Responsive Documents - CREW: Department of The Treasury: Regarding Communications Pertaining To "Bacardi," "Havana Club," Etc.: 7/29/2011 - Treasury FOIA Docs

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Message
All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless
otherwise noted
From:--
Sent: Thursday, September 07, _2006 10:33 AM
To:
Cc:-
Subject: Telephonic inquiry re of Trademarks underCACR & SSR
-
Page 1 of 1
This morning received a v-maii from--- (?sp) of unidentified law firm inquiring why, since the regs.
provide for property, assignment_0f trader:narks is prohibited.
I discussed w. - who remmded rpe of the but I don't feel qual1f1ed to discuss this w1th the
attorney and would appreciate if you could field.
At least 10 years ago, the issue arose in connection with the Havana Club Trademark. -
interpretation (it's not written, but has been policy ever since)was that Cu_ban trademarks involve blocked property
and we want to ensure that they are not assigned outside of OFAC jurisdiction. With sufficient documentary
evidence we can, and have, licensed such assignments. (I don't see how this applies to Sudan.)
In addition to- Matthew is intimately familiar with the issue.
. If-is correct in his assertions about the SSR, could you plea:;;e explain it to me.
Thanks, All!!
1/24/2008
2003-06-032 000001 .
Message
otherwise noted
Page lof 2
------. ----------
From:-
Sent: Monday, February 26, 2007 9:50AM
To: Thornton, Sean; Tuchband, Matthew;
Cc:-
Subject: RE: FYI -Cuban dip note protesting Havana Club
-
Attorney-Advisor
ef Counsel (Foreign Assets Control)
United States Department of the Treasury
1500 Pennsylvania Avenue NW; Treasury Annex
Washington, DC 20220
Telephone: 202-622-2410
Fax: 202-622-1911
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immediately advise the sender by reply e-mail that this. message has been rnadvertently transmitted to you and delete this e-mail from your system.
Thank you for your cooperation.
-----Original Message-----
From: Thornton, Sean
Sent: Monday, February
To: Tuchband, Matthew;
Cc:-
Subject: FW: FYI - Cuban dip note protesting Havana Club
Now that I can read the attachment, I see that this file is two dip notes, not one, and the second protests
the denial of a specific license in the Cohiba case.
I now think I understand what motivated the
are dated February 16:)
(b)(5) -
Thanks,
Sean
1/24/2008
2003-06-032 000002
dip notes
I (b)(5) I
Message Page2of2
1/24/2008
2003-06-032 000003
All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless otherwise noted

Thornton, Sean
Friday, December 01
Tuchband. Matthew;
RE: Havana club story
He's not supposed to bring back rum anymore\ and Florida law has nothing to do with it.
From: Tuchband, Matthew
Sent: Friday, December 01, 2006 5:42 PM
To iiiiil Thornton, Sear
Subject: RE: Havana club story
-Matthew
well ....
Fqllowing
I (b)(s) I
From:
Sent: Friday, December
To: Tuchband, Matthew; Thornton, Sean
Subject: Havana club story
In case you missed it:
http://marketplace.publicradio.org/shows/2006/11 /30/PM200611305 html
TEXTOF STORY
KAI RYSSDAL: We're not quite in the right seasori for 'em ar1Ymore, but Mojitos have set rum sales in
the U.S. on fire. It's second only to vodka in popularity. Which raises the stakes in a dispute between two
companies over the trademark of a legendary Cuban rum. From the Marketplace Innovations_ Desk at
North Carolina Public Radio, Janet Babin reports:
JANET BABIN: To understand the Cuban trademark war between two rum makers; it helps to have
experience with the stuff. Preferably, the good stuff.
NICK ROBINS: OK, let's see what we got here .... All right."
Duke visiting scholar Nick Robins got this aged Cuban sipping rum in Cuba, during one of his many
visits. It's caramel colored with an inviting taste, even for somone not used to hard liquor in the
afternoon.
ROBINS: "That's smooth, huh? And as they say, there's m()re where that came from.
But not much more, if you're an American. The U.S. imposed <l-11 embargo against Cuban goods decades
ago, and Florida recently announced plans to strengthen enforcement against offenders. Arid Robins says
that's part of Cuban rum's popularity- its forbidden taste is steeped in the island's culture:
ROBINS: The way we are into our beer or our football, the Cubans are into their rum and their
2003-06-032 000004
baseball. It is part of the identity.
Just who owns the real identity of Havana Club Rum in the U.S. market is what's behind the battle
between France-based Pemod-Ricard, its Cuban partner Cubaexport and Bacardi USA. Pemod has made
Havana Club Rum in Cuba for more than a decade, and sells it throughout the world.
Bacardi USA began selling its own version of Havana Club Rum in Florida in August, after the U.S.
Patent and Trademark Office refused to renew Pemod's H a v a n ~ Club trademark. Bacardi spokesman
John Gomez says Bacardi bought the real Havana Club recipe ~ n d should get the trademark:
JOHN GOMEZ: Bacardi does own the rights to Havana Club. Bacardi purchased the rights in
the mid-90s from the Arechabalas family.
That family made the rum in Cuba trom the 1930s to the 1960s, when it fled Fidel Castro's regime.
Intellectual property attorney Robert Muse has worked with Petnod in the past. He says the Patent Office
decision about Havana Club's trademark was based on a congressional provision passed in 1998. It
prevents the U.S. from honoring trademarks of businesses confiscated by the Cuban government.
Muse calls.it the Bacardi law:
ROBERT MUSE: It has no support. It's an egregious example of special-interest legislation by a
non-U.S. eompany to procure an anticompetitive benefit in a rum competition.
Muse says the Patent Office decision could threaten the trademark stability of hundreds of U.S. products
sold overseas. Despite the embargo, some 300 U.S. brands have the right to sell products in Cuba, from
Tyson. Chicken to Wrigley's gum. Muse says this could weaken brand enforcement for those companies.
MUSE: Cuba under international law is now free to invalidate, cease registering, or take any
other actions against U.S. trademarks.
Bacardi doesn't have ~ n d doesn't need a trademark to sell Havana Club in the U.S. But it could run into
another kind oflegal trouble. While Pemod's rum is made in Cuba. Gomez says Bacardi's ...
GOMEZ: ... It's, uh, made in Puerto Rico.
But it's called Havana Club. That could lead consumers to believe they're buying Cuban rum. Cardozo
law professor Justin Hughes says it's illegal to market a product that's geographically misleading:
JUSTIN HUGHES: Havana Club on a product that is rum: not from Cuba, rum trom the
Dominican Republic, or rum from Jamaica might be decepfive.
But Bacardi spokesman Gomez says consumers are smarter than that:
GOMEZ: We really give our consumers a lot of credit for being able to read the label and see
that it's very obvious that it comes from Puerto Rico.
Pemod has tiled a federal lawsuit against Bacardi for allegedly misleading consumers about where its
rum is made.
According to the Distilled Spirits Council, rum brought in almost $1.8 billion in 2005, up 5.5 percent
over the year before. Bacardi continues to sell Havana Club in Florida, and is considering selling it in
other states too.
In Durham, North Carolina, I'm Janet Babin for Marketplace.
2
2003-06-032 000005
------------------
From:
Sent:
To: ; Thornton, Sean
Subject:
. Ohwell ....
Following this pi
I (b)(5) I
-Matthew
From:
Sent: Fnday, December Ol,ili2IOOI6ili5:1i27.PM
htto://marketplace.publicradio.org/shows/2006/11 /30/PM200611305.html
TEXT OF STORY
KAJ RYSSDAL: We're not quite in the right season for 'em but Mojitos have set rum sales in the
U.S. on fire. It's second only to vodka in popularity. Which raises the stakes in a dispute between two
companies over the trademark of a legendary Cuban rum. From Marketplace Innovations Desk at North
.Carolina Public Radio, Janet Babin reports:
JANET BABIN: To understand the Cuban trademark war betweef.l two rum makers, it helps to have
NICK ROBINS: OK, let's see what we got here .... All right"
Duke visiting scholar Nick Robins got this aged Cuban sipping rum in Cuba, during one of his many visits.
It's caramel colored with an inviting taste, even for someone not to hard liquor in the afternoon.
ROBINS: "That's smooth, huh? And as they say, there's more where that came from.
But not much more, ifyou're an American. The U.S. imposed an e1.nbargo against Cuban goods decades ago,
and Florida recently announced plans to strengthen enforcement against offenders. And Robins says that's
part of Cuban rum's popularity- its forbidden taste is steeped in the island's culture:
Just who owns the real identity of Havana Club Rum in the U.S. market is what's behind the battle between
France-based Pernod-Ricard, its Cuban partner Cubaexport and Ba;cardi USA. Pernod has made Havana
Club Rum in Cuba for more than a decade, and sells it throughout the world.
Bacardi USA began selling its own v<;rsion of Havana Club Rum in Florida in August, after the U.S. Patent
and Trademark Office refused to renew Pemod's Havana Club trad;emark. Bacardi spokesman John Gomez
2003-06-032 000006
(b)(5)
says Bacardi bought the real Havana Club recipe and should get the trademark:
JOHN GOMEZ: Bacardi does own the rights to Havana Club. Bacardi purchased the rights in the
mid-90s from the Arechabalas family.
That family made the rum in Cuba from the 1930s to the 1960s, when it t1ed Fidel Castm's regime.
Intellectual property attorney Robert Muse has worked with Pernod in the past. He says the Patent Office
decision about Havana Club's trademark was based ori a congressiqnal provision passed in 1998. It prevents
the U.S. from honoring trademarks of businesses confiscated by the Cuban government.
Muse calls it the Bacardi law:
ROBERT MUSE: It has no support. It's an egregious examp!e1 of special-interest legislation by a
non-U.S. company to procure an anticompetitive benefit in a ru:m competition.
Tyson Chicken to Wrigley's gum. Muse says this could weaken enforcement for .those companies.
MUSE: Cuba under international law is now free to invalidate\ cease registering, or take any other
actions against U.S. trademarks.
Bacardi doesn't have and doesn't need a trademark to sell Havana Club in the U.S. But it could run into
another kind oflegal trouble. While Pemod's rum is made in Gomez says Bacardi's ...
GOMEZ: .. . It's, uh, made in Puerto Rico.
But it's called Havana Club. That could lead consumers to believe they're buying Cuban rum. Cardozo law
professor Justin Hughes says it's illegal to market a product that's E?eographically misleading:
JUSTIN HUGHES: Havana Club on a product that is rum not from Cuba, rum from the Dominican
Republic, or rum from Jamaica might be deceptive.
But Bacardi spokesman Gomez says consumers are smarter than tlilat:
GOMEZ: We really give our consumers a lot of credit for being able to read the label and see that
it's very obvious that it comes from Puerto Rico.
Pernod has filed a federal lawsuit against Bacardi for allegedly misleading consumers about where its rum is
.
According to the Distilled Spirits Council, rum brought in almost$ 1..8 billion in 2005, up 5.5 percent over
the year before. Bacardi continues to sell Havana Club in Florida, ,and is considering selling it in other states
too.
In Durham, N01ih Carolina, I'm Janet Babin for Marketplace.
2
2003-06-032 000007
'
' - ~ - - - - - - - - - - - - - - - - - - - -
From:
Sent:
-1
http://marketplace.publicradio.org/shows/2006/11/30/PM200611305.html
TEXT OF STORY
KAI RYSSDAL: We're not quite in the right season for 'em anymore, but Mojitos have set rum sales in the
U.S. on fire. It's second only to vodka in popularity. Which raises the stakes in a dispute between two companies
over the trademark of a legendary Cuban rum. From the Marketplace Innovations Desk at North Carolina Public
Radio, Janet Babin reports:
JANET BABIN: To understand the Cuban trademark war between two rum makers, it helps to have experience
with the stuff. Preferably, the good stutf.
Duke visiting scholar Nick Robins got this aged Cuban sipping rum in Cuba, during one of his many visits. It's
' caramel colored with an inviting taste, even for someone not used to hard liquor in the afternoon.
But not much more, if you're an American. The U.S. imposed an embargo against Cuban goods decades ago,
and Florida recently announced plans to strengthen enforcement against offenders. And Robins says that's part
ofCuban rum's popularity- its forbidden taste is steeped in the island's culture:
ROBINS: The way we are into our beer or our football, the Cubans are into their rum and their baseball.
It is part of the identity.
France-based Pernod-Ricard, its Cuban partner Cubaexport and Bacardi USA. Pernod has made Havana Club
Rum in Cuba tor more than a decade, and sells it throughout the world ..
Bacardi USA began selling its own version of Havana Club Rum in Florida in August, after the U.S. Patent and
Trademark Oftice refused to renew Pernod's Havana Club trademark. Bacardi spokesman John Gomez says
Bacardi bought the real Havana Club recipe and should get the trademark:
JOHN GOMEZ: Bacardi does own the rights to Havana Club. Baeardi purchased the rights in the
mid-90s tiom the Arechabalas family.
That family made the rum in Cuba from the 1930s to the 1960s, when i.t tled Fidel Castro's regime. Intellectual
property attorney Robert Muse has worked with Pernod in the past. He says the Patent Oftice decision about
Havana Club's trademark was based on a congressional provision passed in 1998. It prevents the U.S. from
honoring trademarks of businesses confiscated by the Cuban government.
2003-06-032 000008
ROBERT MUSE: It has no support. It's an egregious example of special-interest legislation by a non-
U.S. company to procure an anticompetitive benefit in a rum competition.
Muse says the Patent Office decision could threaten the trademark staqility of hundreds of U.S. products sold
overseas. Despite the embargo, some 300 U.S. brands have the right to sell products in Cuba, from Tyson
Chicken to Wrigley's gum. Muse says this could weaken brand enforcement for those companies.
MUSE: Cuba under international law is now free to invalidate, cease registering, or take any other
actions against U.S.
Bacardi doesn't have and doesn't need a trademark to sell Havana Club in the U.S. But it could run into another
kind of legal trouble. While Pernod's rum is made in Cuba. Gomez says Bacardi's ...
professor Justin Hughes says it's illegal to market a product that's geographically misleading:
JUSTJN HUGHES: Havana Club on a product that is rum not from Cuba, rum from the Dominican
GOMEZ: We really give our consumers a lot of credit for being able to read the label and see that it's
very obvious that it comes from Puerto Rico.
made.
According to the Distilled Spirits Council, rum brought in almost $1.8 billion in 2005, up 5.5 percent over the
year before. Bacardi continues to sell Havana Club in Florida, and is cqnsidering selling it in other states too.
In Durham, North Carolina, I'm Janet Babin for Marketplace.
2
2003-06-032 000009
l l l l l l l l l l l ~ ~ ~ ~ ( ~ b ) ~ ( 6 ) ~ 1 ~ - - - - - - - - - - - - - - ~ - - - - - - - - - - - - - - - - - -
Sent:
To:
Subject:
Wednesday, July 26, 2006 7:36PM
Canter, Virginia; McBrien, Bob; Farrow, Liz;
Re: Havana Club
From: Canter, Virginia
To: Thornton, Sean; McBrien, Bob; Farrow, Liz;
Sent: Wed Jul 26 19:08:16 2006
Subject: Re: Havana Club
Sent from my BlackBerry Wireless Handheld
To: McBrien, Bob; Canter, Virginia; Farrow, Liz;
' Sent: Wed Jul 26 19:03:15 2006
Subject: Havana Club
Thanks,
Sean
2003-06-032 000010
(b )(6)
I (b)(6) I
------------!----------
Sent: . Jul 14 2006 5:53 PM
To:
Cc: Farrow, Liz; Hammerle, Barbara; Canter, Virginia
Subject:
Attachments: 6-22-2006 Havana Club Memo to GC With
-
The Havana Club matter likely will get hot while I am on leave. As you know, Cubaexport's registration of the Havana
Club mark technically expires if it is not renewed by July 27. Cubaexport has a license to seek renewal of its mark pending
with OFAC, which OFAC has forwarded to State for policy guidance (and has not yet heard back from State). I have
attached below the documents (which I know you have already reviewed) for your reference.
You should know that--of King & has bee[l trying to organize a meeting between
Bacardi's General and/or Sean weeks now. So
natured about it. Bacardi met with State last week, so any ideas I may have had about
Tom has your and Sean's name and the main office He may
time, I don't think it would hurt to meet with him.
Here are afl the agency contacts and phone numbers you may need:
USTR ---(can't find is number; Barbara may have it)
NSC (legal) --
NSC (policy) --
Have fun.
-Matthew

6-22-2006 Havana
Club Memo to ...
2003-06-032 000011
sometimes his phone doesn't work)
I (b)(s) I
;.''=
DRAFT
MEMORANDUM FOR: ARNOLD I. HAVENS
GE"l'\ERAL COUNSEL
FRO!\!: Tuchband
Deputy Chief Counsel (ForLign Assets Control)
DATE: June 22, 2006
RE HavaHa Club Trademark .Matter and Request
Action forcing event.: The General Counsel of Bacardi, through
-of King & Spaulding, has requested a meeting \Vi you and 's Acting
Director to argue for denial of a pending licei1sc request by Cunacxport to renew its C.S.
registration ofthc Havana Club trademark (the ''HC mark") a! thc U.S. Pattnt and Trademark
Office (the "PTO"). The license request (Attachment 1) was str.bmitted on April 7, 1006, and
forwarded to State !or policy guidance on t'vlay 15. OFAC is sti,l\ awaiting State's guiJance.
Unless Cubexport's trademark registration is renewed or the PT:O takes other action to protect
the registration, it will expire this coming July 27.
Ahl?reyiatt::d
1
Prior to the Cuban the Arcchabala family in Cuba
owned the U.S. registration for the HC rnark. The Castro Govemment expropriated the
Arechabalas' assets in the early 1960s. After the Arechabala's U.S. registration expired in the
1970s, Cubaexport, a Cuban entity, obta:ined its own U.S. registration for
the HC mark via 515.527 of the Cuban Assets Control Rcgula:rions (the "CACR"), which at
that time authorized by general license the registration and renewal in the PTO of all Cuban-
owned trademarks. Cul:n'lc:q)ort has produced Havana Club rum since the 1970s and it is now
well regarded throughout the world.
Bacardi became interested in the HC mark and purchasea any remaining rights that the
had in the HC mark in the 1990s. Bacardi unsucd:ssfully pursued action in tile
PTO to get Cubaexport.'s HC mark registration cancdled. Bacajdi is Cli!Tently appealing the
PTO's decision in Federal distr.icl court. In 1998, .Bacardi obtained legislation-
Section 11 J ofrhe Omnibus Appropriations Ac! for F\' 1999 (AHachmcnt 2) --which in
part 515.527 orLl1e CACR cannot he used to n.:gistcr or any tradernark associated
1vith assets that were confiscated h:y the Govcmmcnt of Cuba urvl.ess authorization is obt:Jincd
/'iorn (he- origind OV>'nzr rnnrk or it:s succc'cSSLltio-inkrcst. Sec.li.on 2 J l 011 its face only
prccJu{k:.o:.\ atHhlYfiZ::l{iO!'l (J.f \/i.tl
conLtinec!. in r? 5! 5.52 7 Or.'

