On June 13, 2024, the U.S. Court of Appeals for the Fourth Circuit ruled on a lawsuit brought by liquor producer Bacardi to challenge an action taken by the United States Patent and Trademark Office (USPTO) to allow renewal of the Cuban government's "Havana Club" trademark ten years after its expiration. The key takeaway from this result establishes that the Lanham Act does not preclude an action under the Administrative Procedure Act (APA) for judicial review of USPTO registration renewal decisions. The APA's mechanism for judicial review of USPTO action in connection with trademark registration renewal remains available.
Background
Bacardi & Co. Ltd and Bacardi USA, Inc (Bacardi) have been in a long-embroiled dispute with the Arechabala corporation and, in turn, the Cuban government, which seized the Arechabala corporation's assets in 1960. Arechabala originally held the trademark registration for "HAVANA CLUB" rum. The registration expired by 1974, and was later re-registered by the Cuban government.
Bacardi had originally purchased interest in the mark from the Arechabala corporation, and filed its own application to register the mark while also petitioning the USPTO to cancel the Cuban government's later registration. The USPTO denied Bacardi's application, and the Trademark Trial and Appeal Board denied Bacardi's cancellation petition. In the meantime, the Cuban government's disputed HAVANA CLUB registration was due for renewal in 2006; however, the renewal fee could not be paid due to a trade embargo, an exception to which was denied by the Office of Foreign Assets Control (OFAC). Therefore, the registration expired for failure to file a Section 8 renewal and the Cuban government petitioned to reverse the USPTO's decision.
Ten years later, once OFAC issued a special license, the USPTO permitted renewal of the "HAVANA CLUB" registration by the Cuban government. Bacardi sued the USPTO under the Administrative Procedure Act, claiming that the USPTO violated Section 9 of the Lanham Act, 15 U.S.C. § 1059, and their own regulations by allowing the renewal. The district court ruled that the Lanham Act precluded review under the APA (which provides standards for judicial review if a person has been adversely affected or aggrieved by an agency action) and therefore dismissed Bacardi's lawsuit for lack of subject matter jurisdiction. Bacardi appealed.
Holding
The Court of Appeals held that the Lanham Act does not preclude an Administrative Procedure Act (APA, 5 U.S.C. § 702) action for review of the USPTO's compliance with their own statutes and regulations. Specifically, the Court held that "[n]othing in the Lanham Act expressly precludes judicial review of the USPTO's trademark registration renewal decisions." Although the Lanham Act is silent with respect to a third party seeking judicial review of the USPTO's decision to grant renewal of an application, Section 21 of the Lanham Act specifically authorizes parties who are aggrieved by certain decisions of the Director or the Trademark Trial and Appeal Board to appeal to the US Court of Appeals for the Federal Circuit, or to institute a civil action in federal district court. Section 21 further does not limit proceedings under certain section or statutes, such as the APA.
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