Background
Cubaexport, a Cuban state-owned business, sought to renew its HAVANA CLUB trademark registration in December two thousand five. At that time, OFAC regulations prohibited the payment of renewal fees without a specific license. Cubaexport submitted the fee but lacked the required authorization, leading the PTO to refuse renewal in two thousand six. In two thousand sixteen, OFAC issued a retroactive license authorizing the original payment. The PTO Director then granted the renewal, prompting Bacardi to sue under the Administrative Procedure Act.
The court’s reasoning
The court reviewed the PTO Director’s decision de novo. It concluded that the Director acted within statutory authority because the two thousand sixteen OFAC license specifically authorized the two thousand five payment, validating the transaction under Cuban Assets Control Regulations. The court found that the Director reasonably explained the decision by identifying the changed legal status of the payment. Arguments regarding the delay in the agency’s decision were forfeited because they were not timely challenged.
We conclude that the PTO acted within its authority.
Bacardi & Company Limited v. Squires, 25-1355 (4th Cir. 2026)
What it means going forward
The ruling confirms that retroactive regulatory licenses can cure procedural defects in trademark renewals, allowing registrations to remain in force even when initial payments were blocked by embargo regulations.