UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA
BACARDI & COMPANY LIMITED, and BACARDI U.S.A., INC., Plaintiffs, v. EMPRESA CUBANA EXPORTADORA Case No. 1:04-cv-00519 (EGS) DE ALIMENTOS Y PRODUCTOS VARIOS d/b/a CUBAEXPORT, Defendant.
MEMORANDUM OPINION
Bacardi & Company Limited and Bacardi U.S.A., Inc.
(collectively “Bacardi”) initiated this action against Empresa
Cubana Exportadora de Alimentos y Productos Varios d/b/a
Cubaexport (“Cubaexport”) over a trademark dispute. Cubaexport
now brings a counterclaim against Bacardi under section 32 of
the Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. § 1114,
seeking injunctive relief for Bacardi’s alleged infringement of
Cubaexport’s registered HAVANA CLUB & Design trademark,
Registration No. 1,031,651. See Cubaexport’s Countercl. and
Answer to First Am. Compl. (“Countercl.”), ECF No. 154 ¶ 11.
Pending before the Court is Bacardi’s Motion to Dismiss
Cubaexport’s Counterclaim. See Pls.’ Mot. to Dismiss Def.’s
1 Countercl. (“Pls.’ MTD”), ECF No. 156 at 1. 1
Upon careful consideration of the motion, opposition, reply
thereto, the applicable law, and the entire record herein, the
Court GRANTS Bacardi’s Motion to Dismiss Cubaexport’s
Counterclaim, see ECF No. 156.
I. Background 2
The Court assumes the facts alleged in Cubaexport’s
Counterclaim to be true for the purposes of the Motion to
Dismiss and construes them in Cubaexport’s favor. See Baird v.
Gotbaum, 792 F.3d 166, 169 n.2 (D.C. Cir. 2015) (“Reviewing a
motion to dismiss, [w]e accept [her] factual allegations . . .
as true and we draw all inferences in her favor.” (internal
quotation marks omitted)); Comm. on Ways & Means, U.S. House of
Representatives v. U.S. Dep’t of the Treasury, 45 F.4th 324,
329-30 (D.C. Cir. 2022) (applying standard to counterclaims).
A. Factual Background
In the 1950s, José Arechabala S.A. (“JASA”), a Cuban
company, registered three HAVANA CLUB trademarks at the U.S.
1 When citing to filings throughout this Memorandum Opinion, the Court cites to the ECF header page number and not the original page number of the filed document. 2 The Court limits this Background to the facts and procedural
history relevant to the current motion. A more detailed history of the case can be found in the Court’s previous opinion addressing Defendants’ Motion to Dismiss and Motion for Partial Summary Judgment. See Mem. Op. (“Def.’s MTD Op.”), ECF No. 146 at 2-11. 2 Patent and Trademark Office. Countercl., ECF No. 154 ¶¶ 13, 15.
In 1960, JASA’s property in Cuba was nationalized following the
Cuban Revolution. Id. ¶ 16. However, JASA’s U.S. trademarks were
not expropriated but were either expired or cancelled because of
JASA’s former owners’ failure to renew or otherwise maintain the
marks. Id. ¶¶ 18-20.
In 1965, the Cuban Ministry of Foreign Commerce established
Cubaexport, a Cuban state-owned foreign trade corporation. Id.
¶ 25. In 1974, Cubaexport submitted an application to the U.S.
Patent and Trademark Office to register the HAVANA CLUB
trademark, since JASA’s trademarks expired the year prior. See
id. ¶¶ 24, 27. On January 27, 1976, the U.S. Patent and
Trademark Office issued the registration to Cubaexport with
Registration No. 1,031,651. Id. ¶ 31. Although Cubaexport may
not sell its product in the United States due to the existing
embargo against Cuba, see id. ¶ 27; Cubaexport’s HAVANA CLUB rum
has been branded, marketed, and sold in other parts of the world
for the last 30 years, id. ¶ 39.
In 1995, Bacardi began selling Bahamian rum in the United
States using the HAVANA CLUB name. Id. ¶ 44. However, Bacardi’s
application for registration of the mark was denied by the U.S.
Patent and Trademark Office in March of that year, in part
because the “proposed trademark conflicted with the existing
trademark registration that had been issued to Cubaexport.” Id.