it. i1C'l ()f:;\.(.' th)!r1 ;;v.!tho!izin_r( a vi-H .":J spf;c{Oc
' The h!C murk Lk.pute 'pans r>vcr 45 years and tS high:iy C(Jt1tpl8x. ,A_ ttHtch i'ltt:>rc: cktaikd, yd sn
1
l ;,bndgcd.
b<ttkgrounJ is att:l('hcd rur your t:(:lcn ..nn (i\ttaclm1i':nl 5).
2003-06-032 000012
,,
DRAFT
Cubacxport's registration of the HC mark is now due lo pc n::ncwcd. Cubaexport applied
to the PTO for rene,val in December 2005 without tirst reque.stiQg an appropriate OFAC specific
license .. Cubacxport argued that its renewal activities were authot:ized by an existing )ic.:;cnse .
issued to its counsel for a-ctivities related to defending the litigation
nicntioncdabove. OFAC subsequently informed Cubaexport and the PTO that Cubaexpoti's
existing specific license docs not cover renewal <'lctivitics. Cubaexport then submitted to OFAC
the pending request for a specific license to renew the r.cgi
2
2003-06-032 000013
(b)(5)
- - ~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
r - - - ~ ~ ~ ~ ~ ~ - - - - ~ ~ ~ ~ - - ~ ~ ~ ~ - - - .
Withheld in full pursuant to FOIA Exemption (b)(5)
DRAFT
3
2003-06-032 000014
Attachment 1
2003-06-032 000015
..:c .. __ :
'1/INCENTN. J>.ALJ..ACIHC
OIAECl DIAl,, ll,:l',S86.9070
Oll'IE:qT FAX 646.7:2S.26'7'!
E-MAil. VINCENT .PALI.ADJN<)GAOPESGRA:,. -COM
April 7, 2006
VJA BY FEDEX
. Office of Foreign Assets C<:mtrol
U.S. Department ofTre.asury
1500 Pennsylvania Avenue, N.\V. Annex
At1n: Licensing Division
License To Pav HAVANA CLUB Registration Renewal Fet' .
Dear Sir/Madam;
This lener j_s prompted by Ms. Barbara C. Hammerle)s April 6, 2006Jetter (copy
enclosed).
Ropes & Gray was granted License No. Cl.Jw744S8" authorizing it to receive payment
for serv:ices rendered and expenses incurred in connection with representing Cubaexport jn a
dispute wlth Bacardi regarding among other issues cancellatjon ofCubae:xport's United States
Registration No. l ,031,651 of HAVANA CLUB & Design ("the HAVANA CLUB Registration").
Ropes & Gray interpreted tha1license 10 authorize it to incur the expense ofrene,ving the
HAVANA CLUB Registration, whkh is at issue in the litigation, by paying the United States
Pate.nt and Trademark Office (''PTO'') registration renev.al filing fee and to receive payment for
that expense.
r_.:/1,<,.

1
i;l_"f""\,(:-\r .:: .. L
?"';("';i Q .,,., r-r.

, ,JI.,.. , . J-. .. \ . , ....... -.. .. i.l/, .. \..' /,, rCU ,.Jt.._..,_..,,., JJ.)t. l:.c!-.. U.;
&. CJra_y to }Dtfl! Gnd payrnt:::rn for thr: regjstrath:n;;. Tiv.:
inii}tes H.opes & Gray 10 sec:k e1 license aur."hmi:z.lng Ropes & Ciray do so. & Gray
respectfully requests '\.hat :=:uch a l.ic:ense 'oe granted.
tl t ... ,.,_
1
,. .... , r I. f
1
.,/AtllltA 1 . l'lt'l. II\ 11 , l .. a,. t' .. L1 . , . I' AT ra.ltAa& WMUAW I'IJI'I * .. ... AlA. II- .... Ia I -I A &I 1., - .I-""' 11"1
2003-06-032 000016
ROPES & GRAY l..l.P
Office ofForeign Assets Control
April 7, 2006
Page 2
Ropes & Gray respectfully submits that in light of OF AC's willingness to grant
License No. CU-74488, authorizing payment for large legal and other expenses incurred on
Cubaexport's behalf in maintaining the HAY ANA CLUB it would be reasonable 10
authorize Ropes & Gray to incur and be paid for the mjnor expense :($500 or less) of maintaining
the registration through payment of the renewal fee.
In addition, Ro:pes & Gray submits that the grant of this further limited Jicenseis
reasonable in light of the following reasoru; discussed in our Decem,ber 13, 2005 lener (Mpy
enclosed) and summarized in Ms. Hanunerle's letter:
(1) paying the fee is necessary to maintain the sraws quo by majntaining the
.HA. VAi\!A CLl.J/3 trademark registration, (2) failure to pay the fee will result in
cancellation of the registration, (3) iflhe regis1ra1ion is not 'maimained, !he
District Court will be an opportunity to reach a reasoned decision in the
pending litigation, and (4) faj}ure to maintain the registratiop wilJ effectively
overrule the decision of the United States Trademark Trial And Appeal Board
while it is on appeal.
As we stated in our December 13, 2005 letter, we believe that "outcome would be and would be
perceived 10 be unfair." Although we appreciate that OF AC has detennined reasorls do not
support payment of the renewal fee under License No. CU-7 4488, we believe they offer further
support for the grant of the. addjtionallim)ted license Ropes & Gray hereby requests.
fjna11y, Ropes & Gray wishes to point out that the HAVANA CLUB
Registration i1 would otherwise expire on July 27, 2006 does not mean the Coun hearing rhe
Jidgatioo \Vill affinn the PTO's Trademark Trial and Appeal Board that the HAVANA
CLUB Registration should not be can'celled. That issue wiJJ remain 1o be resolved by the Coun,
along with Bacardi's additional claims for and injunctiye relief.
If the additional license is granted mmc pro tunc to December 13,2005 when Ropes
& Gray submitted Cubae:xport's renewal application, the renewal fee will be $400. If the additional
license is not granted mmc pto tunc, tbe fee will,be S500.
2003-06-032 000017
l
ROPES & GRAY LL.P
Offic.e of foreign Assets Control
April 7, 2006
Page 3
Because the renewal period for the HAVANA CLUB Registration will expire on
July 2 7, 2006, Ropes & Gray respectfully requests that any new license be issued \Veil before that
date so 1.hat the PTO may be so advised. We appreciate OFAC's to this matter and
respectfully request that the additionaJJjcense be gramed.
VNP:emf
Enclosure
cc: Coml1Ussioner for Trademarks
Sjncerely yours,
77--7
Vincent N. PaiJ<!dino
Tu9hband, Esq., Office ofLegal Counsel, OFAC
Liz Farrow, OFAC
(each via facsimile and FedEx)
.._
111111
f ,. "' .... , ... I- 1 1-.IA,. .... J ... fl. lA t., 4 .. , , .,I,/ 4 111111,0 tA A 111111111111>111111 """" .. lu I\""' All. A# ... .l. ...... , ...... I H <,., .,
2003-06-032 000018
....... " '"'
DEPARTMENlOFTHETREASURY
WASHINGTON, D.C. ;202.20
F AC No. CU-268932
Vincent N. Palladino
Ropes & Gl1ly LLP
125 t Avenue Americas
New York, NY 1 0020r 1104
Rc: Lic.ense No. 74.:!88
Dear Mr: Palli1dino; .
APR 6 2COc
The: purpot;e ofthis letter is to that License No. CU-74488, issued by the
Office of Foreign Assets Control ("OFAC"}on Murch 4) 2005, not authorize Ropes
& Gray LLP to pay a ftling fcc to the U.S. Patent and Trademark Office ("PTO") for
renewal of Registration No.1,031,651 (the "HAVANA CLUB on behalf of
Empresa Cubana Exportadora de Alimentos y Productos Varios dip/a Cubaexpon
("Cub<}exporr''), In a December I 3, 2006, letter to PTO, Ropes & Gray LLP applied for
renewa 1 ()f the HAVANA CLUB trademark and requested that PTO deduct the filing fee
from a Ropes & Otay l..LP deposit account, arguing that License No. CU-74488
authorizes payment ofthe filing fee.
License No. CU-74488 pertains to a canceHation proceeding. lt states that it is
issued "Furruant to an application dated January 26, 2005." The a:uthorization section of
Licen:se No. 74488. quoted in full (with emphasi,s added), states:
All transactions are authoriied to enable the Ucens:ee [Ropes &
Gray LLP), in connection [w.ith] the legal represtntation of
Empresa Cubana Exportadorn de Alimentos y Prod;ucros Varios
("Cubaexpon'), trnd Havana Club Holdings S.A. in legal
proceedings in the United States relaled to the HAVANA CLUB
trademark, as in the applico(fon, to recei:ve payment for
soch services and reimbursement for related to such
services from Cuban nationals through banking provided
the funds are routed from Cuba to tbe United States via a third*
country bank.
The. only legal proceeding described in yol.lr film's January 26, 20:05 application was "a
et::impl<!int f1 curre,Jtly p'.mding in the U.S. Di.'rtric:t C.)!Jt1 :for rbe District cfCohl:rnbi;;.
1enTs (:ubae:x.port and (::lub Ho Jd1ngs S .. .. tTb cou1pluinr Js a!1
f.tcr:n Or fJ prcce.ed\ng be.iDre tbe lJ:njted
Tr<idemark Trial aml Boanj t;onc.:;:m1ng the BAVAN.'\ CLUB
In you:r \etler to PTO dated Dc-:ce.mber J 3, :?005, you prese(lr 2. flUrnber of
arguments .vh)' the: renc,\a) for the HAVANA CLUB rrademark should be a-llowed to
..... ,. ,., "'"' '"' I.,; ..... 1 ... 1\oto#> I I """ .... J L : .. t.l .. AI o,t/Jil .......... ,l "''""' .. l.ftjllt.I\'"IAI'IA,.., .. olll .. l ..... -. 1 -' ., ..... /., ..
2003-06-032 000019
, .,..,.. "'' """" ' v W,l
be paid, including the following; (1) paying the fee is necessary maintain the status
quo b)' main1aining tht HAVANA CLUB trademark rt.gistration,: (2) failure to p.ay th(,
fee will result In Cilnce11ation of the reeistr:ation, (3) iflhe regis1ration is not mQintaincd,
tbe Di:)tricl Coun will be denied an opportunity 10 reach a reasoned decision in the
pending litigation, and (4) failure to maintain !he registration wiq effectively ovem.Jle the
dec is jon the United States Trademark Trial and Appca'l Board .while it is on appeal.
These argumentS do not extend the lirnite,cJ authorization contained irt Licen-se No. C1J-
i448g, which covers only those transactions in connection wi1h the pending District
Coun litigation, to those transactions lhat are external to the pen4ing District Collrt
litigation, such as the payment of a renewal fee. 1o initiote n action before the
PTO. .
ln your letter ofDeccmber 13,2005, you also argue that the failure of the District
Court to reach a reasoned cledsion, which will result from the failure to pay the
trademark registration renewal fee, will deprive Cub3export of th,e representation that
OFAC has authorized Ropes & Gray LLP to provide. We with that argument ..
In issuing. License No. 74488, OFAC authorized Ropes & Gray LLP to engage in
transactions necessary to provide Cubaexport representation only in the litigation pending
before tbc Distric.t Court. OF AC is not in a position to gauge the to which any
other .adminisrrative or judicial proceedings may have some effec:;t on that litigation, and;
in any event, License No. CU-74488 does not purpo11 10 autbor.iz;e any transactions
related tO Sl,lch other proceedings.
We note that this discuss;on does not in any way prejud1ce the ability of Ropes &
Gray LLP to request authoriution from OF AC to engag;e in transactions related
to the renewal ofthe HAVANA CLUB trademark Iegistration a! the PTCi. lfyou whh to
request such a specific license or further guidance from OFAC, you may do so by writing
directly to OFAC's Licensing Division. Should you .bave any fUrther questions, please
contact the Deputy Chief Counsel (Foreign Assets Control) at 20:2-622-1410.
Sincerely,
Barbarn C. Hammerle
Acting Direcwr
Office of Foreign Assets Cqnuol
cc: Commissioner for Trademarks, PTO
,.,,.. .. Alia I- I'""'"""' ..... "" .. ,... '"" I .I,, ... a,, .1! ,,1,; , ,I .. Ai <a,f , ........ --\J ""'"" 4 atiiA, 1\ ............. , .. ,j,. .. a rat. ao U 1 1411 1,
2003-06-032 000020
FISH & NEAVE IP GROUP
ROPES & uAAY LL,.
.AVENVt: OF THE AME!iiCAS NEW YORK. f\.'\' ':O:.;;c ..
F 2125'<6.9<J90
BOSTON 1\!EW 'I'ORI< PALO ALTO S.AN OC
VINC91't N. PP-UAP ... a
DII'IECI OIAl.
DIRECT FAX 6.<lti.728.2671
EMAIL VINCE.NT.PAU.AOINOCROPESGAAY.COM
VJ.A FEDEX
Mr. David W. Mills
Chief of Licensing
U.S. Department ofTreasury
of Foreign Control
1500 Pennsylvania Office, N.W.
Dear Mr. M:ills:
December I 3 . 2005
We are enclosing il copy of ow December 13, 2005 lenr addressed to the
Commissioner foi Trademarks in connection with an applkat1on filed by Empresa Cubana
Exportadora de Alirnentos y Productos Varios d/b/a Cubaexpcrt ("Cub:aexport") to renewUnhed
SUites Trademark Registration No. f ,031,651 of the HAVANA CLUB.& Design trademark and the
attachments to that letter.
On behalf of our <=Hem Cubaexport, Ropes & Gray has prepared the renewal
application and UJ1deriaken to pay the filing fee that is required in to maintain the registration
and intends to recover those expenses from Cubae:xpcrt. Ropes & Gray has taken these steps
pursuant to License No. CU '74488, which Ropes & Gray understands authorizes the firm to
represent Cubaexpon in all matters related to legal proceedings concein.ing the HAVANA CLUB
trademark, including Bacardi & Company Dmited v. Cubaexpon and, Havana Club Holding. l :04
CV-00519 (EGS) (D.D.C. 2004) {the and lobe paid for the services it renders and
expenses it incurs m the course of that representation. In the Litigation, Bacardi & Company
Limited ("Bacardi'') has appealed a decision of the Trademarks TriaJ a,nd .-'\ppeal Board (the
.. Board") and requested cancellation of Registration No. 1
0
03 J ,651.
,.,, '] ' r ' ' r< b ' i '
.y ri..1 e- me l, .. ft1g1!1.>on 1S OnJi!Omg, ,,_n:..at::>:po:n se:e:.Ks 1.o u.e status qv.o by
Nt.J .. 1 ";03 J ,.65 1 C otvi ce:n decjde 1J1e .Doa:n:F s decisio.n.
= - .
should be aft!rmed o;r .re\'ersed ;;; .. nd the rf'Htinl.aji;t:d (t:r cann;JlecL Given tJ1e C'I.Uren1
posture of ihe Litigation, rio final tmappealabk decisfon 0n 1 issues .;vill' bt re11ck!r-ed before
Registration No. J ,0.31,651 rm.1S1 be renewed.
t A .... / ... AI r 1- f , .. '""A"" 1 .A. I"' I at iw., J ,,, .... .. ! .... _.,AI IIAA ""'"' I .... lila A"''AI't"' ,..., ... , .. ,,.I .1 .. 1f '
2003-06-032 000021
ROPES & GRAY LLP
Mr. David w. Mms
December 13, 2005
Page 2
lfRegjstration No. 1,031 ,651 is .not maintained, the Colirt. will be denied an
opportunity to reach a reasoned decision as to whether the registration should be caneelled, as
Bacardi claims, or whetheJ: the Board correctly dismissed Eacardi's cancellation petition, as
. Cuba export contends. That Vl'iJl, moreover, deprive Cubaexport of the representation Ropes &
Gray has been authorized to provide by cancelling the regist;ration befo,re the Court can
whether it should be cance]]ed or maintained.
That outcome would be and wo1.1ld be perceived to be unfa:ir. The Board has
detennined thatthe registration was properly mruntainerl in 1996 and tfuat Bacardi failed to plead
any legal basis for cancelling the registration in its cancellation proceeding. In Bacardi's appeal of
that ruling, the Court h3S ordered Cubaexpon and its HCH to file renewed motions to.
dismiss the Complaint, and the parties are currently engaged in Coun ejtdererl djscovery concerning
motions. Effecti\,ely ove:rru)ing the Board's decis:ion while it is qn appeal to the Court by
declinjng to maintain the status quo wo1.1ld be :inappropriate. On the hand, if the registration is
rnajntained during the Utigation, the Court remains free to decide whether the decision should be
affinned or reversed. '
Paying the renewal fee wj]J not dictate the outcome of the Litigation, but failing to
pay it might. 1fRopes & Gray were deemed not authorized under the License (or otherwise) to
incur on Cubaexport's behalf the expense of renewing Registratiol) No.! 1 ,031,651 in the course of
its authorized representation of Cubaexport, Ropes & Gray Wollld be to provide Cubae:xport
effective represen1ation, and Cubaexport would be denied effective representation, 1n COJmectiou
with the Litigation (which has been commenced by Bacardi), and the Court would. be denied the
opportunlty to dedde whether or not the registration should or should not be maintained.
To avoid that unfair result, to meet its ongoing obligat]on to represent its client, and
to affirm the Court's trad)tional authority to decide cru;es pending befot:e it, Ropes & Gray on behalf
ofCubae:xport has relied on License No. CU i4488 1o maintain the staius quo until a decision in the
Litigation is rendered by the Court or by any court to which such a deds:ion may finally be
appealed.
2003-06-032 000022
ROPES & GRAY LLP
Mr. David W. Mills
December 13,2005
Page 3
., ..... r 1
We appreciate this office's continued attention to this ,inaner. If we can be of further
ass:is1ance, please do hesitate to call me. -
Vl\TP:emf
Enclosures
Sincerely,
'

