Trademark Law

Las Vegas Businessman ordered to stop using the name COHIBA on cigars and rum

By Ryan Gile

The Cohiba Caribbean's Finest Cigar

A real Cohiba® cigar

The Cohiba, which apparently gets its name from the Taino word for "tobacco," was originally the private brand of cigar for Fidel Castro, but is now produced and sold publicly by Habanos SA, the state owned tobacco company. The Cohiba imported into the U.S. by General Cigar Co. are actually made in the Dominican Republic in order to get around the U.S. ban on trade with Cuba.

Restifo was quoted as saying that as of the 30th, his company stopped sales of the rum and pulled down his website. And while it?s true that if you go to http://www.cohibarum.com/, the home page that appears states the following:

Will no longer be servicing for sale or Wholesale,the products of Cohiba Carribbeans Finest.

Due to Big Bully Business and a pure lack of Money...We could no longer afford to defend our Position.

Please remember General Cigar has never been in theLiqour Business!!!!!!

Court orders have reduced an Honost Brand name to the level of Mogel Money Monsters.

General Cigar without Merit and deep pockets transformed a Mom & Pop Liqour [sic] operation into being the Al Capones of the Cigar & liquor Industry.

However, Restifo?s original home page is still accessible through http://www.cohibarum.com/home.html (Check out the COHIBA girls!). You can view the ?infringing? cigar products at http://www.cohibarum.com/cigars.html.

And while I have not reviewed the actual court documents in the litigation, Mr. Restifo?s statements about General Cigar not being in the rum business may have merit. While General Cigar Co. has two registrations for the mark COHIBA for cigars (one registered in 1981 and a second in 1992), its two applications to register the mark for rum (among many other classes of goods) were not filed until 1996 ? and even then, the basis was intent-to-use and General Cigar has never updated the basis to reflect use-in-commerce. The application has been continuously suspended pending the outcome of another intent-to-use application to register COHIBA for alcoholic beverages, namely, tequila filed in 1995 by Tequila Cuervo La Rojena, S.A. de C.V., which itself has been the subject of an opposition filed in March 10, 2000 by, guess who, General Cigar Co. (Opposition cite unavailable due to an error with the TTABVUE).

In addition, there was another application filed in 2000 by New Yorker Kereskedelmi Kft., a Hungarian corporation, for the mark COHIBA for various goods including alcoholic beverages (including rum). The application, originally filed as an intent-to-use (under Section 1(b) and Section 44(d)), now has an established priority date of September 15, 2000 based on its registration for the mark in Hungary ? although oddly enough, the registration does not support the alcoholic beverage goods and the applicant had to revert to Section 1(b) for such goods.

All of this fighting over a word that in Spanish actually means ?stifle? or ?restrain? (a conjugated form of the Spanish verb ?cohibir?).

Full post as published by Las Vegas Trademark Attorney on July 12, 2008 (boomark / email).