3 ¶ 47. Bacardi filed a petition with the Trademark Trial and
Appeal Board (“TTAB”) to cancel Cubaexport’s existing
registration. Id. ¶ 48. That petition was stayed while
Cubaexport’s assignee Havana Club Holding S.A. (“HCH”) pursued a
trademark infringement suit against Bacardi in New York federal
court. See id. ¶ 48; Def.’s MTD Op., ECF No. 146 at 9-10 (“The
proceeding before the TTAB was stayed pending the Galleon
litigation, but resumed in 2003.”). After the conclusion of the
New York litigation, the TTAB granted summary judgment denying
Bacardi’s petition to cancel Cubaexport’s trademark registration
for the HAVANA CLUB mark. See Countercl., ECF No. 154 ¶ 61.
In 2006, Cubaexport’s trademark registration was due for
renewal. Id. ¶ 63. The U.S. Treasury Department’s Office of
Foreign Assets Control (“OFAC”) notified Cubaexport that due to
legislation passed in 1998, Cubaexport would need to apply for a
specific license to renew its trademark registration. See id.
¶ 65. That July, OFAC denied Cubaexport’s application for a
specific license based on the Department of State’s position
that “it would be inconsistent with U.S. policy to issue a
specific license authorizing transactions related to the renewal
of the HAVANA CLUB trademark.” Id. Cubaexport filed suit in the
District of Columbia challenging OFAC’s decision and the
constitutionality of the statute which required Cubaexport to
obtain a specific license. Id. ¶ 67; see also Empresa Cubana
4 Exportadora de Alimentos y Productos Varios v. U.S. Dep’t of
Treasury (“Cubaexport I”), 606 F. Supp. 2d 59 (D.D.C. 2009). The
district court entered summary judgment in favor of OFAC, in
part because the issuance or refusal of a specific license was a
matter of OFAC’s discretion. Cubaexport I, 606 F. Supp. 2d at
81-82. The Court of Appeals for the District of Columbia Circuit
(“D.C. Circuit”) affirmed. See Empresa Cubana Exportadora de
Alimentos y Productos Varios v. U.S. Dep’t of Treasury
(“Cubaexport II”), 638 F.3d 794 (D.C. Cir. 2011).
In 2015, Cubaexport filed a new application for a specific
license with OFAC, asking for reconsideration of its previous
decision based on shifts in U.S. foreign policy. See Countercl.,
ECF No. 154 ¶¶ 69-71. Cubaexport sought both a retroactive
renewal of the mark from the 2006 denial, and a renewal for the
upcoming 10-year period starting in 2016. Id. ¶ 71. OFAC granted
Cubaexport a specific license on January 11, 2016, “authorizing
all transactions necessary for the 2006 and 2016 renewals of
Cubaexport’s trademark registration.” Id. ¶ 73. After the U.S.
Patent and Trademark Office received a copy of the specific
license, it accepted the 2006 and 2016 renewals for Cubaexport’s
HAVANA CLUB mark. Id. ¶ 74.
B. Procedural Background
Bacardi initiated this suit in 2004 to challenge the TTAB’s
grant of summary judgment to Cubaexport. See Compl., ECF No. 1
5 ¶ 1. In 2007, this Court stayed the proceeding while Cubaexport
pursued an appeal of the Patent and Trademark Office’s
determination that Cubaexport’s rights in the HAVANA CLUB mark
would be cancelled or expired based on Cubaexport’s inability to
renew the mark because of OFAC’s denial of a specific license.
See Mem. Op., ECF No. 72 at 1-5. In 2016, after Cubaexport
received the specific licenses from OFAC, authorizing it to
renew its rights in the HAVANA CLUB mark, the parties moved to
lift the stay. See Joint Mot. and Status Report of All Parties
Regarding Lifting of the Stay, Amendment of the Compl.,
Scheduling, and Protection of Confidential Information Obtained
in Disc., ECF No. 112 at 1. In March 2016, this Court granted
the parties’ motion and lifted the stay. See Order, ECF No. 116
at 1.
Bacardi then filed its Amended Complaint, again seeking
review of the TTAB’s grant of summary judgment. See First Am.
Compl., ECF No. 114 ¶ 1. The following month, Cubaexport filed a
Motion to Dismiss and Motion for Partial Summary Judgment. See
Defs.’ Mot. to Dismiss the First Am. Compl., ECF No. 122; Defs.’
Mot. for Partial Summ. J., ECF No. 124. In March 2023, this
Court granted in part and denied in part Cubaexport’s Motion to
Dismiss and denied its Motion for Partial Summary Judgment. See
Order, ECF No. 145.