Matthew Tuchband, Office of Legal Counsel, OF AC (encl.) ,
Clara David, DiYision. OFAC (encl.)
Cotrunissioner for Trademarks
.. ' ...... """"'" ... , ,_ '- 1 ,,.,,.,.. .._ "l "''"' r. .. J' ' 1 ,., 1 1 ,,.. r 1 .. ........ u.- A! ... .,,. .._,.I\,.., P "- AI At. .. ,, ... , IIIlA r ..
2003-06-032 000023
Attachment 2
'
2003-06-032 000024'
Section 211 of the Omnibus Appropriations Act for FY 1999
. I
Sec. 211. (a)( I) Notwithstanding any other provision of la\v, no transaction or pa;1ncnt shall
be authorized or approved pursuant to section 515.527 oft.it!c 3:1, Code
Regulations, as in effect on September 9, 1998, with respect to ';1mark, trade name, or
commercial name that is the same as or substantially similar to 'a mark, trade name, or
commercial name that \Vas used in connection with a business q)r assets that weTe confiscated
unless the original owner orthe mark, trade name, or commercial name, or the bona fide
successor-in-interest has consented.
(2) No U.S. court shall recognize, enforce or otherwise valicla'te any assertion ofrights by a
designated national based on common law rights or rcgistratimi obtained under such section
515.527 of such n co.nfiscat:.:d mark, trade name, or commercial name.
(b) No U.S. court shall recognize, enforce or otherwise valida;tc any assertion of treaty rights
by a dr.:signated national or its successor-in-interest under
44 (b) or (c) of the

Trademark Act of 1946 <>:J2l> ( 15 U.S.C. I I 26 (b) or (e)) for a mark, trade name, or
commercial name that is the as or substantially similar tQ a mark, trade name, or
commercial name that was used in connection with a busi.llcss or assets thal were confiscated
unless the original mvner of such mark . trade naine, or name, or the bona fide
successor-in-interest has expressly conscntt:d.
(c) The Secretary of the Treasury shall promulgate such rules: and regulations as are
necessary to caiTY out the provisions of this section.
(d) In this section:
(l) The tenn designated national" has the meaning given tcmt in 515.305 of title
31, Code of Federal Regulations, as in effect on September 9, 1.998, and includes a national of
any foreign country who is a successor-in-interest to a designared national.
(2) The tenn contiscatcd" has the meaning given such term in section 515.336 of title 31,
Code of Federal Regulations, as in effect on September 9, Jl)9$.
2003-06-032 000025
Attachtnent 3
2003-06-032 000026
C 0 vl N G T 0 N & 8 U R L.l N G
PENNSYLVANIA AVENUE NW WASHINGTON
WASHINGTON, DC NEW YORK
TEL 202. ee2.6000 SAN FRANCISCO
FAX LONDON
WWW.COV.COM 6RUSSELS
9 May 2006
VI.,\ FACSIMIL.E-CO!'\FIRMATION VJ..\ FEDEX
Office of Foreign Assets Control
U.S. Department: of Treasury
1500 Pennsylvania Avenue, N.W.- Annex
\Vushington, D.C. 20220
Attn: Licensing Division
OSC..,R M. GARIBALDI
TEL 202 B62. !58:2
FAX 202. 778.502 ..
OGARIBALOI 0 COV.COM
Re: License To Pay HAVANA CLUB Renewal Fee
Dear Sir or Madam:
We are wriring on behalf of Bacardi & Company. Limited anJ. Bacardi U.S.A.,
Inc. in opposition to the April 7, 2006 letter of Vincent i'i Palladirw, Esq., of Ropes &
Gray, requesting a license to incur and receiv'c payment! for the expense of renewing
Registration No. l ,031,651 of HAVANA CLUB & ("the HAVANA CLUB
Registration"). Ropes & Gray is counsel to Empresa Cubana Exportadora de Aiimentos
y Productos Varios d/b/a Cubaexport ("Cubaexport"), the purported registrant of the
HAY ANA CLUB Registration. The transaction for which
1
the license is sought would be
perfom1ed on behalf and for the benefit ofCubaexport.
Mr. Palladino's letter responds to the April 6;, 2006 letter of Barbara C.
Hammerle, Acting Director of OFAC, in which OFAC detcnnined that License No. CU-
74488 did not authorize Ropes & Gray to pay a filing fee to the U.S, Patent and
Trademark Office ("PTO'') to renew the HAVANA CL,lJB Registration on behalf of
Cubuex.port. Tn light of that determination, Mr. Palladtno requests that OFAC grant
Ropes & Gray an addition<il license pem1itting it to pay the renewal fee prior to July 27,
2006, the expiration of the grace period for rene\val.
We submit lhat OFAC should refuse to issue any license authorizing of
the HAVANA CLUB Registration on behalf or for the benefit u f Cubaexport ot any
pa;1ncnt or transaction related to any such renc\val. In circumstances of this case,
<:ny r:c.new al of the !fA V A. CLL:B Regist::ation on bc;ilal f O!' for th,:: benefit. of
.. dd cont.rad.ic.t th.i.:: nnderlJ:'ing ihe and the long ...
stand.!ng ;."Jf internationa-l and l..i.S. public t.h.nt den_y ro
el.au.ns of t:;.ti:::-; to t/.S. {)Topcrty based (JLJ. CiJnf:lsci:iro,ry princi-ples
are nO\V coddi.:::d in of Cuba in S;;;cti.on 2! l 0C tbe Omm.bus ConsoLidated and
Emergency Supplcmt'ntal }\ppropriations Acr. of' i999, Pub. L. No. 105-277, 112 Stat.
2003-06-032 000027
I
CoviNGTON'& BURLING
9 .May 2006
Page T\vo
2681 (1998) (hereafter "Section 21 i '') and Section 515.527 qf the Cuban Assets Control
Regulations ("CACRs"), 31 C.F.R. 515.527.
Section 5.15.527 of the CACRs, as amended pursuant to Section 211 and currently
in effect, provides as tollmvs:
"(a)( 1) Transactions related to the registration and renewal in the United
States Paient and Trademark Office or the United Sdtes Copyright Of11ce
of patents, trademarks, and copyrights in which the Govemment of Cuba
or a Cuban national has an interest are authorized.
(2) No transaction or payment is authorized or approved pursuant to
paragraph (a)(1) of this. section with respect to a mark, trade name, or
commercial name that is the same as or substantia{ly similar to a mark,
trade name, or commercial name that was uscJ in connection with a
business or assets that were confiscated .. as thai term is defined in
515.336, unless the original owner of the. mark, trade name, or
commercial name, or the bonit fide SL!Ccessor-in-1nterest has expressly
consented." 31 C.F.R. 515.527.
The renewal of the HA V fu'\fA CUJB Registration falls squarely within the
prohibition set out in paragraph (a)(2) above. First, the purported registrant being
Cubaexport, an aget)cy of the <;:ubUJ! Govenm1cnt, the HA.VANA CLUB Registration is
property in which the Gowmment of Cuba has an inte{est. 5'ecolld, the HAVANA
CLUB mark registered in the United States is identical to the HAVANA CLUB mark that
was used (and ownecl) by Jose A.rechcbala, S.A. ("JASA'!) ifil connection with its rum-
making business in Cuba. Third, that busiucss and all related assets (including the
HAVANA CLUB tradcmark) were confiscated in 1960 by:the Cuban government within
the meaning of 31 C.F.R. 515.336. In Havana Club Holding, S.A. v. Galleon, SA., 203
F.3d 116 (2d Cir. 2000), the Second Circuit found that the Cuban revolution,
Jose Arechebala, S.A., a Cuban corporation O\.vncd r-Gncipally by members of
Arecheba!a family, produced 'Havana Club' rum and o,wned the trademark 'Havana
Club' for usc \Vith its nun. JASA exp0rted its mm to the United Shllcs until I 960, when
the Cuban govt.:mment, under the k:adership of Fidel Castro, seized and expropriated
J ASA 's .assets. 1\ci titer J ASA nor its owners ever rccei vqd compensation for the seized
assets from the Cuban government." 203 F. 3d at 1 t 9-201. Fourth, Bacardi is the hona
j!tie succt:ssor-in-intc.:rest co s.1.l of . .Sr\ }s rigi1ts in. the {;\\/ .... . .:.\. c;L ... tJB traderna:rk.
n<tr J_/;.,.S/\. hat: .-:-:."t;r tiJf to the. of
the. f-1:.'\ V'/:,_1'-J/\ c:::t.T..TE) by Gr \)n hehatf of C\1b::i:export.
2003-06-032 000028
CoviNGTON & BuRL.ING
.9 May 2006
Page Three
I
While OFAC has broad discretion to grant or tJeny specific licenses under lhe
CACRs, no case has been made by Cubaexport why OFAC fihould disregard Section 21 1
and the long standing policy of tht.! United against giving exterritorial effect to
claims of title to U.S. intellectual property on the basis of a fbrcign confiscatoty nieasure.
See, e.g., Carl Zeiss Stiftung v. VE.B. Carl Zeiss, Jena, .293 F. Supp. 892, 916 (S.D.N. Y.
1968) ajJ'd in pertinent part, 433 F.2d 686 (2d Cir. 1970), cert. denied; 403 U.S. 905
(1971). The same reasons that exclude cases like the present one from the generic license
of Section 515.527(a)(l) of the CACRs compel denial of a specific license. further, the
Congressional policy in this regard is made abundantly: clear not only in Section
2ll(a)(l), which underlies the amended Section 515.527 of the CACRs, but also in
Section 211 (a)(2), which provides as follows:
"No l).S. court shall recognize, enforce or otherwise validate any assertion
of rights by a designated national base.d on COJT:ltnon law rights or
registration obtained under such sect'ion 515.527 0f such a confiscated
.mark, trade name or commercial name."
Cuhaexport and Havana Club Holding, S.A., have P,reviously sought an OFAC
license for a transfer of the same HAVANA CLUB Their request was
based on statements that falsely described the transactions w.hich were the subject of the
license sought. A license issued by OF AC in reliance of false statements was later
revoked retroactively to the date of issuance when OF\.\C became aware of the
misrepresentation. While Cubaexport and Havana Club fail to disclose the true
circumstances of the purported transfer of the U.S. HAY ANA CLUB mark to Havana
Club Holding, they cannot deny that the transactions involved the payment of
large sums of money to the Cuban government in exchange fqr U.S. property, in violation
of U.S. laws and regulations.
Mr. Palladino argues that License No. CU-74488 authorized 'payment fot large
fees and other incurred on Cubacxport's behalf in maintaining the HAVANA
CLUB Registration" and claims that it would. be reasonable to authorize the minor
expense of "maintaining the registration throngh payment 'of the fee.'' This
arguml.!nt, vvhich is deceptively presented as an argument a maiorc ad minus, fails for two
reasons. First, tlw petiiiont:r again misrepresents the extent ofLiccnse CU-7448B.
That license did not authorize payments incurred "in maintai(1ing" the HA v'AN,\ CLUB
Registration. As Ms. Hammerk's letter explained, LiGCI)SC No. CU-74488 mcrdy
autho;'i':r.cd 8!. C!-ru:f en.gage in trans&ctit)l1:; nece-.ssary to pnJ\ide c:crbac.xpcct
on l.Y _;_n thr_l before the; J)istri:ct .S'e:.'oncl., the
the r::-r1(:::vaJ ft.,(:.: lc not
the objec( ::rf the ticcnsc by P"opes :..?i. is a and dislincr
lrtU!Sf.JCfivn.. the: rropOSc..!d f'(;J.lC\Vt.d of.' the rcgistni.tion in 2006. Thv.t i1C\V'
2003-06-032 000029
(:OVINGTON & BURLING
9 May 2006
Page F0ur
transaction ha.s nothing to do with the fees and expenses incurred to defend Cubaexport in
the District Court action.
Mr. Palladino further argues that Ropes & Gray i:S merely trying to maintain the
stc1Ws quo by renewing the HAVANA CLUB Regjstraf\on pending a decision of the
District Court for the District of Columbia on the validity of the 1996 renewal of that
registration. The pending dispute on the validity o.f the 1996 renewal has nothing to do,
howev-er, with the proposed transaction for which a license is sought, i.e., the renewal of
the trademark in 2.006. The existing controversy on the 1996- renewal does not exempt
Cubaexport or its counsel from the existing laws and regulations applicable to further
renewals, nor does it justify ignoring fundamental U.S. public policies against pen11ittin,g
any such renewal in 2006.
Based on the foregoing, we respectfully request that OFAC deny Mr. Palladino's
April 7 application tor an additional license authorizing! Ropes & Gray to incur and
re9eive payment for the' expense of renewing the HA V'Al\.l'A CLUB Registration on
behalf of Cubaexport.
cc: Commissioner for Trademarks

/\ __ _,/ --:nr" : //) - (j
i /:: /)/! (l '/} If-.
- .. /. "Vl/ '; . ' . ' [lf{
Oscar. N. Garibaldi' 1
Attorney for Bacardi & Company
Limited & {lacardi ./.SA., Inc.
Mutthew Tuchband, Esq., Office of Legal Counsel, !DFAC
Elizabeth W. Farrow, OFAC
(Each Via Facsimile and FedEx)
2003-06-032 000030 '
'
Attachment 5
2003-06-032 000031
'
Abridged. Background of the Havana C::lub Matter
(through .hme 20, 2006)
1950's ... The Arcchabalas registerthc trademark: Before the Cuban revolution. the Arechabala
family in Cuba produced "Havana C!Lib" rum and registe-red the !ilav;ana Club trndemnrk in the
United States.
Early 1960)- Cuba expropriates the Arcchabala's Thy Cuban govemment
expropriated the Arcchabala family's assets in the early 1960s
1
ahd the Arcchabalas le.n Cuba.
1970's- Cubacxpgrt registers the trademark. fn the early 1970s, Cubacxport, a Cuban stale
enteqxisc, began exporting Havana Club rum from Cuba. In 1.97,3, the original term of Lhc
Arechabala's Havana Club trademark registration in the United States expired absent rencwal,
2
and Cubexport then obtained the U.S. registration of the Havana Club trademark in 1976.
1994-1995-- Cubaexport assig[ls the trademark to. HCH: OFAC liceJ1ses tbe tntpsfcr. In l994,
Cubacxport assigned worldwide rights to the Havana Club tradc111ark to Havana club Holdings
("HCH") a joint venture bct\vecn the Cuban Government (.th.rough a company Havana Club
International ("HCl")) and Pcmod Ricard, S.A. ("Pernod"), a company. The transfer of
the U.S. rights to the trademark, ho\vcvcr, required OFAC authorization. Upon application, in
1095 OFAC approved Cubaexpol1's request for a license qllthorizing the transfer ol'thc U.S.
rights to the Havana Club trademark frorn Cubaexport to HC!i.
1995 .... Bacardi uses the trademark and tiles a cancellation proceeding. Ln 1995, Bacardi's
predecessor-in-interest, Galleon S.A., began producing Havana lub rum in fhe Bahamas and
selling it in small amounts in the United States. Ultimately, Bacardi, owned by friends of the
no\v ivliami-hased Arcchabala family, purchased the Arechabala$' remaining rights ('if any) to
the U.S. Havana Club trademark (even though the Arcchabala 's trademark registration expired in
J 973). Also, in 1 !)95, Bacardi initiated-a proceeding in U.S. and Tr<Jdcmark Office (the
"PTO") to cancel HCH's rcgi.stration of the Havana Club trademark (the "Cancellation
based on fraud in obtaining the registration. The Cancellation Proceeding
continued until 2004 (see bclov,).
L?.9Q_- HCH the trademark rceistratiOtl. \Vhcn rhc U.S. (egistration of the Havana Cluh
trademark <:lpproached its expiration date. in 1996, HCH --!lQ\V the owner ofthc: trademark
registration pursuant to the Of'AC license issued in 1995 renewed the U.S. trademark
registration pursuant to 515.527 of the Cuban Assets Control Regulations (tht: ''Cr\CR""). /\t
that time. 5 I 5.527 authorized hy gt'ncral license the registration and n:newal in 1he PTO or all
Cuban-owned trademarks.
! A .. tho.; (o ct.:r>.!rred. rhc i.!i'.
1
(Jhr;::ci ln
rn.arrr rgtl('ti 'hGI. :hr;! Jle"./Cr !)scado11 o( the
:; .:\ltlttlugll rl1e I:l'8van:.t Ch:b \rackr:1Jrk u, h::n:e iws C:J:u!;
i!Ie,::ul ;tssl'IS should be Jn :tc:ceptabk c.xc.usc' lix 1hc: fjiiun': 10
llH.: ..tF;tdc!llark r(gislration and the rvgistr<:tion should he c:onsick.t:ed ICJ nt:vcr ;la\'e e;xpin:cl.
2003-06-032 000032
!996- lfCH sues to enjoin Bacardi 's use o[J.!J_(; trademark. In 19:96, HCH sued to enjoin
Bacardi from using the Havana Club trademark (the 'Trademark Usc Litigation"). The litigation
continued, in one form ur another, until 2000 (s.ec below). Over the course of the liti.gation,
Bacardi's defenses and counterclaims included variqus argurncnts that HCH was not the proper
owner of the trademark.
1997 - OFAC revokes the 1995 license authorizing the trademark transfer to HCH. In 1 <J97,
after receiving infonnation from Bacardi and after formal c0i1sult:ation \Vtth State, OFAC
revoked the 1995 license that authorized the transfer 0f the U.S. rights to the Havana Club
trademark from Cubaexport to HCH due to "facts and circumstan:ces that have come to the
attcnti911 ofthis Office which -,vcre not included in the of October 5, 1995.'' lt is
generally bel ievt:d that OF AC 's revocation was based on the .fai lt)re of the original application to
identify that the non-Cuban company Pernod was part of the newjoint venture that would ov,:n
the Havana Club trademark. OFAC's revocation was retroactive ito the date of the original
license grant and \Vas \Vithout prcjL1dice for the pm1ies to reapply. Shortly thereafter, HCH
n:applicd for the transfer, disclosing all pmiies in interest. OFAC referred this new license
request to the Department of State in 1997. As or .J unc 2006, State has yet to provide
OFAC any policy guidance. Accordingly, the application for an 9FAC li-cense authoi"izing
Cubaexport to transfer the U.S. rights to the Havana Club trademark to HCH. in 1995 is still
pending.
J Le!!islatioi1 containing Section 21 I is While the
1
frademark Use Litigation \Vas
pending, Bacardi went to Capitol Hill and succeeded in having passed (and then enacted) Section
211 of the Omnibus Appropriations Act for FY 1999 (Pub. L. I 05-277). Section 21l provides
that 5!5.527 oftbe CACR -the general license authorizing reg1stration and renewal in the
PTO of all Cuban-owned trademarks-- shu !I not he used to authorize any transaction with respect
to a trademark that is the same or similar to a mark that was uscd;in connection with a business
that was confiscated by the Government of Cuba (a ''.conllscatio11rre!ated trademark"), unless the
original owner consents (OFAC has since amended 515.527 to )ncorporate this rule). The
Havana Club trademark is generally belie:ved to be a trademark. OFAC and
other offices of the U.S. Government have interpreted Section 21 t as not prohibiting OF;'\C from
issuing a spec(fic license mithorizing transactions with respect confiscated-related trademark,
but only prohibiting the automatic authorization of such transactims by the pre-existing general
license. Section 21 t als.o provides that no U.S. court shall any assertion ofintellectual
pr<uperty rights by a blocked Cuban national based on common Jaw, prior trademark registration,
or the Lcmham Act with respect to a cotlllscation-related trademark, unless the original mvncr or
succcssor-in-intl!rcst consents.
1.999-2002 -The WTO dispute is hrou_gl1t and decideq. In l999 on behalf of HCH, the European
Cornmuhityrcquestcd consult:Itions with Ehc Lnitcd States over 21 J, contending thattha
kgislation ;io!<ll"c?d '.miuus US. ob!ig:.trions under intematit'lr;al c!grt't!m.cnt::: 011 the prctGc:tiun uF
fnteJ k:cl'uai prt::pt;rt;: rights. '! cons.u I.tutl:Jns k:d to cstab!-jshJJtt;;nL of f:t \\/'T(J .f.) i:;pu.i"G
fZesohttr(JU. Pru1ei 200:2 .. () dc-teru1inution. 'Tbt.:
fott1fld th.(' Ci.F ..

