Saturday, July 12, 2008

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

The Associated Press reported today (link here) that Las Vegas businessman Philip Restifo, President of the Nevada corporation Cohiba Caribbean’s Finest Inc. and the Bahamas corporation Data Commodities Ltd., was ordered on June 30, 2008 by U.S. District Court Judge Brian Sandoval to stop using the mark COHIBA on cigars and rum and to pay General Cigar Co. ("General Cigar"), the owner of the COHIBA mark for cigars, $770,000 in damages plus legal costs.

The Cohiba Caribbean's Finest Cigar

The order banned Restifo and his affiliated companies from the importing, marketing, distributing and selling of "Cohiba Caribbean's Finest" cigars and rum. Apparently, Restifo’s use of the COHIBA on his cigars was prominent and the "Caribbean's Finest" were in small italicized font. General Cigar’s vice president and general counsel called Restifo's businesses the most aggressive among several Cohiba counterfeiters in the nation. [Query: Is Restifo a big Cohiba rum counterfeiter as well?]

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 worldwide (except in the U.S.) by the state owned company Cubana del Tabaco (d/b/a Cubatabaco) both directly and through Cubatabaco's licensee, Habanos SA. The Cohiba cigar sold in the U.S. by General Cigar is actually made in the Dominican Republic in order to get around the U.S. ban on trade with Cuba. Of course, because General Cigar's COHIBA is not the cuban-made COHIBA, this has led to some contentious trademark litigation between the parties (more on this later).

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, 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 (Check out the COHIBA girls!). You can view the “infringing” cigar products at

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 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.

Of course, the failure to update may not be from lack of use, but instead because 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. See General Cigar Co. v. Tequila Cuervo La Rojena, S.A. de C.V., Opposition No. 91117311 (Filed Feb. 14, 2000).

And this opposition has been suspended pending the outcome of a cancellation proceeding filed against General Cigar by Cubatabaco. See Empresa Cubana del Tabaco v. General Cigar Co., Cancellation No. 92025859 (Filed Jan. 15, 1997). This cancellation proceeding was the beginning of what became a contentious dispute between the two cigar companaies over the COHIBA name. The cancellation moved over to the federal courts in 1997 (see Empresa Cubana del Tabaco v. General Cigar Co., Case No. 97-cv-8399 (S.D.N.Y.)). Although the district court in 2004 held that Cubatabaco owned the trademark COHIBA for use on cigars under the famous marks doctrine and ordered General Cigar Co's registration cancelled (opinion here), the U.S. Court of Appeals for the Second Circuit reversed the district court on the basis that the U.S. trade embargo against Cuba prevented Cubatabaco from acquiring property rights in United State trademarks under the famous marks doctrine. See Empresa Cubana Del Tabaco v. Culbro Corporation, 399 F.3d 462 (2nd Cir. 2005), cert. denied, 126 S.Ct. 2887, 165 L. Ed. 2d 916 (2006).

Upon remand to the district court, General Cigar subseuqently filed a motion with the district court to amend its prior order to add an order to the USPTO dismissing the pending cancellation proceeding. However, the court denied the motion as untimely because General Cigar had not sought such claim for relief earlier in the case and because the TTAB can properly decide the impact of the Court of Appeal's decision. See Empresa Cubana Del Tabaco v. Culbro Corp., 478 F. Supp. 2d 513 (S.D.N.Y. 2007). General Cigar has appealed this decision to the Second Circuit Court of Appeals (Appeal No. 07-1248), but no oral arguments have been heard nor decision made. In addition, Cubatabaco in early 2008 filed its own motion with the district court seeking relief from the district court's previous dismissal of Cubatabaco's claim of relief based on New York common law unfair competition by misappropriation. (Can you say "BUKHARA"?). Oral arguments have been heard, but no decision has been issued.

Unrelated to the litigation over COHIBA for cigars, there is 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 (both under Section 1(b) and Section 44(d)), now has an established priority date of September 15, 2000 – the company having obtained a registration for the mark in Hungary and changing the basis for its application to Section 44(e).

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

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