In April 2023, Cubaexport filed its answer and the
6 counterclaim at issue, alleging trademark infringement under the
Lanham Act. See Countercl., ECF No. 154 ¶ 11. The following
month, Bacardi filed its Motion to Dismiss Cubaexport’s
Counterclaim. See Pls.’ MTD, ECF No. 156. Cubaexport filed its
response in opposition, see Notice of Errata to Def.’s Mem. of
P. & A. in Opp’n to Pl.’s Mot. to Dismiss Def.’s Countercl.
(“Def.’s Opp’n”), ECF No. 159; 3 and Bacardi filed its reply,
Pls.’ Reply Mem. of P. & A. in Further Supp. of Mot. to Dismiss
Def.’s Countercl., ECF No. 158. Bacardi’s motion is now ripe and
ready for adjudication.
II. Legal Standards
A. Rule 12(b)(6) Motion to Dismiss
“When a plaintiff moves to dismiss a defendant’s
counterclaims for failure to state a claim under Federal Rule of
Civil Procedure 12(b)(6), the Court applies the same standards
that it does when evaluating a motion to dismiss a plaintiff’s
complaint on the same grounds.” Adirondack Transit Lines, Inc.
v. Greyhound Lines, Inc., No. 22-1662, 2023 WL 196245, at *3
(D.D.C. Jan. 17, 2023); see also Wharf, Inc. v. District of
Columbia, 232 F. Supp. 3d 9, 16 (D.D.C. 2017) (“The same
3 Cubaexport originally filed a memorandum in opposition, see Def.’s Mem. of P. & A. in Opp’n to Pl.’s Mot. to Dismiss Def.’s Countercl., ECF No. 157; but later notified the Court of an error in the original memorandum and submitted a corrected document, see Def.’s Opp’n, ECF No. 159. The Court accepts and will only reference Cubaexport’s corrected brief in opposition. 7 standards govern a motion to dismiss with respect to an opposing
party’s counterclaims.”).
A motion to dismiss pursuant to Federal Rule of Civil
Procedure 12(b)(6) “tests the legal sufficiency of a complaint.”
Browning v. Clinton, 292 F.3d 235, 242 (D.C. Cir. 2002). A
complaint must contain “a short and plain statement of the claim
showing that the pleader is entitled to relief, in order to give
the defendant fair notice of what the . . . claim is and the
grounds upon which it rests.” Bell Atl. Corp. v. Twombly, 550
U.S. 544, 555 (2007) (internal quotation marks omitted). While
detailed factual allegations are not required, a complaint “must
contain sufficient factual matter . . . to ‘state a claim to
relief that is plausible on its face.’” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009) (quoting Twombly, 550 U.S. at 570).
When ruling on a Rule 12(b)(6) motion, the Court “may
consider only the facts alleged in the complaint, any documents
either attached to or incorporated in the complaint and matters
of which we may take judicial notice.” EEOC v. St. Francis
Xavier Parochial Sch., 117 F. 3d 621, 624 (D.C. Cir. 1997). In
so doing, the court must give the plaintiff the “benefit of all
inferences that can be derived from the facts alleged.” Kowal v.
MCI Commc’ns Corp., 16 F.3d 1271, 1276 (D.C. Cir. 1994).
"Threadbare recitals of the elements of a cause of action,
supported by mere conclusory statements" are not sufficient to
8 state a claim. Iqbal, 556 U.S. at 678. The plaintiff must “‘give
grounds upon which it rests.’” Erickson v. Pardus, 551 U.S. 89,
93 (2007) (quoting Twombly, 550 U.S. at 555).
III. Analysis
Bacardi argues that Cubaexport’s counterclaim for trademark
infringement should be dismissed on two grounds. First, Bacardi
argues that Cubaexport is barred by statute from enforcing any
rights it may have in the HAVANA CLUB mark. See Pls.’ MTD, ECF
No. 156 at 13. Second, Bacardi argues that even if Cubaexport’s
claim is not statutorily barred, it must be dismissed because
“it is impossible for Cubaexport to establish a likelihood of
confusion among consumers due to the Cuban embargo.” Id. at 19.
The Court agrees with Bacardi on its first ground—that
Cubaexport’s counterclaim is barred by statute.