r\)Vision o:f Scctiort 2 t 1. robe consis.u::.rll vv,}th !._).S . ...Jb!i.
2
2003-06-032 000033
(b)(5)
)

(b)(5)
The WTO found
the access-to-courts-related provisions of Section 211 to be inconsistent with U.S. obligations
under intcmational law. The United States is still in the process of implementing the \VTO
dett:rmination.
2000- Bacardi \vins the Trademark Usc Litigat-ion. In 2000 the Second Circuit ruled
unanimously in Bacardi's favor in the Trademark Usc Litigation and the Suprr:rnc Coun denied
certiorari. The appeals court held in part that (1) HCH. had no righfs to the Havana Club
trademark, because its acqwsition of the trademark \Vas not authori,zed by OF AC (the OFAC
license had boon revoked), and (2) the acccss-to-coutis-related provisions of Section 211
prevented the court from enforcing any trademark rights HCH asserted under intcmationalla\v.
1/2004- Bacardi loses the Cancellation Proceeding in the PTO. In a January 2004 opinion, the
PTO's Trademark Trial and Appeal Board (the "TT AB") dismissed Bacardi's petition (originally
tiles in 1995) for cancellation ofCuhoexpott's Havana Club traderhark registration. Bacardi's
primary argument at this point was thatHCH's 1996 renewal ofthe U.S. registration of the
Havana Club trademark was invalid because (I) OFAC had later revoked, retroactive to 1995,
the license that had authorized the transfer of the Havana Clttb traqcmark from Cuhaexport to
HCH, and (2) the courts (in the Trademark Use Litigation) bad found that HCH had no other
rights to the Havana Club trademark. Ac;cording to Bacardi, HCH therefore did not own the
Havana Club trademark in 1996, could not renew it, and absent renewal the trademark
re.gistration expired <md must be cancelled. The TT AB disagreed, finding that the at the
time of the registration were controlling, not circumstances that qistcd years later. Accordingly,
the TTAB found that HCH had properly renewed the U.S. registration of the Havana Club
trademark in. 1 996 and that, fo llov.;ing OF AC's revocation of the license authorizing the transfer
of tile trademark from Cubacxport to HCH, rights to the properly renewed Havana Club
trademark registration reverted to
3/2004 - Bacardi l}les suit appealing the TTAB's Cancellation Proceeding decision. In N'farch
2004, Ba.card.i filed suit in D.C. district court appealing the TTAB's decision in favor of
Cubaexport in the Cancellation Proceeding and requesting that Havana Club
trademark registration be cancelled and that Bacardi he declart:d the owner of the mark (the
"Cancellation Litigation''). As it had in all prior legal actions, counsel for Cubaexport obtained a
license from OFAC authorizing it to engage in transactions related to representing Cuhacxport in
the Cancellation Litigation.
12!2005- Cubacxpon applies without OF AC authorization to its trademark rcgistratio_J].
The cuJTcnt tcm1 of Cubaexport's registration of the Havana Club trademark c:i:pircs on .luly 27,
2006. On .December 13, 2005, counsel for Cubacxport submitted a ren.:.:wal application <md
renewal fcc ro the PTO. The application argued that tire OFAC license issued to Cubacxport's
couu.sclto conduct !he Cancc.llatior1 also illltlwriz('d it !'o engage in transactions
inc.!dent r.o tht:. ()u ... \prir (j) 2006; .iss.ucd u [(!
C-OUl.lSI.:l; ..vith a copy sen.t i\) th.e strni.ng:Ihat the- tiL(TiSC to Ct:Jnduc.t the
dc)t:S not atlt.horizc counsu1 to i:l tr&dcrnark
nctivitics.
2003-06-032 000034
4/2006- Cubaexport applies for an OFAC license to renew its trademark registration. On April
7, 2006- one day after OFAC advised that a separate specific was needed-
Cubaexport's counsel, Vincent Palladino or Ropes & Gray, submitted an application to OFAC
requesting authorization to engage in transactions incident to renewing Cubacxport's U.S,
registration of the Havana Club trademark at the PTO. Of note, Cubacxport did not withdraw its
earlier trademark registration renewal application, which is still pending at the PTO. On. May 9,
2006, Bacardi's counsel, Oscar Garabaldi of Covington & submitted a l.cttcr to OFAC in
opposition to Cubacxport's license request. Bacardi's letter makes various arguments as to why
it is inconsistent \vith U.S. policy to grant the license request: On May 15, 2006,.0FAC
for.vardcd the license request to the State Department with a request for State's policy guidance.
6/2006- Cubacxpoti to proceed pcnding_OFAC authorization. While its application
to for an OFAC license to engage in rene\val activities was sti II pei1cling, 011 June 16, 2006,
counsel for. Cubaexport filed a letter with the PTO requesting that it continue action on
Cubacxport 's December I 2, 2005, renewal application and renew Cubaexport's U.S. registration
for the Havana Club trademark:' The letter notes that Ropes & Gnay applied to OF AC for a
specific license to engage in renewal activities on April 7, 2006, but "OFAC has not yet acted on
the request lor a new specific license, and we have not been able detcm1ine when OFAC will
do so." The letter further notes that Cubacxport's U.S. registration of the Havana Club
trademark will expire on July 27,2006, if it is not renewed. Though arguably out of place in a
letter to the PTO, the Jetter also makes various arguments as to why it is consistent wi1h U.S.
policy for OFAC to grant Cubacxport's pending license.
4
2003-06-032 000035
Hammerle, Barbara
Saturday, July 01, 2006 12:16 PM
Farrow, Liz; T
Thornton, Sean;
RE: Havana
I (b)(5) I
Sent: Friday, June 30, 2006 12:08 PM
To: Hammerle, Ba Canter
Cc: Thornton, Sean;
Subject: Havana Clun-n"'"''r"'n
Barbara, Ginny, Liz, andllll
Many weeks ago the General Counsel of Bacardi began requesting a meeting (or meetings) with GC Arnie
Havens and Barbara to discuss and argue for denial of a pending license request by Cubaexport to renew its
U.S. registration of the Havana Club trademark at the U.S. Patent and Trademark Office. The license request
was submitte1 on April 7, 2006, and OFAC forwarded it to State for policy guidance on May 15. OFAC is still
awaiting State's guidance. Unless Cubexport's traElemark registrati0n is renewed or USPTO takes other
action to protect the registration, the registration will expire this coming July 27.
-Matthew
- - - - - - - - - - ~ - - - - - - - - - - - - - - - - - - - - - = 2 0 ~ 0 ~ 3 ~ - 0 ~ 6 ~ - 0 3 2 0 0 0 0 3 6
(b)(5)
iz
Farrow, Liz
Friday, June 30, 2006 4:54 PM
Tuchband, Matt
Thornton, Sean;
RE: Havana Clu
Thanks, Matthew.
To: Hammerle, Barba Canter
Cc: Thornton, Sean;
Subject: Havana
Barbara, Ginny, Liz, and-
nia;-
Havens and Barbara to discuss and argue for denial of a pending license request by Cubaexport to renew its U.S.
registration of the Havana Club trademark at the U.S. Patent and Trademark Office. The license request was
submitted on April 7, 2006, and OFAC forv.tarded it to State for policy guidance on May 15. OFAC is still awaiting
State's guidance. Unless Cubexport's trademark registration is renewed or USPTO takes other action to protect
the registration, the registration will expire this coming July 27.
-Matthew
2003-06-032 000037
I (b)(s) I
Hammerle, Barbara
Tuesday, April25, 200612:18 PM
T
----Original Message-----
rom: Tuchband, Matthew
ent: Friday, April 21, 2006 9:12 AM
o: Hammerle Barbara
(Bacardi)
In returning a Cuba call, learned that Bacardi believes it has
an outstanding request to mee the Havana Club matter. As you can
see from lllllle-mail below, Bacardi still wishes to meet notwithstanding the
letter OFAC recently sent to Cubaexport regarding its current lack of
authorization to engage in renewal activities (including payment of fees) at the
PTO.
Ill directed Bacardi's counsel to submit a meeting request in writing to you,
but we thought we should give you this informal heads up _as well.
- Matthew
Sent from my BlackBerry Wireless Device
From:
To: Tuc
Sent: Thu Apr
Subject: Call
Matthew,
(Bacardi)
I (of Bacardi) back this evening in response to .a call
she had to follow up on written requests Bacardi had
apparently sent some time ago (as she described it, the original request had been
to meet with Robert Werner, and a second follow-up request had been made about a
month ago to meet with Barbara Hammerle) .. I explained to her that any request to
meet with Barbara was appropriately directed to Barbara, and not made via our
office. Because she had mentioned that the purpose of the requested meeting had
changed since the earlier letters were sent, I suggested that she clarify the
issue Bacardi would like to discuss in any new written request. I noted that my
suggestion to put the request in writing was merely to facilitate OFAC's
consideration, and that I was not in any position to respond to the substance of
the request or to indicate whether a meeting would be possible.

2003-06-032 000038
Best regards,
I (b)(6) I
2
2003-06-032 000039
'
Millerwise, Molly
Tuesday, December 19, 2006 4:39PM
Tuchband, Matthew
~ a
helpful. Thank you, both!
Sent: Tuesday, December 19, 2006 3:41 PM
To: Millerwi
Su
Molly,
-Matthew
-----Original Messagile.--.--,-
From: I!!!
Sent: Tuesday, December 19, 2006 3:05PM
To: Millerwise, Molly; Tuchband, Matthew
Subject: RE: Two Qs on Cuba
Molly,
Best regards,

1
2003-06-032 000040
(b)(5)
I (b)(5) I
I (b)(5) I
I (b)(5) I
From FCSC web site:
The Commission has administered two pro,grams for of claims against the Government
of Cuba. In its First Cuban Claims Program, completed on July 6, 1972, the Commission certified
5,911 claims to the U.S. Department of State as valid claims. In August 2006 the Commission
completed the administration of a second Cuban claims program, evaluating previously
unadjudicated claims ofU.S. citizens or corporations against t.he Government of Cuba for losses of
real and personal property taken after May 1, 1967. The first program was conducted under the
authority ofTitle V ofthe International Claims Settlement Act of 1949, as amended (22 U.S.C. 1643
et seq.), "Vhile the second program was conducted pursuant to the Commission's authority under 22
U.S.C. 1623(a)(l )(C) to evaluate categories of claims referred to it by the Secretary of State. The
second program began on August 10, 2005, and the filing deadline was February 13, 2006.
J
In its Second Cuban Claims Program, the Commission received a total offive claims, and certified
two of those claims as valid: the Claim of STAR WOOD H01J!;LS & RESORTS WORLDWIDE, INC.,
Claim No. CU-2-001, Decision No. CU-2-001, in the total principal amount of$51,[28,926.95 (plus
q percent simple annual interest); and the Claim of IRAIDA R: MENDEZ, Claim No. CU-2-002,
Decision No. CU-2-004, in the principal amount of$16,000.00 (plus 6 percent simple annual
interest). These will be added to the claims already certified in the previous program. Although there
are no funds currently available to make payment on any American claims, the purpose of the
Commission's will be to serve as a basis for future negotiation of a claims settlement
with the Government of Cuba.
From: Millerwise, Molly
Sent: Tuesday, December liii9., I20IOI6I2:.44.PM.
To: Tuchband, Matthew; I
Subject: Two Qs on Cuba
Hi-
A reporter working on a piece re US-Cuba relations post-Castro has asked me the folfowing:
1. Are there any chemical manufacturing assets in Cuba' that have been nationalized by the Castro
regime? If so, what will happen to those assets if relations are normalized?
2. Will U.S. energy companies be allowed to drill off the coast of Cuba?
Thanks!
Molly
2
2003-06-032 000041
All redactions on this pager are made pursuant to FOIA Exemption (b)(6) unless otherwise noted
Thornton, Sean
Friday, December 01
Tuchband, Matthew;
RE: Havana club story
He's not supposed to bring back rum anymore, and Florida law has nothing to do with it.
Sent:
To: Thornton, Sean
Subject:
I (b)(5) I
-Matthew
From:
Sent: .
To: Tuchband, Matthew; ; Thornton, Sean
http://marketplace.publicradio.org/shows/2006/11/30/PM200611305.html
TEXT OF STORY
KAI RYSSDAL: We're not quite in the right season for 'em anymore, but Mojitos have set rum sales in
the U.S. on fire. It's second only to vodka in popularity. Which raises the stakes in a dispute between two
companies over the trademark of a legendary Cuban rum. From the Marketplace Innovations Desk at
North Carolina Public Radio, Janet Babin reports:
JANET BABIN: To understand the Cuban trademark war between two rum makers, it helps to have
experience with the stuff Preferably, the good stuff.
Duke visiting scholar Nick Robins got this aged Cuban sipping rum in Cuba, during one of his many
visits. It's caramel colored with an inviting taste, even for someone not used to hard liquor in the
afternoon.
But not much more, if you're an Ametican. The U.S. imposed an embargo against Cuban goods decades
ago, and Florida recently announced plans to strengthen enforcement against offenders. And Robins says
1
2003-06-032 000042
Just who owns the real identity of Havana Club Ruin in the U.S. market is what's behind the battle
between France-based Pernod-Ricard, its Cuban partner Cubaexport and Bacardi USA. Pernod has made
Havana Club Rum in Cuba for more than a decade, and sells it thr,oughout the world.
Bacardi USA began selling its own version of Havana Club Rum in Florida in August, after the U.S.
Patent and Trademark Office refused to renew Pernod's Havana Club trademark. Batardi spokesman
John Gomez says Bacardi bought the real Havana Club recipe and should get the trademark:
JOHN GOMEZ: Bacardi does own the rights to Havana Club. Bacardi purchased the rights in
the mid-90s from the Arechabalas family.
That family made the rum in Cuba-from the 1930s to the 1960s, when it fled Fidel Castro's regime.
Intellectual property attorney Robert Muse has worked with Pernod in the past. He says the Patent Oftice
decision about Havana Club's trademark was based on a conh'l'essional provision passed in 1998. It
prevents the U.S. from honoring trademarks ofbusinesses by the Cuban government.
non-U.S. company to procure an anticompetitive benefit in a rum competition.
Muse says the Patent Office decision could threaten the trademark stability ofhundreds of U.S. products
Tyson Chicken to Wrigley's gum. Muse says this could weaken brand enforcement tor those companies.
MUSE: Cuba under international law is now free to invalidate, cease registering, or take any
other actions against U.S. trademarks.
another kind oflegal trouble. While Pemod's rum is made in Cupa. Gomez says Bacardi's ...
But it's called Havana Club. That could lead consumers to believe they're buying Cuban rum. Cardozo
law professor Justin Hughes says it's illegal to market a product that's geographically misleading:
.JUSTIN HUGHES: Havana Club on a product that is rum not from Cuba, rum from the
Dominican Republic, or rum from Jamaica might be decepti've.
GOMEZ: We really give our consumers a lot of credit for being able to read the label and see
that it's very obvious that it comes from Puerto Rico.
Pemod has tiled a federal lawsuit against Bacardi for allegedly misleading consumers about where its
rum is made.
According to the Distilled Spirits Council, rum brought almost $1.8 billion in 2005, up 5.5 percent
over the year before. Bacardi continues to sell Havana Club in Florida, and is considering selling it in
other states too.
In Durham, North Carolina,I'm Janet Babin for Marketplace.
2
2003-06-032 000043
I
I All redactions on this pager are made pursuant to FOIA Exemption (b)(6) unless otherwise noted I
Tuchband, Matthew
nt:
; Thornton, Sean
bject:
-Matthew
From:
Sent: Friday, December 01., 2iiOI06iliiS:j27IIIPM
To: Tuchband, Matthew; ; Thornton, Sean
publicradio.org/shows/2006/11 /30/PM200611305.html
TEXT OF STORY
)KAI RYSSDAL: We're not quite in the right season tor 'em anymore, but Mojitos have set rum sales in the
companies over the trademark of a legendary Cuban rum. From the Marketplace Innovations Desk at North
Carolina Public Radio, Janet Babin reports:
JANET BABIN: To understand the Cuban trademark war between two rum makers, it helps to have
It's caramel colored with an inviting taste, even for someone not used to hard liquor in the afternoon.
But not much more, if you're an American. The U.S. imposed an embargo against Cuban goods decades ago,
and Florida recently announced plans to strengthen enforcement against om:nders. And Robins says that's
part of Cuban rum's popularity- its forbidden taste is steeped in the island's culture:
baseball. It is part ofthe identity.
France-based Pemod-Ricard, its Cuban partner Cubaexport and Bacardi USA. Pemod has made Havana
Bacardi USA began selling its own version of Havana Club Rum in Florida in August, after the U.S. Patent
and Trademark Office refused to renew Pernod's Havana Club trademark. Bacardi spokesman John Gomez
2003-06-032 000044
(b)(5)
JOHN GOMEZ: Bacardi does own the rights to Havana Club. Bacardi purchased the rights in the
That family made the rum in Cuba from the 1930s to the 1960s, when it fled Fidel Castro's regime.
decision about Havana Club's trademark was based on a congressional provision passed in 1998. It prevents.
ROBERT MUSE: It has no support. It's an egregious example ov special-interest legislation by a
non-U.S. company to procure an anticompetitive benefit in a rum.competition.
Tyson Chicken to Wrigley's gum. Muse says this could weaken brand enforcement for those companies.
MUSE: Cuba under international law is now free to invalidate, cease registering, or take any other
another kind of legal trouble. While Pernod's rum is made in Cuba. Gomez says Bacardi's ...
professor Justin Hughes says it's illegal to market a product that's geographically misleading:
JUSTIN HUGHES: Havana Club on a product that is rum not (rom Cuba, rum from the Dominican
it's very obvious that it comes from Puerto Rico.
made.
According to the Distilled Spirits Council, rum brought in almost $1.8 billion. in 2005, up 5.5 percent over
the year before. Bacardi continues to sell Havana Club in Florida, and is considering. selling it in other states
too.
In Durham, North Carolina, I'm Janet Babin tor Marketplace.
2
2003-06-032 000045
All redactions on this pager are made pursuant to FOIA Exemption (b)(6) unless otherwise noted

