Trademark Counterfeiting Act: Parallel Brands, The Helms-Burton Act, Cuban Cigars

United States v. Penton, 2008 U.S. App. LEXIS 25373 (11th Cir. Fla. Dec. 17, 2008)

NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.

The Defendant appealed from a judgment that found him in violation of 18 U.S.C.S. § 2320(a), the Trademark Counterfeiting Act. The defendant was caught when an undercover officer went to his shop and purchased cigar boxes that looked similar to trademarked “Cuban” cigar boxes. The defendant contended that the trademarks of the “Cuban” cigars were not valid United States trademarks because of the Helms-Burton Act, at 22 U.S.C.S. § 6032(h). However, the companies at issue, although originally from Cuba, had set up independently in the United States after the owner families fled from Cuba. The companies had established trademarks in the U.S. by common law. In the meantime, back in Cuba, there were still the other separate brands with the same marks, now run by the Cuban government. Consequently, parallel brands had developed, with the Cuban government selling Cuban style cigars made in Cuba to the rest of the world, and the Cuban exile company selling Cuban style cigars made in the United States distributing them in the U.S. The trademarks for the company owned by the Cuban government are not U.S. trademarks and not entitled to U.S. trademark protection. However, the companies at issue here were the companies based in the United States which own common law U.S. trademarks. Therefore, the trademarks in question are U.S. trademarks, the Helms-Burton Act does not apply here, and these U.S. trademarks are protected. Also, testimony of consumers and experts was not necessary to prove confusion.