A. The Embargo and Section 211
In 1963, the United States imposed a total embargo on trade
between the United States and Cuba under the Trading with the
Enemy Act, 50 U.S.C. § 4301 et. seq, implemented by the Cuban
Asset Control Regulations (“CACR”), 31 C.F.R. pt. 515. When
originally enacted, the CACR permitted transactions related to
the registration and renewal of trademarks in the United States
under general licenses, and also authorized the Treasury
Department’s Office of Foreign Assets Control (“OFAC”) to grant
9 specific licenses in individual cases. See 28 Fed. Reg. 6974,
6982-85 (July 9, 1963); see also Cubaexport II, 638 F.3d at 796
(“Under the regulations, exceptions may be specifically
authorized by the Secretary of the Treasury . . . . Such
exceptions may take two forms: A so-called ‘general license’ is
a general exception written into the Treasury regulations
themselves. A ‘specific license’ is an exception made by the
Department of the Treasury for a specific applicant.” (internal
quotation marks and citations omitted)).
However, in 1998, Congress passed Section 211 of the
Omnibus Consolidated and Emergency Supplemental Appropriations
Act (“Section 211”), Pub. L. No. 105-277, § 211, 112 Stat. 2681,
2681-88, which curtailed the previous exceptions for trademarks.
Specifically, Section 211 states:
(a)(1) Notwithstanding any other provision of law, no transaction or payment shall be authorized or approved pursuant to section 515.527 of title 31, Code of Federal Regulations, as in effect on September 9, 1998, with respect to a mark, trade name, or commercial name that is the same as or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated unless the original owner of the mark, trade name, or commercial name, or the bona fide successor-in- interest has expressly consented.
(2) No U.S. court shall recognize, enforce or otherwise validate any assertion of rights by a designated national based on common law rights or registration obtained under such section 515.527 of such a confiscated mark, trade name or commercial name.
10 The referenced regulation, 31 C.F.R. § 515.527, was updated
to reflect Section 211, and now states that “[t]ransactions
related to the registration and renewal in the United States
Patent and Trademark Office or the United States Copyright
Office of patents, trademarks, and copyrights in which the
Government of Cuba or a Cuban national has an interest are
authorized.” 31. C.F.R. § 515.527(a)(1). However:
[n]o transaction or payment is authorized or approved . . . with respect to a mark, trade name, or commercial name that is the same or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated . . . unless the original owner of the mark, trade name, or commercial name, or the bona fide successor-in- interest has expressly consented.
Id. § 515.527(a)(2).
B. Application to Cubaexport
Bacardi argues that the “plain terms of the statute” bar
Cubaexport’s Counterclaim because the HAVANA CLUB trademark is a
confiscated mark, 4 which was registered under the then-existing
general license from section 515.527. See Pls.’ MTD, ECF No. 156
4 In the appeal for Cubaexport’s litigation against OFAC, the D.C. Circuit held that the HAVANA CLUB mark was a “mark[] used in connection with a business or assets that were ‘confiscated.’” Cubaexport II, 638 F.3d at 797 n.2. Although Cubaexport’s Counterclaim alleges that its HAVANA CLUB mark was obtained after the expiration of JASA’s mark, see Countercl., ECF No. 154 ¶¶ 18-20; it does not argue—on this motion—that the HAVANA CLUB mark is not connected to a “business or assets that were confiscated.” 11 at 13-14. Cubaexport resists this conclusion and argues that
Section 211 does not apply to its counterclaim because “[t]he
rights that Cubaexport asserts in its Counterclaim . . . are
based on its 2016 trademark renewal, which was not obtained
under Section 515.527.” Def.’s Opp’n, ECF No. 159-2 at 20. The
Court agrees with Bacardi.
Section 211 has two distinct components relevant to
Cubaexport’s HAVANA CLUB mark. Section 211(a)(1) bars
registrations and renewals of trademarks that were “used in
connection with a business or assets that were confiscated.”
§ 211(a)(1), 112 Stat. at 2681-88. This is the provision that
stripped the CACR of general licenses and required Cubaexport to
apply for a specific license from OFAC to renew its rights
related to the mark. See Cubaexport II, 638 F.3d at 797-98
(“Thus, because of the 1998 Act and its reference to 31 C.F.R.
§ 515.527, Cubaexport’s trademark no longer fit within the
regulatory exception for trademarks that had existed since 1963.
. . . As a result of the 1998 Act, Cubaexport was prohibited
from renewing its HAVANA CLUB trademark when it tried to do so
in 2006.”). As Cubaexport alleges, it applied for and received a
specific license for renewal of the HAVANA CLUB mark from OFAC
in 2016. See Countercl., ECF No. 154 ¶¶ 71, 73.