From:
Sent:
To:
Tuchband, Matthew
200612:59 PM
Subject:
Attachments: Havana Club Briefer 9-2006.doc
Still more
-----Original
from:
Sent: Friday, September 08, 2006 9:53 AM
To: Tuchband, Matthew
Subject: FW: Havana Club Briefer 9-2006.doc
Will send you CAFe in a minute
...
U.S. Department of the Treasury
1500 Pennsylvania Avenue, NW
DC 20220
Phone:
Fax: - .
: From: Tuchband, Matthew
Sent: Thursday, September 07, 2006 12:26 PM
.
Subject: Havana Club Briefer 9-2006.doc
-
Here is a briefer on the Havana Club issue. Please chop as you see fit.
-Matthew
-iavana Club Briefer
9-2006.doc ...
1
2003-06-032 000046
Cuba- Havana Club [ssue
Havana Club is a well-known brand of rum. A Cuban company currently
produces the rum and owns the Havana Club trademark in Cuba and many third
countries. There is a long and complex history of administrative, judicial, legislative, and
international action surrounding the rights to the Havana Club trademark in the United
States.
A very abbreviated history follows: The original owners of the Havana Club
mark in the United States left Cuba after Castro seized power and confiscated their rum-
making facilities. When the original owners failed to renew their U.S. mark in the 1970s,
a Cuban company (Cubaexport) obtained the U.S. mark. In the late 1990s, after
Cubaexport built Havana Club into a well-known brand and prepared to fonn a joint
venture with France-based Pemod Ricard to market Havana Club worldwide, U.S.-owned
Bacardi teamed up with the original Havana Club owners to tight for the U.S. trademark.
Bacardi succeeded in getting legislation enacted- Section 211 ofthe Omnibus
Appropriations Act for FY 1999 (generally referred to as simply "Section 211 ")-that,
among other things, prohibited an existing general license in the Cuban Assets Control
Regulations (the "CACR"), which up until then authorized registration and renewal of
Cuban-owned trademarks in the United States, from applying in cases where the
trademark is similar"to one associated with assets that were confiscated. In other words,
Section 211 blocked Cubaexport from using the CACR general license to renew its
Havana Club mark. Instead, Cubaexport would have to apply for a specitic license from
OF AC to renew the mark. This and other restrictions in Section 211 were the subject of a
Pemod-Ricard-initiated European complaint to the World Trade Organization ("WTO")
claiming that the legislation is inconsistent with international agreements on protection of
intellectual property.
In July 2006, Cubaexport's Havana Club mark was due for renewal. After
receiving policy guidance from State, OF AC denied Cubaexport's request for a specific
license to renew the mark. Although Cubaexport is still trying to protect its ownership
rights through other proceedings at the U.S. Patent and Trademark Office, it appears that
it no longer owns the Havana Club mark in the United States.
Bacardi already has started producing and distributing its own Havana Club rum
in the United States. Various news reports have discussed the possible ramifications of
OFAC's recent denial on the protection ofU.S.-owned trademarks in Cuba (of which
there are many) if Cuba retaliates. Also of concern is the possibility of a second
European complaint to the WTO based on OFAC's action.
2003-06-032 000047
From:
Sent:
To:
Subject:
All redactions on this pager are made pursuant to FOIA Exemption (b)(6) unless Page 1 of
1
otherwise noted
Farrow, Liz
Tuesday, August 01, 2006 5:34PM
Hammerle Barbara; Thornton, Sean; Tuchband, Matthew;
;-
HAVANA CLUB correspondence
Attachments: Ropes and Gray letter to USPTO.pdf
We were copied on Ropes and Gray's request to the USPTO to renew the HAVANA CLUB registration,
notwithstanding OFAC's denial of Cubaexport's license request.
1/24/2008
2003-06-032 000048
- --
----
-----------
Aui-01-0S OZ:5Bpm From-ROPES ' GRAY LLP
+Z 1 z sas aoas
T-679 P.010/011 F-176
US TREASURY
DEPARTMENT OF THE
WASHINGTOI'I, C.C.
Ca.!!e No. CU-75835
Vincent N. Palladino, Esquire
Ropes & Gray LLP
1251 Avenue ofthe Americas
New York, NY 10020
Dear Mr. Palladino:
JUL 2. 8 2006
104815 P.02
Thi.s is in response to your letter dated April7, 2006, on behalfofEmpresa Cubana fu:portadora
de Alimc:mtos y Productos Varios ("Cubaexport"), requesting a liccm5e authorizing transactions
related 10 the renewal at the United States Patent ana Trademark Office of Registration No.
1,031,651 of HAVANA CLUB & Design (the "HAVANA CLUB trademark"). 1
Pursuant to the Cuban Assets Conrrol Regulations, 31 C.F.R. Part 515, admlnistered by the U.S.
Department ofthe Office ofFore-ign Assets Control ("OFAC''), renewal ofthe
HAvANA CLUB trademark under these circumstances would be prohibited unless specifically
licensed.
OFAC has been eJ'Igaged in consultation with relevant agencies in the U.S. Government,
including the Department of State (''State"), on this issue. We have received gUidance from
State informing us that it would be inconsistent. with U.S. policy to issue a specific license
a\lthorizing related to the renewal of lbe HAVANA CLUB trademark. Acccrdingly,
your request is hereby denied.
Sincerely,
--3r-;,
ty' ]. ----- ___,
Acting Director
cc: Commissioner for Trademarks, USPTO
TOTPL F'. el2
2003-06-032 000049
' ,,
l!
;
!:

-------- ------------ - ---------------------
Aui-01-06 02:58pm From-ROPES & GRAY LLP
+212 596 9096 T-679 POll/Oil F-176
. '
a t1!Spoud formally via rcgul;u mail, your response should be to the lllailing Return Address listed and inchtdc
he registration. u\Jmber, the words 'Post Registrition' and the examiner's name oo the: upper right comer of each page of
our response.
cheek the status of your application at any time, visit the Office's Trademark Applications and Registrations Retrieval
TARR) system at
INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACIION, PLEASE CONTACT 'THE ASSIGNED

PLEASE ENCLOSE THIS FORM WITH YOUR RESPONSE
**Tbi! form tnl:St be i11duded witb your response to ensure proper fee proceuing ... v
No, 103!6$1
'he Post Pa.alegal has determined that the amounts indicated below are O'.ltstanding:
: ____ Section 8 affidavit !lling fee (fee 372)
; Section 8 affidavit grace period surcharge (fee code 381)

;JOO.OO Section 8 affidawr deficiency turchruge code 382)
----
Section 9 renewal application filing fee (fee _code 365)
----
Section 9 renewal application grace period sll!'charge (fee: code 366)
_____ 9 te.newal 2pplication deficiency surcharge (fee code 380)
: Section l5 affidavit filing fee (fee code 373)
.---
,__ __ _
Sectior.. 7 correction/amendment filing fee (fee code 369)
,__ __ _
Seetion 7 issue r,ew certificate of registration filing fee (fee code 368)
;------ :;urcharge-ifresponse filed after------ (fee code, 3S2)
, ____ Dc:ticiency surchar2e-ifrt!sponsc. filed after------ (fee code 380)
2003-06-032 000050
. r
l.
!;
From:-
Sent: Tuesday, August 01, 2006 9:41 AM
To: Farrow, Liz
Cc:
Subject: RE: Sen. Bill Nelson/Havana Club
I have been dealing with- on this issue for months and I would like to be able to give it to her. This
request is different from we get from PSI. Those are part of that Cmte's investigatory
authorities -this request is just for the one document,
...
DC 20220
Phone:
Fax: -
-----Original Message----
From: Farrow, Liz
Sent: July 31, 2006 5:48 PM
To
n/Havana Club
-and.
In-absence- asked me to return--- call (with Sen. Bill Nelson). She wants a
coP'Y""'T'The Havana'CTu'b'Tieense. I told her I to see if we could give that document
out to her. She assured me that she often deals with Janie and asked that someone call her back
tomorrow . can we give that letter to Sen. Nelson?
Liz
1/24/2008
2003-06-032 000051
-------------------
From:
-
Sent: Tuesday, August 01, 2006 7:07AM
To: Farrow Liz
Gc:
Subject:
If we can give it to her that wld be gooD
Bill Nelson/Havana Club
.. and ..
In - absence- asked me to return
Nelson). She wants a copy of the Havana Club license. I
to check to see if we could give that document out to her.
she often deals with - and asked that someone call her
cfn we give that letter to Sen. Nelson?
Liz
2003-06-032 000052
call (with Sen. Bill
told her I would need
She assured me that
back tomorrow. ..
1:57PM
Monborne, Mark; Tuchband, Matthew
FAXED to OFAC
CU-75835(Havana Club) denialletter.pdf
----Original Message"-----
From: Farrow, Liz
McB-rien, Bob; Can.ter, ViJ?ginia; Thornton, Sean; Millerwise, Molly; -,
CC: Hammerle, Barbara
Sent: Fri Jul 28 13:38:18 2006
ubject: RE: Guidance has been FAXED to OFAC

'
CU-75835(Havana
Club) denial I. ..
' The atta hed letter
1
follow up voice mail message
:-----Original Message-----
From: McBrien, Bob
Sent: Friday, July 28, 2006 1:32PM
Gray LLP at 1:33pm, with a
To: Canter, Virginia; Thornton, Sean.; Millerwise, Molly; Farrow, Liz; -,
..
Cc: Hammerle, Barbara
Subject: FW: Guidance has been FAXED to OFAC
The OFAC letter to the applicant has been signed by at approximately 1:25pm.
Liz Farrow will advise all when it is fax'd to the applicant.
2003-06-032 000053
DEPARTtrENT OF THE TREASURY
b.C. 20220
C:nse No. CU-75::135
\ hd!adino. Esquire
Ropes & Gray L.LP
I 251 ,-\ vc:nue (If' tile Americas
1\cw Ytwk. NY 10020
Dear Mr. Pali:ldino
JUL 2 8 2006
This is in response to your dated April 7. 2t)06, on !1eh8il or E1i1presa Cubana
d.c ;\limentos y Productos Vmios ("Cubaexport"), rcqu.:::sting a license authorizing
n:l;llc-d to thC' renc;wal Ut1ilcd Statc:s P<ltc'nl nnd 'ftad<:tHntl Ortic.: i.>i' Registration No.
I /13 Ui51 HI\ V.'\',A CLlJB & Dcsiglt (th.:: "H.\ V!\\,\ CLUB trademark'').
PursuaFtl to the Cub;tn Assets Cn.nuol Regulrttions, 31 C.F.R. l'mt S I.S. ;tdntintstcred by the U.S.
Department or the Trc:Jsury's O!'iiGe or Assets Contrnl ('OF'!\C"). repewnl ot' the:
HAVANA CUJB undc1 these CJrcurnstanccs would be prl)hibit<;:d unless specil!cally
liccns.cd.
OFAC has been in consullati,)n with relevant agencies -in US. Govern111cnt,
including the Dc!partmcnt of' State (State"), on this is>Uc!. We lwv;:; rccci\ccl guicl<:ncc from
St<ttc 111fonning u;; it \V<Juld he inconsistent w1th U.S policy to issLl<'! a :;pl:!cilic: license
nurlwtizing transacti(Jns rcl:Jtcd to the renewal of the 11 \ V:\:\:\ CL.UB .. \cc(Jrdingly,
your request is hereb:; denied.
SitKercly,
...
{/ J. Rohat Me Brien
Acting Dircctl'r
Ot'ticc iJC l'oreign /\sscots CnntFol
2003-06-032 000054

From:
Sent:
To:
Subject:
Thornton, Sean

FAXED to OFAC
Attachments: 07-28-06 Havana Club Qs and As rev 3.doc; 07-27-06 congressional talkers.doc
Fyi
From: McBrien, 'Bob
To: Canter, Virginia; Thornton, Sean; Millerwise, Molly; Farrow, Liz.; -
..
Sent: Fri Jul 28 13:31:56 2006
Subject: FW: Guidance has been FAXED to OFAC
07-28-06 Havana 07-27-06
Club Qs and As ... )ngressional talkers.
The OFA letter to the applicant has been signed by me at
approximately 1:25pm. Liz Farrow will advise all when it is fax'd to the
licant.
2003-06-032 000055
---------------------------
Message
otherwise noted
Sent: Friday, July 28, 2006 12:55 PM
To: Thornton, Sean; Farrow, Liz; McBrien, Bob
Cc:
Subject: RE: HC
(b)(5)
sent: Friday, July 28, 2006 12:26 PM
To: Farrow Canter Virginia; McBrien, Bob
Cc:
Thanks,
Sean
1/24/2008
From: Farrow, liz
sent: Ju
To:
Cc:
Subject:
Liz
Thornton, Sean
, Virginia
2003-06-032 000056
Page 1 of I
Havana Club denial faxed to OF AC at 12:30 Page 1 of 1
From: Farrow, Liz
To: Canter, Virginia; McBrien, Bob; Thornton, Sean;
Subject: FW: Havana Club denial faxed to OFAC at 12:30
Fyi. We will circulate the denial letter I (b)(5) I
Liz
1/24/2008
2003-06-032 000057
Message
otherwise noted
From: McBrien, Bob
To: Thornton, Sean; Farrow, Liz; Canter, Virginia
Cc:
Subject: RE: HC
To: Farrow Liz; Canter, Virginia; McBrien, Bob
Cc:
Thanks,
Sean
1/24/2008
From: Farrow, Liz .
Sent: 28, 2006 11:24 AM
To: Thornton, Sean
, Virginia
Liz
(b)(5)
(b)(5)
2003-06-032 000058
(b)(5)
Page 1 of 1
Message All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless
otherwise noted
To: Farrow, Liz; Canter, Virginia; McBrien, Bob
Cc:
Subject: HC
Importance: High
Attachments: CU-75835 (Havana Club Design).doc
Thanks,
Sean
From: Farrow, Liz
Sent: Ju
To:
Cc:
Subject:
Liz
l/24/2008
Thornton, Sean
ter, Virginia
2003-06-032 000059
(b)(5)
Page 1 of 1
otherwise noted
Case No. CU-75835
Dear- I (b)(6) I
This is in response to your letter dated April 7. 2
de Alimentos Productos Varios baex
Sincerely,
J. Robert McBrien
Acting Director
2003-06-032 000060
Message
From:
Sent:
To:
Cc:
Subject:
otherwise noted
Thornton, Sean
Friday, July 28, 2006 12:07 PM
Pagel of l
, Canter, Virginia;
Monborne, Mark
-Disabled;-
McBrien, Bob; Farrow, Liz
FW: Havana Club q/a's in final
Attachments: 07-28-06 Havana Club Qs and As rev 3.doc; 07-27-06 congressional talkers.doc
FYI
l/24/2008
2003-06-032 000061
From: Farrow, Liz
Sent: Friday, July 28, 2006 11:24 AM
To: Thornton, Sean
Cc: McBrien, Bob; Canter, Virginia
Attachments: CU-75835 (Havana Club Design).doc
Liz
)
1/24/2008
2003-06-032 000062
Case No. CU-75835
(b )(6)
Ropes ay
12 51 A venue of the Americas
New York,.NY I 0020
Dear
I (b)(6) I
This is iti response to your letter dated April 7, 2006, on behalf of Em
de Alimentos Productos Varios
The Cuban Assets Control Regulations, 31 C.F.R. Part 515 (the "Regulations"), administered by
the U.S. Department of the Treasury's Oftice of Foreign Assets Control ("OFAC"), prohibit all
persons subject to the jurisdiction of the United States from engaging in transactions in which
Cuba or a Cuban national has any interest unless authorized by a general or specific license or
otherwise exempt.
Sincerely,
J. Robert McBrien
Acting Director
2003-06-032 000063
(b)(5)
(b)(5)
2003-06-032 000064
Message
Sent: Friday, July 28, 2006 9:29AM
To:
Cc:
Subject: RE: Havana Club trademark denial (2)
Importance: High
. Thanks much.
1/24/2008
2003-06-032 000065
------------------
To:
Subject:
McBrien, Bob; Thornton, Sean; Farrow, Liz;
Re: Havana Club trademark denial (2)
From: McBrien, Bob
To: Thornton, Sean; Canter, Virginia; Farrow, Liz;
Sent: Fri Jul 28 09:18:32 2006
Subject: RE: Havana Club trademark denial ( 2)
(b)(5)
~ o : McBrien, Bob; Canter, Virginia; Farrow, Liz;
Subject: FW: Havana Club trademark denial ( 2)
Sent: Thursday, July 27, 2006 7:33 PM
Subject: Fw: Havana Club trademark denial (2)
(b)(5)
(b)(5)
2003-06-032:_0.:::_:0::_::0:..::.0.:::.:66::__ _______ __,_ _______ _
1 1 1 1 1 1 1 1 1 1 ~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
To:
Subject:
Thornton, Sean; McBrien, Bob; Farrow, Liz;
Re: Havana Club trademark denial (2)
I (b)(5) I
Sent: Fri Jul 28 09:12:38 2006
Subject: FW: Havana Club trademark denial (2)
Sent: Thursday, July 27, 2006 7:33 ~ M
S.ubject: Fw.: Havana Club trademark denial (2)
(b)(5)
2003-06-032 000067
(b)(5)
--------------------
From:
Sent:
To:
Subject:
Attachments:
Havana Club
denial (.
Thornton, Sean
Friday, July 28, 2006 9:13AM
McBrien, Bob; Canter, Virginia; Farrow, Liz;
FW: Havana Club trademark denial (2)
Havana Club trademark denial (2).DOC
Subject: Fw: Havana Club trademark denial ( 2)
(b)(5)
2003-06-032 000068
I (b)(5) I

