refused to issue that license. Then, in 2016, it issued

a license retroactively authorizing Cubaexport’s 2005 payment. Based on the issuance of

that license, the PTO approved Cubaexport’s renewal filing. Bacardi argues that the PTO

exceeded its statutory authority and acted arbitrarily and capriciously by granting renewal

ten years after the renewal deadline. We disagree. OFAC’s 2016 license validated

Cubaexport’s 2005 payment, removing the sole legal obstacle to renewal. So we affirm.

I. BACKGROUND

We have detailed the underlying facts elsewhere. See Bacardi & Co. Ltd. v. U.S.

Pat. & Trademark Off. (Bacardi II), 104 F.4th 527, 529–30 (4th Cir. 2024). We distill the

relevant facts here.

Bacardi has sought registration of the HAVANA CLUB trademark for decades. But

Empresa Cubana Exportadora de Alimentos y Productos Varios—a Cuban state-owned

business known as “Cubaexport”—has long stood in its way.1 Cubaexport registered the

1 The trademark was previously registered by José Arechabala, S.A. See Bacardi II, 104 F.4th at 529. During the Cuban Revolution, the Cuban government seized and expropriated Arechabala’s assets without compensation. After Arechabala’s registration expired, Cubaexport registered HAVANA CLUB for itself. In the 1990s, Arechabala sold its remaining interest in the mark to Bacardi. Bacardi sought to register the mark and cancel Cubaexport’s registration, which spawned a still-pending lawsuit. See Bacardi & Co. Ltd. 3 USCA4 Appeal: 25-1355 Doc: 45 Filed: 06/16/2026 Pg: 4 of 15

trademark in the United States in 1976 and renewed its registration in 1986 and 1996. See

15 U.S.C. § 1058(a) (“Each registration shall remain in force for 10 years . . . .”).

Cubaexport never sold rum in the United States under the HAVANA CLUB mark

during this period, because OFAC regulations prohibit Cuban entities from engaging in

most transactions in the United States. See generally Cuban Assets Control Regulations,

31 C.F.R. pt. 515. Originally, OFAC nevertheless allowed certain transactions related to

the registration and renewal of trademarks with the PTO. See 31 C.F.R. §§ 515.201,

515.527 (1995). That authorization included payment of the statutorily required renewal

fee. See 15 U.S.C. §§ 1058(b), 1059(a); 31 C.F.R. § 515.527(e) (1995). But in 1998,

Congress prohibited those transactions too. See Omnibus Consolidated and Emergency

Supplemental Appropriations Act, Pub. L. No. 105-277, § 211(a), 112 Stat. 2681, 2681-88

(1998). Under the new regime, to renew its trademark registration before it expired in July

2006, Cubaexport needed to obtain a “specific license” from OFAC exempting it from this

prohibition. 31 C.F.R. § 501.801(b).

In December 2005, Cubaexport submitted its renewal filing without the required

license. The PTO received the renewal funds, but OFAC later notified the PTO that

Cubaexport lacked specific authorization for the payment. So Cubaexport quickly applied

for a license.

v. Empresa Cubana Exportadora de Alimentos y Productos Varios, No. 1:04-cv-00519 (D.D.C. filed Mar. 29, 2004) (case docket). 4 USCA4 Appeal: 25-1355 Doc: 45 Filed: 06/16/2026 Pg: 5 of 15

With the renewal deadline closing in, a PTO examiner 2 notified Cubaexport that its

application was deficient because the “required fee” had “not been paid,” citing the OFAC

notification. J.A. 289. The examiner indicated the December 2005 fee would “be refunded

since it was not properly authorized” and warned that if Cubaexport failed to obtain a

specific license, its registration would expire. J.A. 291 n.1.

OFAC denied Cubaexport a specific license. So, in August 2006, the PTO examiner

refused to renew Cubaexport’s registration and refunded the renewal fee. Cubaexport

responded on two fronts: It sued OFAC in federal court and petitioned the PTO Director

for review of the decision to deny renewal. The Director suspended “matters with respect

to [the PTO] petition” while the OFAC litigation played out. J.A. 466.

Six years later, Cubaexport lost the OFAC suit. See Empresa Cubana Exportadora

de Alimentos y Productos Varios v. U.S. Dep’t of the Treasury, 638 F.3d 794 (D.C. Cir.

2011), cert. denied, 566 U.S. 986 (2012). But Cubaexport pressed on. First, when it

reported the suit’s outcome to the PTO, Cubaexport presented additional arguments against

cancellation of its mark—which further delayed the PTO Director’s review. Second, in

November 2015, Cubaexport again applied for a specific license from OFAC to renew its

trademark registration, ahead of what would be its 2016 expiration date.

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