Cubaexport argues that this specific license takes it out
of the purview of Section 211 altogether. But the second
12 applicable provision of Section 211, Section 211(a)(2), is not
focused on the ability of Cubaexport to register or renew its
existing rights, but rather addresses the court’s power to
“recognize, enforce or otherwise validate” those alleged rights.
§ 211(a)(2), 112 Stat. at 2681-88. Under the plain terms of
Section 211(a)(2), courts cannot enforce any rights from
“registration obtained under . . . section 515.527 of . . . a
confiscated mark.” Id. It does not carve out any exceptions for
marks that were renewed under a different provision. Rather, the
statute only bars certain mark holders from enforcing their
rights in the mark based on how that mark was registered. In
Cubaexport’s Counterclaim, it asserts that it “obtained its
original registration [for the HAVANA CLUB mark] in 1976” under
the then-existing “general license in Section 515.527.”
Countercl., ECF No. 154 ¶ 75. Thus, the plain language of
Section 211(a)(2) covers Cubaexport’s rights in the HAVANA CLUB
mark.
Cubaexport resists the plain language of the statute and
argues that “[r]enewal of a trademark grants new rights distinct
from the rights under original registration” and that Cubaexport
is seeking to vindicate those rights with “forward-looking
injunctive relief.” Def.’s Opp’n, ECF No. 159-2 at 22. For
support, Cubaexport cites the district court decision in its
litigation against OFAC and the D.C. Circuit’s opinion on appeal
13 in that case. However, Cubaexport distorts the analysis of both
opinions. First, as Cubaexport notes, in the OFAC litigation,
the district court observed that “[t]his Court has already
stated that there is a fundamental difference between a license
to defend existing property rights . . . and one to acquire
additional rights,” citing the court’s prior opinion on the
issue. Cubaexport I, 606 F. Supp. 2d at 81. That opinion made
the distinction in the context of defending an “already-acquired
property right in [the] existing HAVANA CLUB registration”
against an attempt to “renew the HAVANA CLUB mark and to thus
extend its rights in the mark for another ten years.” Empresa
Cubana Exportadora de Alimentos y Productos Varios v. U.S. Dep’t
of Treasury, 516 F. Supp. 2d 43, 59 (D.D.C. 2007). Thus, the
district court was not asserting that a trademark renewal
automatically triggers “new rights distinct from the rights
under the original registration,” but rather was asserting that
renewal provides “additional rights” in the form of an
“extension” of the existing rights, which were acquired at the
time of the original registration. See id.; Cubaexport I, 606 F.
Supp. 2d at 81.
Second, Cubaexport claims that the D.C. Circuit’s opinion
on appeal from the OFAC case stated that “Section 211 only
required a specific license for the acquisition of new rights,
which were distinct from any rights existing under the original
14 registration.” Def.’s Opp’n, ECF No. 159-2 at 23 (citing
Cubaexport II, 638 F.3d at 799). Again, Cubaexport distorts the
Court’s analysis. The D.C. Circuit only stated that Cubaexport
did not “acquire[] a vested right to renewal of the HAVANA CLUB
trademark when it first registered the mark in 1976.” Cubaexport
II, 638 F.3d at 799. It went on to analyze the applicable
regulations at the time Cubaexport “first registered its mark in
1976” and determined that the exception “allowing trademark
registrations and renewals” could be amended, modified, or
revoked at any time. Id. The Court never addressed, much less
held, that a specific license would give “new rights, which were
distinct from any rights existing under the original
registration.” All it concluded was that “[b]y its plain terms,
[Section 211] bar[red] both new registrations and renewals of
marks (such as Cubaexport’s) that were first registered before
1998.” Id. at 800.
To further support its claim, Cubaexport asserts that
“[f]ederal courts have consistently treated references to
trademark ‘registration’ as including ‘renewal.’” Def.’s Opp’n,
ECF No. 159-2 at 23. However, Cubaexport’s support for this
proposition is a line of cases interpreting 15 U.S.C. § 1064(3),
the provision of the Lanham Act that allows a “registration” to
be cancelled when it was “obtained fraudulently.” See id. at 23-
24. In Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed.
15 Cir. 1986), the Court of Appeals for the Federal Circuit
(“Federal Circuit”) held that the term “‘registration was
obtained fraudulently’” includes “when an applicant knowingly
makes false, material representations of fact in connection with
his application” in both registrations and renewals of
trademarks. Id. at 48. The Federal Circuit specified that the
“obligation to refrain from knowingly making false, material
statements applies with equal force to renewal applications,”
quoting the “requirements for renewal of a registration” at the
time. Id. Thus, Torres clarifies that in the specific context of
an attempt to cancel an existing trademark based on whether its
“registration was obtained fraudulently,” the analysis includes
whether a “renewal” was obtained fraudulently based on the
specific obligations trademark holders must fulfill to renew
their marks. This conclusion does not support the broader
proposition that federal courts “have consistently treated”
registration and renewal interchangeably.