From: McBrien, Bob
Sent: Thursday, July 27, 2006 8:16PM
To:
Subject:
Thor!!!JIJ!!Inton Sean Canter, Virginia; Farrow, Liz;
Molly;
RE: Havana u tra em ark den1a ( )
From: Szubin, Adam
To: McBrien, Bob; Thornton, Sean; Canter,
111111111 Millerwise, Molly; 1111111 1111: 1111111111 .....
Adding
From: McBrien, Bob
To: Thornton, Sean; Farrow,
Adam; Millerwise, Molly; 1111111 1111
Liz;
Subject: Fw: Havana Club trademark denial (2)
000069
Millerwise,
(b)(5)
Liz;-'
Szubin,
(b)(5)
j
Message All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless otherwise noted
To:
Cc:
Thornton, Sean;
Monborne, Mark
McBrien, Bob
Farrow, Liz;-Millerwise, Molly; Szubin, Adam;
Subject: RE: URGENT: Please Clear attached rollout talking points and 0/A's for Havana club Rollout
Sent: Thursday, July 27
(b)(5)
To: Canter, Virginia; Farrow, Liz; - IYiillerwise, Molly; Adam;
Monborne, Mark
Cc: McBrien, Bob
Subject: RE: URGENT: Please Clear attached rollout talking points and Q/A's for Havana club Rollout
To: Thornton, Sean;
Subject: RE: U
Rollout
Forwarding for vetting.
From: McBrien, Bob
Farrow, Liz;-
"'r-r-"'rr><=>t1 rollout talking points and Q/ A's for Havana club
Sent: Thursday, July 27, 2006 10:52 AM
To: Canter, Virginia; Millerwise, Molly; Szubin, Adam
Subject: FW: URGENT: Please Clear attached rollout talking points and Q/A's for Havana
club Rollout
000070
I All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless otherwise noted
111111111----------------------------------
From:
Sent:
To:
Subject:
Attachments:
Thornton, Sean
Thursday, July 27, 2006 7:33 PM
Fw: Havana Club trademark denial (2)
Havana Club trademark denial (2).DOC
2003-06-032 000071

From:
Sent:
To:
Subject:
Attachments:
07-27-06 Havana
Club rollout p ...
Canter, Virginia
Thursday, July 27, 2006 7:28PM
McBrien, Bob; Thornton, Sean;---;
07-27-06 Havana Club rollout
07-27-06 Havana Club rollout plan rev 13.doc
(b)(5)
Farrow, Liz
__
Message
Sent: Thursday, July 27, 2006 2:33PM
To: Canter. Virginia; Farrow, Liz; McBrien, Bob;
Cc: Millerwise, Molly
Subject: FW: Havana Club- OFAC memo
Importance: High
Attachments: LEGAL-#31294-v1-Memo_to_OFAC_-_HC.DOC
1/24/2008
2003-06-032 000073
------------------
From:
Sent:
To:
Cc:
Subject:
Thanks,
Sean
Thornton, Se'an
Molly; Canter, Virginia; McBrien, Bob;-Szubin, Adam;-
Liz
HC (b)(5)
To: Canter, Virginia; McBrien, Bob; Thornton, Sean; Szubin, Adam; . Farrow, Uz;
Subject: Press points for HC
Thanks,
Molly
1
2003-06-032 00007 4

From:
Sent:
To:
Subject:
From:
To: T
Thornton, Sean

Sent: 2006
Subject: FW: Press points for HC
(b)( 5)
PRIVILEGED & CONFIDENTIAL --ATTORNEY WORK PRODUCT -- PREDECISIONAL
Sean,
I've emerged from the WMD meeting (which I can report on when things quiet down),
and am now doing my best to catch up. Thank you so much for handling all this,
and please let me know if I can help.
Best regards,

McBr.ien
-Farrow, Llz;
SubJect: Press points for HC
Sean; 1111111 1111: Szubin, Adam;
All - I have cleared the following points with Sean. Please let me know any last
tweaks. I plan to give these to press on the record that call about the issue.
Thanks,
-
(b)(5)
1
I (b)(5) I
(b)(5)
2003-06-03:::._2
Withheld in full pursuant to FOIA Exemption (b)(5)
2
2003-06-032 000076
1 1 1 1 1 1 1 1 1 1 ~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
From:
Sent:
To:
Cc:
Farrow, Liz
Thmnton, Sean; McBrien, Bob; Canter, Virginia;
Monborne, Mark
Subject: RE: Havana Club
Cc: Monborne, Mark
From: McBrien,. Bob
(b)(5)
Cc:
Subject: RE: Havana Oub
Sean, (b)(5)
Cc: Monbcrne, Mark
Subject: Havana Oub
Importance: High
PRIVILEGED
ATTORNEY-CLIENT COMMUNICATION
Gang,
Thanks,
Sean
(b)(5)
2003-06-032 000077
(b)(5)
---
---

From:
Sent:
To:
Subject:
Thanks,
Molly
Millerwise, Molly
Canter, Virginia; Bob; Thornton, Sean;- Szubin, Adam;-
- Farrow, Liz;
for H
I (b)(5) I
2003-06-032 000078:__ _____________________
Message
From:
Sent:
To:
Subject:
otherwise noted
Thornton, Sean
Farrow, Liz; Millerwise, Molly;
Page I of 1
Szubin,
FW: URGENT: Please Clear attached rollout talking points and Q/A's for Havana club Rollout
Attachments: 07-27-06 Havana Club Qs and As rev 2.doc
1/24/2008
2003-06-032 000079
Message
otherwise noted
Page I of2
Sent: Thursday, July 27, 2006 11 :34 AM
To: Thornton, Sean; Canter, Virginia;
Monborne, Mark
Farrow, Liz;-; Szubin, Adam;
Cc: McBrien, Bob
(b)(5)
To: Canter, Virginia; Farrow, Liz;-Millerwise, Molly; Szubin, Adam;
Monborne, Mark
Cc: McBrien, Bob
To: Th0rnton, Sean;
Subject: RE: URG
Rollout
From: McBrien, Bob
Farrow, Liz;-
,,..,.,r,."'"" rollout talking points and Q/A's for Havana club
Subject: FW: URGENT: Please Clear attached rollout talking points and Q/A's for Havana
club Rollout
2003-06-032 000080
(b)(5)
j
Message
otherwise noted
Page I of I
To:
Cc:
Canter, Farrow, Liz;
Szubin,
McBrien, Bob
; Millerwise, Molly;
Attachments: 07-27-06 Havana Club rollout plan rev 1.doc; 07-27-06 Havana Club Qs and As rev 2.doc
To: Thornton, Sean;
Subject: RE:
Fbrwarding for vetting.
-----original Message-----
From: McBrien, Bob
Farrow, Liz-
ed rollout talking points and Q/A's for Havana club Rollout
Subject: PN: URGENT: Please Clear attached rollout talking points and Q/A's for Havana club
Rollout
2003-06-032 000081
I (b)(5) I
Canter, Virginia

Clear attached rollout talking points and 0/A's for Havana club Rollout .
from: Canter, Virgi
To: Thornton, Sean; farrow, Liz; - IIIII
Sent: Thu Jul 27 10:53:15 2006
Subject: RE: URGENT: Please Clear attached rollout talking points and Q/A's for
Havana club Rollout
from: McBrien, Bob
Subject: FW: URGENT: Please Clear attached rollout talking points and Q/A's for
Havana club Rollout
2003-06-032 000082
URGENT: Please Clear attached rollout talking points and Q/A's for Havana club Rollout Page 1 of I
From: Farrow, Liz
To:
-
Subject: FW: URGENT: Please Clear attached rollout talking points and Q/A's for Havana club Rollout
Attachments: 07-27-06 Havana Club Qs and As, rev 2.doc; 07-27-06 Havana Club rollout plan rev 1.doc
In case you haven't seen these.
1/24/2008
2003-06-032 000083
Message
otherwise noted
To: Thernton, Sean; Farrow, Liz;-
Page 1 of 1
Subject: RE: URGENT: Please Clear attached rollout talking points and 0/A's for Havana club Rollout
From: McBrien, Bob
Subject: FW: URGENT: Please Clear attached rollout talking points and Q/A's for Havana club Rollout
1/24/2008
2003-06-032 000084
-------------------
From:
Sent:
To:
McBrien, Bob
Thursday, July 27
McBrien, Bob;
-s Club
inia; Thornton, Sean; Farrow, Liz;-
Subject:
Never mind. Disregard. All were included in it after all.
From: McBrien, Bob
27, 2006 10:42 AM
-; Canter, Virginia; Thornton, Sean; Farrow, Liz;
Szubin, Adam; Millerwise, Molly
RE: Havana Club
I'm resending a separate email baseq upon a phone call just completed
1
tJith-
111111 of State. Not all of you were included originally.
Message-----
From: 1111111 1111
To: Canter, Virginia; Thornton, Sean; Farrow, Liz; McBrien, Bob;
- ..
OFAC
Washin ton DC 20220
Phone:
Fax: 90
To: Thornton, Sean; Farrow, McBrien, Bob;
Molly; szubin, Adam; 1111111 1111
2003-06-032 000085
Millerwise,
To: Farrow, Liz; M8Brien, Bob; Canter, Virginia;
From: Farrow, Liz
Sent: Thursday, July 27, 2006 9:19AM
To: McBrien, Bob; Thornton, Sean; Canter, Virginia;
Here are the attachments.
From: McBrien, Bob
Sent: Wednesday, July 26, 2006 7:39 PM
To: Thornton, Sean; Canter, V i r g i n i ~ ; Farrow, Liz;
Sent: Wednesday, July 26, 20D6 7:03 PM
Thanks,
Sean
2
2003-06-032 000086
------------------
From: McBrien. Bob
Sent:
To:
Subject:
Thursday, July 27, 2006 10:40 AM
Canter--Vir inia Thornton, Sean; Farrow, Liz;
Adam;
RE: Havana u
To: Thornton, Sean; McBrien,
Molly; Szubin, Adam; 1111111 1111
Message-----
Sent: Thursday, July. 27, 2006 9:28 AM
Bob;
To: Farrow, Liz; McBrien, Bob; Canter, Virginia;
From: Farrow, Liz
2003-06-032 000087
Millerwise, Molly; Szubin,
111111111; Millerwise,
(b)(5)
I (b)(5) I
From: McBrien, Bob
To: Thornton, Sean; Canter, Virginia; F ~ r r o w , Liz;
Thanks,
Sean
2
2003-06-032 000088
(b)(5)
(b)(5)

To:
Subject:
Millerw!IPse Moll ; Thornton, Sean; Farrow, Liz; McBrien, Bob;
Adam;
RE: Havana u
To: Canter, Virginia; Sean;
--Szubin, Adam; - IIIII
Havana Club
Farrow, Liz; McBrien, Bob;
To: Thornton, Sean; F-arrow Li.z; McBrien,
Molly; Szubin, Adam; 1111
Sent: Thu Jul 27 09:40:39 2006
Bob;
Subject; RE: Havana Club
From: Farrow, Liz

Szubin,
(b)(5)
(b)(5)
Millerwise,
I (b)(s) I
I (b)(5) I
-----Or igina 1 Message-----
From: McBrien, Bob
Sent: Wednesday, July 26, 2006 7 ~ 3 9 PM
Subject: RE: Havana Ciub
Thanks,
Sean
2
2003-06-032 000090
I (b)(5) I
I (b)(5) I
------------------
From:
Sent: 27, 2006 9:46AM
To:
Subject:
Canter, Virginia; Thornton, Sean; Farrow, Liz; McBrien, Bob;
RE: Havana Club
Washington, DC 202'20
Phone: --Jill
Fax: 202 I 622-5390
-- --Original Message-----
Canter, Virginia
Sent: Thursday, July 27, 200.6 9:41AM
(b)(5)
To: Thornton, Sean; F-arrow Liz; McBrien,
Molly; Szubin, Adam; 1111
Bob;
Message-----
Farrow, Liz
-----Original
1
2003-06-032 000091
111111111: Millerwise,
From: McBrien, Bob
Thanks,
Sean
2
2003-06-032 000092
I (b)(5) I

From: Szubin, Adam
To:
Subject:
c;anter!!lilir inia Thornton, Sean; Farrow, Liz; McBrien, Bob;
Molly;
Re: Havana u .
Yes, and I'm looping in 111111
To: Thornton, Sean;. McBrien,
Molly; Szubin, Adam; 1111111 1111
Sent: Thu Jul 27 09:40:39 2006
Bob;
From: Farrow, Liz
From: McBrien, Bob
-----Original
2003-06-032 000093

Millerwise,
Millerwise,
Thanks,
S.ean
2
2003-06-032 000094

From: Farrow, Liz
To:
Subject:
McBrien, Bob; Thornton, Sean; Canter, Virginia;
RE: Havana Club
Attachments: Havana Club memo to State.pdf; Untitled.pdf
Havana Club memo Untitled. pdf (22 KB)
to State. pdf ...
Message-----
From: McBrien, Bob
Thanks,
Sean
2003-06-032 000095
J
DEPARTMENT OF THE TREASURY
WASHINGTON, D.C. 20220
f()IZ Di\ V1U I)
DtiZt':crotz
SU13J
OFFICE Or TEIZIWfUS-tvl rl''-i\N([ AND I:CONOi\1[(
S:\NCTIO:'\S POLICY
l)[f';\TL\H:NT Or
,
13'\l<B,\R."\ C lli\ii:I,\!I
0
1{LE ;; ,s D p
;\CTI:-\G DIRECTOR
OFFICI': Of FOIU:ICIN ASSETS CONTROL ("Oh\C")
Cl!Uc\N. UCFNSF Jn:<,;JUr: . .ST "-' Cl!-75:--J.:ii
FACTS: We h:w.; r.-:ccivc.d :mapj.llit:llicin t'n.llll Eopes & (irtly LU' (copy :\ltaclwd) :1 spc..:itlc
Jk.c,l.'t: <HIIIwri;ing uaiiSilc'lions ,elat<Od 10 in tile U.S. PrttCIH :Hhi jnHkmark O!.licc (rhc
''!'TO") o!' Rcgistr:Hion Ncl. l, ()J I, 651 oi'}!;\ , ... 1\ !\'1\ C UJ13 .\: Design ( thi.' 1-1 :\VAN.<\ CLUI:\
which is tlwn.:d by Ell'lpr.:,;:t Cuh;lll;t E.xportadtll':t de ;\lilllCIHOS y Producto:; Varios
d.ib/:t Cub:IC.\i)<.\rl. :1 Cubart Cllt\\'.
RVCI}lATlO:\S: The Cuban ;\,;:;cts Co11trr>l Rcgul:l:i,:1s, 31 C.f.R. 1\tn 515 (clw
"l<egtrl:tllll1.'i"), prnl11bit pcr;ons suiJJCCl' w rhe jlll'isdictton oi'rhe l!hitcd.St:liCS Ctom in
Jn or a CubJn any tH1IGS0 autltorizcd by a ,t.:t'lll.:ral
license or othcr\,i . .;;c ('X('lnpt. 5 J S.:-\27 (>t'thc R<.:gulutlon3 cuntalns a
aurhorizin.g 1\.':)pLcr to itltcl!"c('tu:d by
( ub:tn narionals. <.vllidi includes the rcg,istr:,tion cHid rcnc:1val in the f'TO of ailcl
rralkrnarb. The license i11} 'i 15.527 not cstcmlto" tnark that is rhc snr11c or
:=:itnilar to a tnark '':tiS in \',:irll :1 \hm wen:
l"'Y tile o.f(..:ub:!. li11CSS the {)\VtK'J' !l1ark c)!' th-.: b01W
t1a:-; c,:.:;pn:s:sly -
2003-06-032 000096
'.Ve n:,;pOlld to !he we S<!<"k rile vi-:w:; of the St;lt(; Dcparil1lc'lll \Ill illc'
in rl1is applic;uion.
2003-06-032 000097
From:
Sent:
To:
Subject:
Bob,
Liz
All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless othetwise noted
Farrow, Liz
Thursday, July 27, 2006 9 17 AM
McBrien, Bob; Thornton, Sean; Canter, Virginia;
RE: Havana Club
From: McBrien, Bob
Thanks,
Sean
2003-06-032 000098
I (b)(5) I
All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless otherwise noted Page 1 of 1
From: Szubin, Adam
To: Farrow, Liz
Cc: McBrien, Bob; Canter, Virginia;
Subject: RE: havana club
From: Farrow, Liz
To: Szubin, Adam
Adam,
Liz
From: Szubin, Adam
To: farrow, Liz
Cc: McBrien, Bob
Subject: havana club
Adam
1/24/2008
2003-06-032 000099
I (b)(5) I
To:
Subject:
McBrien, Bob; Hammerle, Barbara; Thornton, Sean; Farrow, Liz;
Re: Havana Club
From: McBrien, Bob
To: Thornton, Sean; Canter, Virginia; Farrew, Liz;
Sent: Wed Jul 26 19:39:18 2006
Sent: Wednesday, July 26,
Tp: McBrien, Bob; Canter,
Thanks,
Sean
200 6 7: 03 PM
Virginia; Farrow, Liz;
2003-06-032 000100
I (b)(5) I
- - - - - - - ~ - - - - - - - - - -
Sent:
To:
Subject:
Wednesday, July 26, 2006 7:36 PM
Canter, Virginia; McBrien, Bob; Farrow, Liz;
Re: Havana Club
-----Original M e s s a g e - - - ~
To: Thornton, Sean; McBrien, Bob; Farrow, Liz;
Sent: Wed Jul 26 19:08:16 2006
Sent: Wed Jul 26 19:03:15 2006
Thanks,
Sean
2003-06-032 000101
I (b)(5) I
I (b)(5) I
Message
otherwise noted
Sent: Tuesday, July 25, 2006 6:06 PM
To: Farrow, Liz;
----Original Message----
From: Farrow, Liz
2006 5:55PM
Thornton, Sean;
1/24/2008
4:58PM
To: Thornton, Sean; Farrow, Liz;
Subject: FW: Havana Club
Sean, Liz and.
Best regards,
2003-06-032 000102
Page I of l
I (b)(5) I
I (b)(5) I
Message
From:
Sent:
To:
Cc:
Subject:
All redactions on this page are made pursuant to FOIA Exemption (b)(6)
unless otherwise noted
Farrow, Liz
Wednesday, July 26, 2006 11 :42 AM
Canter, Virginia; McBrien, Bob
FW: Havana Club
Attachments: LEGAL-#31294-v1-Memo_to_OFAC - HC.DOC
Ginny and Bob,
Liz
4:58PM
Sean. Liz and.
1/24/2008
2003-06-032 000103
Page I of 1
I (b)(s) I

