Section 211 and Confiscated Cuban Trademark Rights

Section 211 of the Omnibus Appropriations Act of 1998 is a federal statute that addresses trademarks and trade names linked to businesses or assets confiscated by the Cuban government. This law governs the recognition and enforcement of such intellectual property rights within the U.S. legal system. Its primary function is to prevent entities, other than the original owners or their legitimate successors, from registering, maintaining, or enforcing rights to trademarks associated with these confiscated properties.

The legislation was passed in response to disputes over valuable trademarks that were in use by businesses prior to their seizure. The law aims to ensure that the U.S. legal and commercial systems do not validate the confiscation of these assets by denying trademark protection to those who did not originally own them. This creates a distinct set of rules for this category of intellectual property, tying trademark rights to the historical context of the Cuban government’s actions on or after January 1, 1959.

Scope of the Prohibition

Section 211 establishes specific prohibitions that impact the use of the U.S. legal system to protect certain trademarks. The law states that no U.S. court shall recognize, enforce, or otherwise validate any assertion of rights to a trademark or trade name used in connection with a business confiscated by the Cuban government. This prevents entities from suing for trademark infringement in the United States if the mark in question is tied to a confiscated Cuban entity.

A second prohibition targets the administrative side of trademark protection. The United States Patent and Trademark Office (USPTO) is barred from granting registration to a trademark that falls under the conditions of Section 211. An application for a new trademark will be refused if it is the same as or substantially similar to a mark used with a confiscated business, unless the original owner provides consent.

The law also extends to existing trademark registrations. The USPTO is prohibited from processing the renewal of a previously registered trademark if that mark is linked to a confiscated asset. This ensures that even long-standing registrations cannot be maintained by anyone other than the original owner or their legitimate successor. The dispute over the “Havana Club” rum trademark serves as an example of these prohibitions, where the law was invoked to prevent the registration and enforcement of the mark by an entity that was not the original owner.

Conditions for Application

For the prohibitions of Section 211 to be triggered, a specific set of conditions must be met. The term “confiscated” refers to the nationalization, expropriation, or other seizure of property by the Cuban government without the owner’s consent. The law applies if all of the following conditions are present:

• The trademark or trade name being asserted in the U.S. must be the same as, or substantially similar to, a mark that was in use when the associated business or assets were confiscated.
• The person or entity seeking to register or enforce the trademark is a “designated national,” which includes the Cuban government, an entity controlled by it, or any non-U.S. entity that is a successor-in-interest to the confiscated business.
• The designated national has not obtained the express consent of the original owner of the mark or their bona fide successor-in-interest. This provision protects the rights of the party whose property was taken.

The World Trade Organization’s Dispute Settlement Body reviewed Section 211 and found certain aspects to be inconsistent with U.S. obligations under international agreements. The WTO panel determined that the law discriminated between U.S. and foreign successors-in-interest, creating a conflict with international trade agreement requirements. Despite these findings, the law remains in effect in the United States.

Asserting Rights at the USPTO

Individuals or companies seeking to prevent the registration of a trademark based on Section 211 can use formal procedures at the U.S. Patent and Trademark Office. These mechanisms are handled by the Trademark Trial and Appeal Board (TTAB), an administrative body within the USPTO that functions like a court for trademark matters. The process is not automatic, as the original owner or a party with a legitimate interest must proactively challenge the conflicting trademark.

One method is to file a Notice of Opposition. This action can be taken after a trademark application has been examined, approved, and then published for opposition. There is a 30-day window following publication for any party who believes they would be damaged by the registration of the mark to file an opposition. In this proceeding, the opposing party presents evidence to the TTAB to demonstrate that the conditions of Section 211 are met.

If a conflicting trademark has already been registered, the appropriate action is to file a Petition for Cancellation. This petition is also filed with the TTAB and seeks to have the existing registration invalidated on the same grounds as an opposition. Both opposition and cancellation proceedings are formal legal processes that involve filing pleadings, conducting discovery, and submitting evidence before the TTAB makes a final determination.