20
Oct/02

More on Jeb Bush as Trademark Lawyer


There is a long and tortuous history concerning the trademark for HAVANA CLUB rum.  There was a pre-Castro HAVANA CLUB rum and there is a present day Cuban HAVANA CLUB rum.

Bacardi (successor in interest to the pre-Castro rum) was influential in getting the U.S. to adopt legislation to ban importation of the Cuban version, which legislation was held by the WTO to be a violation of U.S. treaty obligations (background here and here).  Bacardi has litigated (up to the Supreme Court) for the right to sell its own Bahamanian-produced HAVANA CLUB.  There is an awful lot of material on the Web on this dispute -some more stuff here and a metasearch of the term HAVANA CLUB might be informative as well.

The U.S. PTO is handling proceedings regarding the disposition of the trademark applications and registrations of the respective parties (an extensive essay about the distinction between the right to use a trademark and the right to use register a trademark, the descretion of a federal court to decide these issues separately, and the complex role of the PTO as an expert agency to federal courts on these issues would be relevant here but beyond the scope of this blurb). 

 In September it was revealed that in June of this year, Bacardi had contributed $50,000 to Florida Governor Jeb Bush’s re-election campaign and that two weeks later he wrote a letter to the PTO Commissioner about the case.  Bush denied a link.

Under pressure, Gov. Bush has now provided details about his contacts with the PTO, which suggests that his communications may be characterized as petitions regardin the handling of a specific case.  The funniest line in the Post article quoted a Bacardi official as complaining that the Trademark Office was interfering in a trademark case. 

A starting point for evaluating Gov. Bush’s actions would be 37 CFR 10.14 regarding who may represent a party in a proceeding.  As a non-lawyer, Bush does not seem to fall under the enumerated list of indivduals.  Furthermore, given that 37 CFR 10.93(b), which governs ex parte communications with the Commissioner during an inter partes proceeding, refers only to “practitioners” as being allowed to make such contacts, Bacardi may have problems there as well.  We don’t know all the facts so we shouldn’t jump to any conclusions here.

Of course, when the President’s brother writes an angry letter to a presidential appointee, we can come to certain conclusions.

Given the importance of the Florida gubernatorial campagin, I don’t think we have heard the last of this matter. 

 However as we see time and time again, one thing is clear, parties who seek expert trademark representation without political fall-out should retain me.

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