From:
Sent:
To:
Thornton, Sean

Subject:
called you back yet?
From:
25 16:57:56
Subject: fW: Havana Club
Sean, Liz and IIIII
Best regards,
1
2003-06-032 000104
All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless Page 1 of 2
otherwise noted
From:
Sent: Tuesday, July 25, 2006 1:.19 PM
To: Farr0w, Liz; Thornton, Sean
Subject: FW: Havana Club case draft copy
I (b)(5) I
1/24/2008
2003-06-032 000105
otherwise noted
Sent: Tuesday, July 25, 2006 11 :27 AM
To:
I just spoke to Liz. She said she would talk to you about it.
1/24/2008
2003-06-032 000106
Page 1 of 1
otherwise noted
Sent: Tuesday, July 25, 2006 11:00 AM
To: Farrow, Liz;
Subject: FW: Havana Club case/ uncleared a raft memo from State
Attachments: CU-75835 Ropes & Gray (Havana Club).doc

1/24/2008
2003-06-032 000107
rugc 1 u1 ,
I (b)(5) I
Message
otherwise noted
To:
Cc: Farrow, Liz
Subject: RE: lberotravel Vacations Holding/CU75899

10:15 AM
Cc: Farrow,
Subject: RE: Iberotravel Vacations Holding/CU75899

Best regards,

2006 9:59AM
To:
Cc: Farrow, Liz
Subject: Iberotravel Vacations Holding/CU75899

1/24/2008
2003-06-032 000108
!'age 1 u1 L.
I (b)(s) I
Message
Thanks.
l(b)(6)l
1/24/2008
2003-06-032 000109
otherwise noted
1111111111-----------------------------------
From:
Sent:
To:
Cc:
n
Subject: b,ilities while he is on leave
I will be on leave until Tuesday, August 1. During my absence, my work responsibilities will be divided up as set out below.
If there is an emergency and you absolutely need to reach me, I will have my cell phone . But please try
the relevant attorney below first (my family thanks you).
Pastors for Peace---
CAFC 11--
Remittances/Chavitos/Western Union --
Faculty Senate v. Winn (FL preemption)-- and Sean Thornton
ECDET v: Treasury (suit related to travel regs)---
Havana Club --
NCB and lNG-related matters ---
Business processes working group ---
Publishers litigation
2003-06-032 000110
----------------------
From:
Sent:
To:
Cc:
Subject:
Thanks.
Hammerle, Barbara
Saturday, July 01, 2006 12:16 PM
Farrow, Liz; T , Matthew CaAter
Thornton, Sean;
RE: Havana Clu
To: Hammerle, Barbara Canter
Cc: Thornton, Sean;
Subject: Havana Clu
Barbara, Ginny, Liz, andllll
I (b)(5) I
Havens and Barbara to discuss and argue for denial of a pending license request by Cubaexport to renew its
U.S. registration of the Havana Club trademark at the U.S. Patent and Trademark Office. The license request
was submitted on April 7, 2006, and OFAC forwarded it to State for policy guidance on May 15. OFAC is still
awaiting State's guidance. Unless Cubexport's trademark registration is renewed or USPTO takes other
action to protect the registration, the registration will expire this coming July 27.
-Matthew
2003-06-032 000111
-
1 unless otherwise noted
~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
Sent: 2006 11:59 AM
To:
arrow,
Cc: Thornton, Sean; mmerle, Barbara;
Subject: Havana Club trademark renewal reques
FYI -- I just received a call from
request on behalf of Cubaexport
sent this request to State on May 15.
license request was under active co
of Ropes & Gray inquiring about the status of the his April 10, 2006
renew the HAVANA CLUB trademark (for rum) at the USPTO. OFAC
noted that they must renew the mark by July 27. I let him know that the
For the State folks --please let me know if there is anything I can do to assist in your review of this license application.
Thanks.
-Matthew
- - - - - - - - - - - - - - - - - ~ 2 0 0 3 - 0 6 - 0 3 2 000112
All redactions on this page are made pursuant to FOIA
Exemption (b)(6) unless otherwise noted
111111111---------------------------------
From: Hammerle, Barbara
Sent: Thursday, April 06, 2006 12 30 PM
Thornton, Sean; To:
Cc:
Subject: letter
Thanks for an excellent job.
Sent: Thursday, April 06, 2006 12:18 PM
To: Hammerle, Barbara; Thornton, Sean;
Cc:
Subject: Havana Club letter
FYI -- I already received a call the attorney representing Cubaexport in the Havana Club. He
received OFAC letter faxed to him already in the process ofwriting in for a specific license
authorizing Cubaexport to apply for renewal of the Havana Club trademark. He did not seem particularly annoyed, but
actually somewhat pleased that I returned his call quickly and guided him into the licensing process.
-Matthew
2003-06-032 000113
otherwise noted
-....;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;:,;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;:;:;;;:;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;;:.. __
From:
Sent:
To:
Subject:
Importance:
Attachments:
Sean and .
Tuchband, Matthew
Thursday, April 06, 2006 10:04 AM
Thornton, Sean;----
Havana Club l e t t ~
High
CU-268932- (Havana Club) 4-6-061etter pdf
Here is a .pdf version of the Havana Club letter that Barbara signed and had faxed this morning. Since it is cc'd to the
PTO, my sense is that it will be put up on PTO's public website as part of Cubaexport's Havana Club trademark renewal
proceeding. I (b)(S) I
-Matthew
CU-268932
alladino (Havana Cl.
~ - - - - - - - - - - - - ____ _::2003-06-032 000114
WASHINGTON, D.C. 202.20
ViilL"Cfli N. P:illadJIIO
R,>pcs & Cir:1y LLP
12'> I c\.,.enue of the .'\mcricas
0kw Ynrk, NY Hl020-1!()4
lk: License i':<l. CU-
D.:ar illr ['ailadino:
APR
G _...
The purpo:<c oi't:1is kllcr i:;; ro <:larify rh:!l f_!,cnsc CU-7-4<138. is.>ucd bv the
Ofllcc nl' Foreign .-\<;;.;0(;; Con1n:,j .("OF.-\C"_) on M:11'Cll .:1, 201)5, J,;,s 1101 Rop:.:s
& Gray LU' l\>{.1:1y '' liling fcc IC !he U.S. 1\licnt ;u;d Tradcn1:1rk Of'licc: 1"['1'0"'! I;:Jr
rcncwJI o!' Rcgi 'iln1f.lvll No. I,().\ l Ji5 i (I he' "H.-'\ V1\ N /1. Cl.. LJ F! trad<:ill<ll k ") on b<"ll:il i of
Ernpn.:S<J Cubana [.\{!UI1:JdOnl de' .-'\lillle'lliOs y PrrducloS Varios d/bia CubaC.\flOrl
("Cubat':-<port"). In :1 December IJ. 2(){)(\. lcueJIo I'TO. IU>p:s & U.l' applied !'or
rl'ncw;il u::ilc 1-l.-\ V,\N!\ CLUO tr;Jdcu!Jrk and n:que;acd ih:1t !'TO dc:du,ithc ''-'':
ti"orn CJ R,1pe;; & Gt:J\' LLI' :I<:C:(>li!IL <h:H No. CU-74-'loS
<llllh<'>riz..:s p<t.Yill<'Jlt i>f the: fiiing
ticcno;.:: >io. C:U- 7448':! 10 '' ,ane.cll;trion pro,cc'ding. lt.st:nc:> t!Hll it is
issued "T'ursumill'O llll :lppll('Hiion dnlcd Janu:uy The section of
Liccn:-.c N,1 CU-74-'IS:), quoted in t'ull (with ,,mphasis :t<ldcd), :;l:lll'S:
Aillr<ln:;:lc,\ion;;-:n"c ;Jlllh.ori:ccd 10 011:1bk lh(' l.ici;n;:e,c !'!.Copes S:.
Cir;l:: LLI']. in ,onnc:cti .m[withj tile k,L;d rcpr<:sc-nt:Jtilllllf
Cubana l:q<0rtadNa ck \:nncntos y l'nxllicto; \'ari,ls
("Cul'<l<:8pon"), <llld H'J<':'lll:' C!ul) S .-\. in kg:d
pt'<)('L'<;din;;s in iile' Un1ted States n:l:ttcd to the HAV:\N:\ CL.UU
as desr;ribcd iii the ilflflli,c'llion, 10 r(cciv( payn1.::n! t(H
<;uch scrvin::: rcimi1l!FSGIIh!nl f(<r reiat,d lo ;;uch
services frnm n:rrion:1!s :ilrollghllan\.;ing channels. pro<ickd
funds <Ire 1:t'JLltcd fmn; Cub:1 10 the Unitc:d St:ll-c'5 ,jn n :hml-
counrry b:111k.
The onlv k.g:1lt-Jrocceding des<.:ribed i1-1 your ilnn';; J<Jnuary 2'o, 2ilt!5 :q:pl:c:1tion w;1s ''a
comrl8int Li cu>Tt'nlly p;;:n(fing in ih<' U.S. Di,;rrict C.e1ur1 ti.'r t-he Districl ,,f Columbia
:tg;1inst c>ur cii(:!::s :lncJ 1/:Jv:maClni.J llo!Jing,; -S.i\." Thi$ ,111
:q)pt-al i'n1111 lhc 0anccllation bc!'t'r\; the Unikd .Stncs
Tradcm:trk T1:inl and :\ppca! Board concerning the H.-'\ \''A!'-!\ C:LUI3
itJ ynur ktt<T Ill PT() (hkd D<:ccmb\.'1' l.'. 2005, vou f<rc:,scnt anurnbt:r ol
'vhy the H:\ V:\N/\ tn1de;11r[rk
2003-06-032 000115
th: paid. includ:ng tln.:- 1'tJ1Ju,vi;l: (I) the f(-c- is ttl ;he: stcuus
'i'i'" by 1hcll\ VA.\!.\ CU.!i.ltnltil'l!l:lrk rc,:;i-;tr:ttion, (2) !itllurc: io pae>'the.
Ccc: willtc'.<l.llt in oi'tiWTc!l!i:;trnintt, <:>) ii'1hc r<'gt.'il':llictt i;; 1101 nl<llill:tinecl,
lire Dislrili C:qun 11ill !)( ckJ:i,:d an I<) :1 r<:<!SOncd ,kciston ir, the
pending iit-i_::1!iOJl. ;tnd {:4j f":1ilun.: !\.:) !lliti!lWi!lthC \\ iht;
dcci,ion oi'thc l ..:llit,:d St<!ICS Tr:IC!\:lii<Jrk Tria. :11:!! .'\Jll"-'"1 Fl<>:trd "'!ttk it i:; ,)11 :q'ljlc:ll.
The . .;c ;trt;tl'llll'i!h do not c'lCtl.d rh'' litniic'cl :tHlll<Jrit.:llitlll cnnt::im:cl itt \,,. CU-
l)JJ\y lr:n)S:lltil\n,, in :.::ot
1
1H..'Ctiun \\i!h :he
C:otlrt l.itig:ttJOil, Ill thost' u:lii:':'<Ctinn,; that ,:1\:C c:O:it'fli<lltntllc Dt:itrict
liti::;:!lion. such :1;; p:tyntcJtl of :1 kc to initi:.t.: ;1 'L:p<tl:llc' ac!lclll b.::t'orc th'-'
PTO.
In }om ktt<'l' t>l i .1, 201)5, yr<'u also :trguc: thai t11c :c:ilurc: ofli1<: Distri.:t
C<:>urt :o :1 <kci:;ion, whi:h will .r,;;ult tiotn t!te l:tilur<:: 10 p:ty
rec. ,,,,.ill (kpri\'t' Ct!b:te:-:!h)r.l ()(the repn::,c:-nuHlon that
CJF,\C hilS authorizc.cl Rcpcs & (iray LU' to provide. Wc: with lint <H:gunKnt
!11 i;;suing License No .. Of :\C :iutltnri,.nl H,lpc;; 8: (inly U.f' f<) Gll)o';aiiC i11
Lo C1th<I'--'Xpoi:l. rcprL':Se:l1:HiL:)11 i:llll)' it1.1ht..:
the- District Coun. OFAC is twt in :1 il'):>iti'"' to the ,:xtcnt io l\'hich :tll)'
othl'T' :tdllli!liStr:lli\'C Or judicinl 11\il)' iHIV(' SUI11(' l'l'f<Nl (Ill rh:ttJiligilliOII, 1i11d.
in :Jny <.:vent. 0!o. (:U-7.c{.:fR8 dot.:s JH:l( purporr {O HUtlHJrizt (!IIY !i"lH.lsnctiOJtS
to sud1 otkr
We note tiltH this di:;cu:;si<".>ll d11<!S th!l in c\'ny W:t\' pn:j'wii<.:i' til<' :tbilit:' vi'H,'pcS &
Cirny LLI' t0 s.:p:mllc (;'(Jtl\ (JL\C to cng;tg<: in twn,:Jcttons r.;l;;r,,d
to tit( rCJll'W:d oi:' the i 1:\ VA;'.!:\ CLL: 1-l tr;ttklll:trk rcgiotr:il io11 :11 t!w I'TO. If' V\.lll wish lt.l
request such il c<pccitic: ,,r l'urrllcr f!:tiidanee r'i"<:>lll OF At:, Y''" by wi'iting
directly(<,! OFAC's Licctt::i11g Di1isw:,t. .')lt,>ul<i \'<.lll 1-w.v<: :1ny t"ttrtllc'r quc::tillils. p!e(lse
c'OII(ad l)cpllly. Chid C:t.'till:'c'! (F<!tYig.u ,\ sscts Contrnl,) <II :?iJ:::'-(>J 2-241 (J.
SitiC<:J'L'l.y,
Barbar:t C. 1-L!Jntmdc
.'\Cling
Clfiii:<:- <)!' FcH,,ign C'11llfOI
2003-06-032 000116
otherwise noted
1 1 1 1 1 1 1 1 1 1 ~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
From:
Sent:
To:
Subject:
I did, thank you.
-----Original Messaqe-----
From:
Sent: Friday, December 01
lncase you missed it:
http://marketplace.pu blicradio.org/shows/2006/11/30/PM200611305.html
TEXT OF STORY
KAI RYSSDAL: We're not quite in the right season for 'em anymore, but Mojitos have set rum sales in the
companies over the trademark of a legendary Cuban rum. From the Marketplace Jnnovations Desk at North
Carolina Public Radio, Janet Babin reports:
.JANET BARIN: To understand the Cuban trademark war between two rum makers, it helps to have
experience with the stuiT. Preferably, the good stuff.
NlCK ROBINS: OK, let's see what we got here .... All right."
It's caramel colored with an inviting taste, even for someone not used to hard liquor in the afternoon.
But not much more, if you're an American. The U.S. imposed an embargo against Cuban goods decades
ago, and Florida recently announced plans to strengthen enforcement against ofYenders. And Robins says
France-based Pernod-Ricard, its Cuban partner Cubaexport and Bacardi USA. Pernod has made Havana
Bacardi USA began selling its own version of Havana Club Rum in Florida in August, after the U.S. Patent
and Trademark Office refused to renew Pernod's Havana Club trademark. Bacardi spokesman John Gomez
.JOHN COM EZ: Bacardi does own the rights to Havana Club. Bacardi purchased the rights in the
That family made the rum in Cuba from the 1930s to the 1960s, when it fled Fidel Castro's regime.
1
2003-06-032 000117
decision about Havana Club's trademark was based on a congressional provision passed in 1998. lt prevents
non-U.S. company to procure an anticompetitive eenefit in a rum competition.
Muse says the Patent Office decision could threaten the trademark stability of hundreds of U.S.. products
sold overseas.- Despite the embargo,_s_Qme30Q_ brandshave the right to sell products in Cuba, from
Tyson Chicken to Wrigley's gum. Muse says this co{l!d bt:ancf enfo-rceJnell-t forll1osecaJi1paiiies.
MlJSE: Cuba under international law is now free to invalidate, cease registering, or take any other
Bacarcli doesn't have and doesn't need a trademark to sell Havana Club in the U.S. But it could run into
another kind of legal trouble. While Pemod's rum is made in Cuba. Gomez says Bacardi's ...
GOMEZ: ... It's, uh, made in Pue110 Rico.
professor Justin Hughes says it's illegal to market a product that's geographically misleading: .
JUSTIN HUGHES: Havana Club on a product that is rum not from Cuba, rum from the Dominican
But Bacardi spokesman Gomez says c0nsumers are smarter than that:
. it's very obvious that it comes from Puerto Rico.
made.
According to the Distilled Spirits Council, rum brought iri almost $1.8 billion in 2005, up 5.5 percent over
the year before. Bacardi continues to sell Havana Club in Florida, and is considering selling it in other states
too.
In Durham, North Carolina, I'm .Janet Babin for Marketplace.
2
2003-06-032 000118
otherwise noted

