Trademark disputes can run for decades, but many of them turn on moments that happened long before anyone filed a lawsuit. Bacardi’s latest loss in the HAVANA CLUB fight came down to a renewal payment submitted in December 2005, a Treasury Department license issued in January 2016, and whether those two events could be treated as one valid transaction. On June 16, 2026, the Fourth Circuit said they could.
The HAVANA CLUB Appeal Turned On A Renewal Payment
The Fourth Circuit published its decision in Bacardi & Company Limited; Bacardi USA, Inc. v. John A. Squires, No. 25-1355 on June 16, 2026, affirming the Eastern District of Virginia judgment for the USPTO Director, the USPTO, and intervenor Empresa Cubana Exportadora de Alimentos y Productos Varios, known as Cubaexport.
The registration at the center of the dispute is HAVANA CLUB & Design, Registration No. 1,031,651, issued to Cubaexport on January 27, 1976, covering rum. Cubaexport renewed it in 1986 and 1996. On December 14, 2005, Cubaexport submitted its next renewal documents and fee. Because the Cuban government owns Cubaexport, the transaction was subject to OFAC licensing requirements that a 1998 statutory change had made more restrictive. The USPTO treated the fee as unauthorized and refunded it.
Then things shifted. In November 2015, Cubaexport applied for a specific OFAC license. OFAC granted it on January 11, 2016, authorizing transactions related to the HAVANA CLUB renewal, including the December 14, 2005 submission and payment. Acting on that license, the USPTO Director granted Cubaexport’s petition and treated the 2005 payment as effective as of the original submission date.
Bacardi’s position was that the registration had already expired by operation of law when the 2005 payment was rejected. In Bacardi’s framing, there was no valid renewal, and the USPTO Director lacked authority to treat the later license as saving the earlier submission. Bacardi brought an Administrative Procedure Act suit against the USPTO and its Director in 2021. The district court entered judgment against Bacardi in March 2025, and the Fourth Circuit affirmed.
Why The Court Said The Renewal Survived
A trademark registration is only as strong as the filings that keep it alive. Miss a maintenance window, leave a fee unpaid, or let the administrative record go dark, and a competitor can move against the registration even when the mark remains commercially important. Here, the survival question centered on whether a legal barrier to accepting the renewal fee meant the renewal itself had failed permanently.
The Fourth Circuit’s answer centered on what the OFAC license authorized. The 2016 license specifically covered the December 14, 2005 submission and payment. Once the legal barrier was removed retroactively, the USPTO Director’s decision to treat the 2005 filing as complete as of its original date became acceptance of a previously submitted renewal after the obstacle had been cleared.
Bacardi argued that the registration had expired by operation of law the moment the payment was rejected and refunded, making any subsequent action a nullity. The court rejected that position. OFAC authorization drove the problem, and the administrative record showed that issue as the obstacle to acceptance. Cubaexport had submitted the documents and payment. The fee was blocked by sanctions licensing rules, while the renewal itself had no separate trademark-merits defect identified in the court’s discussion.
The arbitrary-and-capricious challenge failed for a related reason. Under APA review, the question is whether the agency’s explanation is reasonable and grounded in the record. The administrative record showed that the missing OFAC authorization was the sole reason the fee had not been accepted in 2005. Once the Director had that authorization in hand, accepting the payment and treating it as timely was a reasoned response to the documented obstacle.
Petition evidence should make the administrative problem easy to identify: when the filing arrived, why payment failed, and what later authorization changed.
The delay-based arguments Bacardi raised were rejected or found forfeited. The practical takeaway is narrower and more useful than the politics of this fight: administrative decisions on a trademark renewal filing can stand when the agency explanation addresses the record’s central issue.
The Market Stakes Behind One U.S. Registration
The HAVANA CLUB mark carries real commercial weight. It sits at the intersection of a major rum category, a decades-long trade embargo, and a dispute over assets the Cuban government nationalized in 1960. Jose Arechabala S.A. held several U.S. HAVANA CLUB trademark registrations in the 1950s. Those registrations later expired or were cancelled. Cubaexport, established in 1965, applied to register the mark in the United States in 1974 and received Registration No. 1,031,651 on January 27, 1976.