Further undercutting Cubaexport’s position, several other
provisions of the Lanham Act treat registration and renewal as
distinct acts. First, under 15 U.S.C. § 1059, “Renewal of
Registration,” the Lanham Act states that “each registration may
be renewed for periods of 10 years at the end of each successive
10-year period following the date of registration.” 15 U.S.C.
§ 1059(a). Second, under 15 U.S.C. § 1064, “Cancellation of
16 Registration,” the Lanham Act provides that a “petition to
cancel a registration of a mark” may be filed “within five years
from the date of registration of the mark.” 15 U.S.C. § 1064(1).
Thus, the Court does not agree with Cubaexport that
“registration” can be understood to include “renewal” in
“references to trademark” litigation and statutes. Rather, the
Court concludes that registration and renewal are most commonly
understood as distinct acts and registration can be understood
to include renewal only in specific circumstances. Cubaexport
fails to convince the Court that such circumstances exist in
this case.
Finally, Cubaexport argues that Bacardi’s interpretation of
Section 211(a)(2) “also makes no sense as a matter of policy”
because the interpretation “creates arbitrary distinctions and
unreasonable results.” Def.’s Opp’n, ECF No. 159-2 at 25.
Specifically, Cubaexport argues that because it obtained its
original registration under 515.527, under Bacardi’s
interpretation, it will be “permanently subject” to Section 211,
regardless of any specific licenses OFAC grants. Id. Cubaexport
argues that this interpretation “would create arbitrary and
irrational distinctions between OFAC specific licenses issued at
the time of initial registration and those issued at the time of
renewal, relegating the latter to second-class status” and
“undermin[ing] the apparent intent of Section 211 . . . to
17 preserve the Executive’s authority to grant or refuse specific
licenses for registrations and renewals of trademarks.” Id.
Cubaexport’s argument conflates the two distinct provisions
in Section 211. The first provision—Section 211(a)(1)—prohibits
renewals and registrations of marks without a specific license
from OFAC. See § 211(a)(1), 112 Stat. at 2681-88. As Cubaexport
alleged, it was able to circumvent this provision by obtaining a
specific license by OFAC for renewal of its HAVANA CLUB mark.
See Countercl., ECF No. 154 ¶¶ 71, 73. However, that renewal
does not affect Cubaexport’s rights under the second provision—
Section 211(a)(2)—which bars courts from enforcing rights based
on Cubaexport’s original registration. See § 211(a)(2), 112
Stat. at 2681-88. Cubaexport’s claim that following the plain
terms of the statute would nullify the “Executive’s authority to
grant or refuse specific licenses for registrations and renewals
of trademarks” is incorrect. OFAC granted Cubaexport a specific
license—allowing it to renew its trademark. And Cubaexport used
that specific license to renew its mark. See Countercl., ECF No.
154 ¶ 74 (“After receiving a copy of the specific license, the
Commissioner of Trademarks . . . granted Cubaexport’s Petition
. . . and accepted the 2006 and 2016 renewals and the associated
fee payments.”). However, OFAC’s action did not alter or amend
Cubaexport’s original registration—which, as the Counterclaim
alleges, was obtained under Section 515.527. See Countercl., ECF
18 No. 154 ¶ 75.
Because the Court agrees with Bacardi that Section
211(a)(2) bars Cubaexport’s counterclaim, the Court need not
also determine whether Cubaexport’s counterclaim should be
dismissed for failing to adequately allege likelihood of
confusion among consumers as a matter of law.
IV. Conclusion
For the foregoing reasons, the Court GRANTS Plaintiffs’
Motion to Dismiss Defendant’s Counterclaim, ECF No. 156. An
appropriate Order accompanies this Memorandum Opinion.
SO ORDERED.
Signed: Emmet G. Sullivan United States District Judge October 15, 2024