Could Mark Cuban trademark and sell his own brand of ‘Cuban Cigars’ in the US?
There seem to be a lot of competing legal issues here. Just curious if anyone has the time to parse out the likely outcome.
Cuba, and Cuban cigars, existed long before he did.
I am aware of that. Maybe only lawyers should reply.
Well, I’m not a lawyer, but I do play on on tv work in intellectual property.
I suspect that, because of the existence of many brands that are already collectively known as “Cuban Cigars”, that such a term would be considered too generic to be a trademark. The whole point of trademarks is to reduce the chances of consumer confusion about what products they’re buying, and this would appear to work directly against that intent.
He could certainly try marketing this brand, but I doubt he’d get a trademark on the name alone. He could probably trademark a particular logo, or the use of a unique font used in the label.
Given that Cuba Cuban cigars aren’t even legal to sell in the US, I don’t see what trademark they’d be running afoul of. Sure, why not
Not a lawyer.
I don’t believe that the word “Cuban” is illegal in the USA. To the extent that it might be, a First Amendment challenge against said law would - I have to imagine - easily get it knocked down.
Importing tobacco from Cuba might be restricted. That has no bearing on Mr. Cuban’s business, selling “Cuban Cigars”, unless he chooses to import tobacco from Cuba.
I would imagine he might run afoul of some kind of truth-in-advertising laws because the implication would be that they’re cigars from Cuba, not Mark Cuban’s cigars.
So I’d think that “Cuban’s Cigars” would be close enough without being misleading, and maybe even tongue-in-cheek enough to generate some notoriety of their own.
I don’t think it’d be running afoul of a trademark; I think that, as @Horatius says, because the term “Cuban cigars” is a long pre-existing, generic term for cigars which come from Cuba, it would be too generic, and would, instead, be adding confusion.
I suspect that it’d be no different from trying to trademark a semi-generic term for produce from a particular location, like “Wisconsin cheese” or “Florida orange juice.”
It’s worth noting that Miami has a significant number of businesses selling “Cuban-style” cigars, that are made locally. The names of these places all evoke the image of “Cuban cigars”, to a greater or lesser degree.
Cecil covered this in one article. You cannot use a trade name that makes a false claim. His example was “100% Beef Crackers” made of wheat or something similar.
The trademark for “Florida orange juice” was cancelled in 2018, but I don’t know why. “Wisconsin cheese” currently has a valid trademark covering “dairy products, namely, cheese, cheese spread, processed cheese, and cheese food.”
So, if Cuban (from Cuba) cigars were legal to sell in the US, then there probably would be a trademark on them.
Mark Cuban (or possibly anybody else) could apply for a trademark on Cuban Cigars, and possibly get it if nobody objected. Whether it would survive a court challenge is a different matter.
You would be right. The USPTO can reject registration of a trademark that is “geographically deceptively misdescriptive.”
A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is a generally known geographic location; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; (3) the goods or services do not originate in the place identified in the mark; and (4) the misrepresentation would be a material factor in a significant portion of the relevant consumers’ decision to buy the goods or use the services. For example, the mark “REAL RUSSIAN” would be primarily geographically deceptively misdescriptive for vodka that does not come from Russia.
Mark Cuban can’t sell cigars from Cuba in the US, so whatever cigars he is selling would be misdescribed by applying his name to them.
(But he’s a billionaire, so perhaps if he wants to sell Cuban cigars under his name, he could try to do so for a long time without registration, establish a strong brand such that people associate the term “Cuban cigar” more strongly with him than cigars from the country of Cuba, and finally register the trademark on the basis that it is not geographically descriptive but rather that cigar buyers now think of him almost exclusively when they hear the term “Cuban cigar.” This is the type of vanity project you can contemplate when you are a billionaire not trying to maximize returns and have a singular goal to redefine what “Cuban cigar” means. I leave it up to the reader to guess whether it would work. My hunch is that it might only because it would be very hard for the USPTO examiners to fight an army of lawyers and market research consultants indefinitely.)
This doesn’t follow from your previous examples of Florida orange juice and Wisconsin cheese, both of which marks were held by associations of producers of those products. Yes, if Cuban cigars were legal in the U.S., Cuban cigar makers might form an association to market them, but it’s far from the foregone conclusion you seem to suggest.
@Tired_and_Cranky’s cite for the geographical misdescription exclusion would seem to rule out using “Cuban Cigars” as a brand but not @bump’s clever suggestion of “Cuban’s Cigars,” which sounds almost exactly the same.