Bacardi entered the U.S. market on a different path. After buying interests associated with the Arechabala family, Bacardi began selling HAVANA CLUB rum in the United States in 1995, according to Reuters and court records. The two ownership lines produced a direct conflict over who held the U.S. rights. Cubaexport, constrained by U.S. embargo regulations that restrict most Cuba-related transactions, has stayed outside U.S. HAVANA CLUB rum sales. Outside the United States, the brand has a substantial commercial presence: Reuters reports that Cubaexport and Pernod Ricard sell HAVANA CLUB internationally, though Pernod Ricard was not a party in the Fourth Circuit appeal.
That split matters for anyone watching this dispute as a trademark lesson. A registration can carry commercial weight and legal leverage in a market without active U.S. sales by the owner. Bacardi’s challenge was driven in part by the reality that Cubaexport’s U.S. registration affected Bacardi’s ability to clear and protect its own HAVANA CLUB rights in the United States.
For U.S. trademark registration for foreign companies, this case illustrates how foreign ownership, sanctions exposure, and U.S. trademark rights can intersect in ways an ordinary renewal calendar misses. The surface risk is a missed deadline. The deeper risk is that legal authority to complete a routine transaction can disappear, and the question of whether a later fix validates an earlier filing can take years to resolve.
What Brand Owners Should Do Before A Renewal Becomes A Fight
OFAC license problems are rare. The administrative-record reasoning in the Fourth Circuit’s decision still applies to a much wider range of situations, and the maintenance disciplines it highlights belong in every brand owner’s renewal process.
Start with the calendar. U.S. trademark registrations require filings at specific intervals: a Section 8 declaration of use between years five and six after registration, a Section 9 renewal application between years nine and ten, and later ten-year renewals. Section 15 declarations of incontestability are optional but strategically valuable after five years of continuous use. Missing a required window can end a registration. Before any deadline arrives, confirm who is filing, whether the owner name in USPTO records still matches the current legal owner, what payment method will be used, and whether anyone has flagged a legal constraint on completing the transaction.
Foreign ownership, sanctions exposure, assignments, mergers, dissolved entities, and licensing structures can become maintenance problems rather than background facts. If the entity that holds the registration has changed names, been acquired, or entered a jurisdiction with OFAC implications, those facts need to surface before the renewal window. Rivals and cancellation petitioners look for these gaps. A registration filed in the name of a dissolved entity, renewed by someone who cannot prove chain of title, or tied to a payment that required authorization nobody obtained becomes a target.
Evidence preservation matters at every stage. Keep records showing that renewal documents and payment were submitted on time. If any part of the process was delayed by something outside the filing’s ordinary merits, document the reason contemporaneously. The HAVANA CLUB case turned in part on the record showing OFAC authorization as the sole barrier to accepting the 2005 payment.
Watch rival filings as part of your ongoing trademark protection planning. When a registration has commercial value, competitors track its status. A maintenance gap can become a cancellation petition or an opposition to a renewal, and a clean documented renewal history strengthens the posture a brand owner carries into any ownership dispute. Keep those records with the registration file, rather than scattered across inboxes or accounting systems.
Protect The Registration Before The Fight Starts
A trademark registration can survive or fail based on maintenance details that feel purely administrative until the moment a competitor makes them outcome-determinative. The HAVANA CLUB renewal dispute shows, in concrete terms, that a timely filing can still be attacked years later if payment authority or the procedural record leaves an opening. By the time litigation resolves the question, the commercial stakes are already in play.
I work with businesses to audit renewal deadlines, confirm ownership chains, review assignment and licensing structures, identify clearance conflicts, and assess enforcement risk before a registration becomes vulnerable. That work covers initial registration, maintenance declarations, renewal filings, and the administrative records that support a mark’s validity when a rival decides to push. For brands with foreign ownership components, sanctions exposure, or complex commercial histories, the record has to be right before the deadline arrives and before a dispute forces the issue.
If your brand depends on a U.S. trademark registration and you have not reviewed the maintenance record recently, now is the right moment. Contact me to discuss what an audit of your trademark portfolio would cover and where the gaps in your renewal timeline might be before a competitor or deadline exposes them.