My Dad runs an oriental carpet shop in the UK but he can’t use the term “Persian” on his website because Google will downgrade him in search results and Paypal and Mastercard will refuse the transactions - despite “Persian carpet” being a well-known synonym for oriental carpets. And if he sells a carpet from the Persian region (which he will not have purchased from Iran, these are often imported decades ago and traded like antiques) he has to be very careful about what to call it or how to describe it. This is all to do with with the US sanctions against Iran. Now this is in the UK where there are no equivalent sanctions (AFAIK), so even if you could sell something called “Cuban Cigars” in the US, good luck trying to market them online or take payment.
Yes, that is exactly what I would expect to happen, and that association would attempt to get a trademark.
The catch (and I suppose the whole point of this thread) is that Mark Cuban would mean his name, not the geographic location. Are his lawyers good enough to convince the trademark office of that? Is anybody going to object when there is nobody legally selling Cuban cigars in the US?
It would seem ridiculous that he could get that trademark, just because he happens to have a name that is the same as the geographic location, but I never expect IP issues to make too much sense.
But there’s also an exclusion from registration for a mark that is primarily a name. He’s damned if he does and damned if he doesn’t. If I understand correctly, a name like “McDonald’s” gets trademark registration because it’s primarily thought of as the name for a fast, cheap burger place (and it is wildly famous as such). In legal terms, it has made a showing of “acquired distinctiveness.” If you’re friend says, with no more context, “Let’s go to McDonald’s,” odds are you’re going to assume he means the burger place, not his old friend with a farm (E-I-E-I-O).
Mark Cuban to register “Cuban’s Cigars” would need to establish that when people here “Cuban” the first think they think of is his brand of cigars (and not just of Cuba, or Cuban sandwiches, or Cuban cigars generally). It’s a tall order but, with enough money behind him to promote the brand and fight the USPTO, I think it’s possible he would pull it off.
Also, there’s an exclusion for things that sound like registered marks. I can’t register a mark for a car company named “Phourd,” and “Cuban’s Cigars” sounds confusingly similar to the unregisterable, geographically misdescriptive “Cuban Cigar” mark.
Right, trademarks are adjectives, not nouns. So for McDonald’s® restaurant, the trademark is on the adjective describing the type of restaurant. Now that is certainly one were we’ve nouned the adjective, so nobody is at all confused when you say you’re going to McDonald’s. Trademarks can also be on symbols, colors, and such, too.
Are you saying that just because you think he’ll have a high hurdle to exceed the existing association, or because a usage has to be established before it can be trademarked? If the later, then you can register a trademark on any sort of nonsense you want, as long as it isn’t already used for something similar. If I want to start selling Obakeefe brand cigars, then I can go get a trademark before I set up my website, print labels, and all that stuff. Nobody is going to object, unless my randomly generated nonsense word is too close to the name of some other tobacco product.
I don’t think Mark Cuban should be able to trademark “Cuban cigars”, but IP stuff can be stupid. Lots of people have managed to register trademarks for things that are purely descriptive, and have been used that way long before their trademark was granted. A recent one, for example “mochi (a kind of rice flour) muffins”. That would be similar to the USPTO granting a trademark on “corn muffin”, as opposed to “Jiffy corn muffin,” which certainly could be trademarked.
Good Issue spotting everyone!
In the US AIUI:
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You can trademark your name on the principal register if it has a secondary distinctiveness, because it’s a famous name etc… You may be asked for proof that the applicant is one and the same person, or you have their permission. Otherwise you might only get a registration on the supplemental register.
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A trademark application may be refused for being too descriptive or too misleading. So you’re screwed if you sell cuban cigars and screwed if you don’t. What if he was selling shoes?
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A trademark application can be refused for being illegal or contrary to public morals or the interests of the state etc. etc. (I’m paraphrasing) So if Cubans were illegal to sell in the US good luck getting a trademark for them.
A few other issues too that people brought up, like association trademarks and geographical indications that are the basis of treaties in force.
I thought it was an interesting theoretical to discuss.
I was also thinking of sidestepping a few issues by just trademarking his name “Mark Cuban” and then advertise (small) mark (large CUBAN CIGARS). What problems could arise from that? Or side step with a “Mark Cuban Cigars” registration. Try to convince the examiner that no one would think that they are cuban cigars because they are illegal. It’s just like “George Foreman Grills”. Worth a try.
I’ve seen applicants side step the law in many interesting ways. There used to be (maybe still is) a trademark registration for “FU*K YOU” (can we swear here? Anyway there was a C in there) . They just wrote it in bubble letters and turned it upside-down. You couldn’t read it unless you turned it upside-down, but a trademark can be USED any which way up or down or sideways.
That one would probably be acceptable, as it seems clearly directed to a subset of “Cuban cigars”. No one would likely confuse “Mark Cuban Cigars” with “Fidel’s Cuban Cigars”, for example.