From:
Sent:
To:
Subject:
-19, 2006 12:16 PM
IX OS archive 18584 KB
__ _E'(I ::.please see below for the memo Matthew mentioned (as background).
---------------------------
FridaY, Jul( 14, 2006 5:53PM
Cc: Thornton, Farrow, Liz; Hammerle, Barbara; Canter, Virginia
-
Here are all the agency contacts and phone numbers you may need:
State (LIEB) --
PTO --
USTR find is number; Barbara may have it)
NSC (legal) --
NSC (policy)--
Have fun.
-Matthew
2003-06-032 000119
sometimes his phone doesn't work)
From:
Sent:
To:
Subject:
Thank you.
otherwise noted
30, 2006 12:57 PM
in Cuba in peril: Retaliation feared for U.S. refusal to accept rum brand
-----Original MessaJe-
From:
Sent: Wednesday, August 30, 2006 12:23 PM
To: Hammerle Barbara Tuchband, Matthew
Cc: iiiiiiiiiiiilii
Subject: in peril: Retaliation feared for U.S. refusal to accept rum brand
Trademarks in Cuba in peril: Retaliation feared for U.S. refusal to accept rum brand
Matthew 1-laggman - cClatchy Newspapers
National Post
MlAMl -In 1918 the Aunt Jemima trademark was registered in Cuba, and even after Fidel Castro seized
power in 1959, a steady stream of U.S. companies from Ace Hardware to United Airlines has continued to
register their trademarks in the island nation.
Despite the decades-long U.S. economic embargo that precludes most trade with Cuba, more than 400 U.S.
companies have registered in excess of 5,000 trademarks-- everything from McDonald's Golden Arches to
Nike's Swoosh and Pepsi. And until recently, Cuba had no problem registering and renewing
trademarks in the United States.
Now some fear the recent U.S. refusal to renew the Havana Club rum trademark claimed by a Cuban joint
venture and Bacardi's launch ofJ-lavana Club-- a brand it also claims -- has placed the delicate balance of
respecting other nations' trademarks in jeopardy. The recent developments also raise the possibility of
Cuban retaliation, experts say ..
Bacardi's tight with Cubaexport, a Cuban company that partnered with French liquor giant Pernod Ricard in
1993 to sell the rum around the world, has been simmering in U.S. courts, U.S. Congress and in the World
Trade Organization for a decade. But the United States' recent decision to invalidate Cubaexport's Havana
Club trademark registration really fanned the flames.
"Our government has done a real injustice that will come back to bite a lot of other companies," said
William Reinsch, president of the National Foreign Trade Council. The council, which is based in
Washington, represents corporate members such as Microsoft, Wal-Mart, Caterpillar and General Motors.
But Patricia Neal, a Bacardi spokeswoman, rejected the notion that the rum company's efforts endanger
other companies' trademarks in Cuba.
"All companies would fight to protect their brand," she said.
On Aug. 3, the U.S. Patent and Trademark Office said the Havana Club trademark would be
"cancelled/expired," although Cubaexport had tiled its renewal application correctly with a US$500 fee and
on time.
The U.S. Patent Office refused to accept the renewal after .1. Robert McBrien, the acting director of the
Office of Foreign Assets Control, wrote the office had received guidance from the U.S. State Department
"informing us that it would be inconsistent with U.S. policy."
1
2003-06-032 000120
That decision stems from a provision called Section 211 that was inserted in a 1998 budget bill. Sometimes
called the "Bacardi Bill," Section 211 has been criticized as a measure solely aimed at benctlting the rum
giant.
Now the recent Havana Club denial has raised c0ncerns that Cuba could return the favour by cancelling
U.S. trademark registrations based on the communist nation's own "policy" considerations.
Cuba could, for instance, cancel the trademarks for Levi's jeans or H!=!inz ketchup and sell its version in
island stores. Those products could filter into other markets, too, harming U.S. companies that have long
sought to keep fakes off store shelves abroad, said the U.S. National Foreign Trade Council.
Such a scenario could force U.S. companies to spend millions defending trademarks in many different
countries and make the Cuba market ever more difficult to enter if it ultimately transitions into a market
economy. And some think that clay may be sooner rather than later due to leader Fidel Castro's shaky health.
"Some day Cuba could say, 'The heck with it, we will not honour any of these (U.S.) registrations, because
you guys are not honoring ours,"' said Jesus Sanchelima, a Miami lawyer who has represented U.S.
companies in trademark cases in Cuba.
Cuba has threatened retaliation before.
In 2001, in a heated moment during Cuba's long-standing dispute with Bacardi, Mr. Castro said he had
given instructions to the Cuban rum industry to begin producing Bacardi. And he threatened that other U.S.
brand names could be in jeopardy. "Here we can produce Palmolive,.any toothpaste."
There's no evidence that he. made good on that threat but Cuba did briefly produce its own Bacardi rum af1er
the revolution.
"This decision (on the Havana Club renewal) invites retaliation by Cuba," said Mr. Reinsch. "We have been
assuming that they were waiting to see the outcome of this case before doing anything. Now that there is an
outcome, they wi II probably come to a decision."
Ms. Neal dismissed that notion, saying, "It is an old story that has never been acted upon and is a red
herring."
2
2003-06-032 000121
All redactions on this page are made pursuant to FOIA Exemption
(b)(6) unless otherwise noted
From:
Sent: , 2006 1:36PM
To:
Subject: to launch US Bacardi case.
Interesting, thank you.
mOriginal M4TE""""\
From:
Sent: ur ay, ugust 10, 2006 9:48 AM
To:
Subject: RE: Pernod to launch US Bacardi c(lse.
Thanks. There was also an interesting statement in the article in the San Franciso Chronicles "Will U.S. businesses
by Cuba's new compadres?"
From:
Sent: Thursday, August 10, 2006 9:29AM
To:
Subject: FW: Pernod to launch US Bacardi case.
fyi
Sent: Thursday, August 1
To:
Pernod to launch US Bacardi case.
Financial Times (London)
JENNY WIGGINS
Pernod Ricard is planning new legal action in the US alleging that Bacardi is misleading consumers by selling rum
made in Puert0 Rico in the US under the Havana Club brand name.
2003-06-032 000122
Bacardi recently started selling rum made in Puerto Rico under the Havana Club name in Florida. It cannot sell
Cuban rum 1n the US due to a trade embargo.
Pernod, which sells rum under the Havana Club brand in more than 60 countries globally, says it is not fair. to
consumers to sell rum under the Havana Club name that is not made in Cuba. The rum sold by Pernod and the
Cuban government under the same brand name is made in Cuba.
Bacardi says that rum, unlike champagne, has no geographic designation and that it has clearly stated where the
rum is made.
The action comes as Pernod and the Cuban government continue their battle with Bacardi over the rights to the
Havana Club brand, which originated in Cuba.
Pernod also plans to appeal against a recent decision by the US patent office not to allow it to renew the
registration of its trademark to the brand.
Pernod says the patent office's decision was based on controversial US legislation called "section 211 ,"which
was designed to protect trademarks belonging to businesses confiscated by the Cuban government after the
1959 revolution.
Trademark disputes and battles over brand names are common in the beverage industry. Diageo recently struck
a Pounds 28. 7m (Dollars 54.8m) agreement with Smirnov vodka, bringing an end to disputes over the rights to the
Smirnoff brand name.
Anheuser-Busch of the US has been in legal battles for years with Budejovicky Budvar, the Czech brewer., over
the l1Se of the name "Budweiser".
Meanwhile, Russian vodka brand Russian Standard and Pernod have been fighting over whether Stolichnaya
vodka, marketed by Pernod as "Genuine Russian Vodka", is really Russian.
20060810L 122.047
2
2003-06-032 000123
-0, 2006 929 AM
~ t o launch US Bacardi case.
Sent: Thursday, August 1
To: Mil
Subject:
Pernod to launch US Bacardi case.
Financial Times (London)
JENNY WIGGINS
Pernod Ricard is planning new legal action in the US alleging that Bacardi is misleading consumers by selling rum made
in Puerto Rico in the US under the Havana Club brand name.
Bacardi recently started selling rum made in Puerto Rico under the Havana Club name in Florida. It cannot sell Cuban
rum in the US due to a trade embargo.
Pernod, which sells rum under the Havana Club brand in more than 60 countries globally, says it is not fair to consumers
to sell rum under the Havana Club name that is not made in Cuba. The rum sold by Pernod and the Cuban government
under the same brand name is made in Cuba.
Bacardi says that rum, unlike champagne, has no geographic designation and that it has clearly stated where the rum is
made.
The action comes as Pernod and the Cuban government continue their battle with Bacardi over the rights to the Havana
Club brand, which originated in Cuba.
Pernod also plans to appeal against a recent decision by the US patent office not to allow it to renew the registration of its
trademark to the brand. .
Pernod says the patent office's decision was based on controversial US legislation called "section 211 ,"which was
designed to protect trademarks belonging to businesses confiscated by the Cuban government after the 1959 revolution.
Trademark disputes and battles over brand names are common in the beverage industry. Oiageo recently struck a
Pounds 28.7m (Dollars 54.8m) agreement with Smirnov vodka, bringing an end to disputes over the rights to the Smirnoff
brand name.
Anheuser-Busch of the US has been in legal battles for years with Budejovicky Budvar, the Czech brewer, over the use of
the name "Budweiser".
_________________ _:2:::::0_::03:::_-_:::,:06::_-0.32 000124
Meanwhile, Russian vodka brand Russian Standard and Pernod have been fighting over whether Stolichnaya vodka,
marketed by Pernod as "Genuine Russian Vodka", is really Russian.
20060810L 122.047
2 .
2003-06-032 000125
otherwise noted
-------------------
From:
Sent:
To:
Subject:
-
- 2006 6:52PM
Thornton, Sean
Weekly report
Please find my weekly report below.
Sean-
skst regards,

1
_________________ 000126
(b)(5)
I (b)(5) I
(b)(5)
I (b)(5) I
From:
Sent:
To: Tuchband,
Subject: RE: Call from (Bacardi)
Thank you.
Sent: Friday, April 21, 2006 9:12AM
To: Hammerle, Barbara
Cc:
Subject: Fw: Call from
Barbara,
(Bacardi)
In returning a Cuba call, learned that Bacardi believes it has an outstanding request to meet
with you on the Havana Club matter. As you can see from .. e-mail below, Bacardi still wishes to meet
notwithstanding the letter OFAC recently sent to Cubaexport regarding its current lack of authorization to
engage in renewal activities (including payment of fees) at the PTO .
directed Bacardi's counsel to submit a meeting request in writing to you, but we thought we should give
you this informal heads up as well.
-Matthew
From
Sent: Thu Apr 20 18:35:25 2006
Subject: Call frem (Bacardi)
Matthew,
I called (of Bacardi) back this evening in response to a call she had made to our office to
follow up on written requests Bacardi had apparently sent some time ago (as she described it, the original
request had been to meet with Robert Werner, and a second follow-up request had been made about a
month ago to meet with Barbara Hammerle). I explained to her that any request to meet with Barbara was
appropriately dir
1
ected to Barbara, and not made via our office. Because she had mentioned that the purpose
of the requested meeting had changed since the earlier letters were sent, I suggested that she clarify the issue
Bacardi would like to discuss in any new written request. I noted that my suggestion to put the request in
2003-06-032 000127
writing was merely to facilitate OFAC's consideration, and that I was not in any position to respond to the
substance of the request or to indicate whether a meeting would be possible.
Best regards,
- I (b)(6) I
2
2003-06-032 000128
~ ~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
From:
Sent:
To:
~ 2 0 0 6 642 PM
Tuchband, Matthew
Subject: RE: Call from (Bacardi)
I'd be happy for you to, as long as you think my language appropriate. If not I can revise and send back to you
or to both of you.
Sent: Thursday, April 20, 2006 6:41PM
To:
Subject: Re: Call from (Bacardi)
Thanks. Do you think I can forward your message to Barbara?
--}--Original Message-----
From:
Sent: Thu Apr 20 18:35:25 2006
Subject: Call from (Bacardi)
Matthew,
I called (.of Bacardi) back this evening in response to a call she had made to our office to
follow up on written requests Bacardi had apparently sent some time ago (as she described it, the original
request had been to meet with Robert Werner, and a second follow-up request had been made about a
month ago to meet with Barbara Hammerle). I explained to her that any request to mee.t with Barbara was
appropriately directed to Barbara, and not made via our office. Because she had mentioned that the purpose
of the requested meeting had changed since the earlier letters were sent, I suggested that she clarify the issue
Bacardi would like to discuss in any new written request. I noted that my suggestion to put the request in
writing was merely to facilitate OFAC's consideration, and that I was not in any position to respond to the
substance of the request or to indicate whether a meeting would be possible.
Best regards,

2003-06-032 000129
(Bacardi)
(of Bacardi) back this evening in response to a call she had made to our office to follow up on
n req aca ad apparently sent some time ago (as she described it, the original request had been to meet
h Robert Werner, and a second follow-up request had been made about a month ago to meet with Barbara Hammerle).
plained to her that any request to meet with Barbara was appropriately directed to Barbara, and not made via our
Because she had mentioned that the purpose of the requested meeting had changed since the earlier letters were
nt, I suggested that she clarify the issue Bacardi would like to discuss in any new written request I noted that my
estion to put the request in writing was merely to facilitate OFAC's consideration, and that I was not in any position to
!Spond to the substance of the request or to indicate whether a meeting would be possible.
1
2003-06-032 000130

From:
Sent:
To:
Subject:

Tuchband, Matthew;--
Cuba matters
Matthew
I wanted to apprise you of Cuba matters currently on my plate which may require some assistance while I am
tied up with Bayoil. subject of course to Sean's and Matthew's thoughts about my time and schedule. This is
off the top of my head, so I'll update you if I encounter other matters.
I don't mean to drop these things on you, just wanted to lay out the matters I've been working on to help think
about how best to proceed. I greatly appreciate your help, all the more so knowing that you're fully busy in
your own right.

I (b)(5) I
I (b)(5) I
Best regards,
I (b)(6) I
2
2003-06-032 000132
All redactions on this page are made pursuant to FOIA Exemption (b)(6) & (b)(7)(C) unless
otherwise noted
ry 21, 2007 10:03 AM
:Thornton,
Farrow, Liz;
447 Suspension
,Matthew;-
Best regards,

From: Thompson, Dale
Sent: Wednesday,
To:
Cc:
Matthew;
Subject:
Sean&-
Sent: Tuesday, February 20, 2007 5:46 PM
1
000133
I (b)(5) I
All redactions on this page are made pursuant to FOIA Exemption (b)(6) & (b)(7)(C) unless otherwise noted
Tuchband, Matthew;
Liz
-7646 CT-7447 Suspension letter. edits
Privileged & Confidential -Attorney Client Communication - Predecisional & Deliberative
Thanks,
Sean
---Original
From:
Sent:
To:
Cc:
Subject:
Privileged & Confidential -Attorney Client Communication - Predecisional &. Deliberative

2003-06-032 000134
Best regards,

-----Original Mess.a
From:
Sent:
To:
-----Original From:
Sent:
To:
Cc:
Subject:
-----Original ,.'"'''"oliiil
from:
Sent:
To:
3
2003-06-032 000135
I (b)(5) I
-ral Investigations
US Department of Treasury

-----Original M"""<ll..lt:--
From:
Sent:
To:
Cc:
Subject:
-----Original
From:
Sent:
I (b)(5) I
To:
Matthew;
Cc:
Subject:
-
-ral Investigations
US ,Department of Treasury

7 Suspension letter. edits
From: ....
Sent: February 20: 2007 1:31 PM
@.7692 CT-7646 CT-7447 Suspens1on letter-dits
File: CT-7692 CT-7646 CT-7447 Suspension letter.doc
4
2003-06-032 000136
From:
Sent:
To:
Cc:
Subject:
..
Thoughts?
Best regards,

All redactions on this page are made pursuant to FOIA Exemption (b)(6) & (b)(7)(C)
. ry 21, 2007 9:37AM
ton an; Tuchband, Matthew;
Farrow, Liz
7 Suspension letter- edits
Tuchband, Matthew;
rrow, Liz
Suspension letter. edits
2003-06-032 000137
- - - - - - - - ~ - - - - - - - - ~ - - - - - - - - - - - -
I (b)(5) I
Sent:
To:
Cc:
Subject:
Tuchband, Matthew;
Liz
Thanks,
Sean
..
2
2003-06-032 000138
All redactions on this page are made pursuant to FOIA Exemption (b)(6) & (b)(?)(C) unless otherwise noted
Best regards,

---Original Messa ......
From:
Sent:
To:
Cc:
Subject:
----Original Me<;sacJe---
From:
Sent:
To:
Cc:
Subject:
-----Original
From:
Sent:
To:
20, 2007 2:03 PM
Matthew;
Sean; Farrow, Liz
, 2007 1:54PM
Matthew; )Ill!
Thornton, Sean; ~ a . Liz
Suspension letter edits
0, 2007 1:51PM
Tuchband, Matthew;
Thornton, Sean; Farrow, Liz
7 Suspension letter edits
3
2003-06-032 000139
I (b)(5) I
-raJ Investigations
US Departrnent of Treasury

-----Original
From:
Sent:
To:
Cc:
Matthew;
Thornton, sean
Subject:
----Original
From:
Sent:
To:
Cc:
Subject:
-
-raJ Investigations
Office of Fmeign Assets Control
!!!!!!Fax
----Original Message-
7 Suspension Jette- edits
(b)(5)
From:
sent: b?rrv 20, 2oa7 1:31PM
To:
Subject: -7 - 46 CT-7447 Suspension Jetter. edits
File: CT-7692 CT-7646 CT-7447 Suspension /etter.doc
4
2003-06-032 000140
I (b)(5) I
(b)(5)
All redactions on this page are made pursuant to FOIA Exemption (b)(6) & (b)(7)(C) unless
otherwise noted

From:
Sent:
To:
Subject:
Thank you.
---- Originql Message-----
2007 5;49 PM
Thornton, Sean
RE: CT-7692 CT-7646 CT-7447 Suspension letter- edits
Sent:
To:
Cc:
Subject:
Twc:hband, Matthew; Kirby, Jimmy.; David, Clara
Liz
Suspension
Thanks,
Sean
-----0
From:
Sent:
To:
Cc:
Subject:
Matthew;
Thornton, Sean; Farrow, Liz .
Suspension
..
2003-06-032 000141
Best regards,

20, 2007 2:03 PM
'Sean; Farrow, Liz
cr-7447 Suspension letter-dits
I (b)(5) I
---Original Message-----
From: Thompson, Dale
2
2003-06-032 000142
All redactions on this page are made pursuant to FOIA Exemption (b)(6) & (b)(?)(C) unless otherwise noted
Cc:
Subject:
Thornton, Sean; Farrow, liz
RE: cr-7692 Cf-7646 Cf-7447 Suspension letter. edtts
-ral Investigations
US D rtment of Treasmy

From:
Sent:
To:
Cc:
Subject:
-----Original
From:
Sent:
To:
Cc:
Subject: Suspension letter-dits
-
I (b)(5) I
From: .
JJ692 crJ646 CT-7447 Suspension letter. edits
3
2003-06-032 000143
I (b)(5) I
From:
Sent:
To:
Cc:
Subject:
2007 5:02PM
atthew;----

..
2003-06-032 _______________
Best regards,

Original
From: 1
Sent:
To:
Cc:
Subject:

From:
Sent!
To:
Cc:
Subject:
Investigations
US Department ofTreasll!y

-----Original Messa
From:
Sent: 2007 1:40PM
2
2003-06-032 000145
To:
Cc:
Matthew;
Thornton, sean
Subject: Suspension letter. edits
-----Original MessatiiJ!I .. IJit
From:
Sent:
To:
Cc:
Subject: Suspension Jetter. edits
-
-raJ Investigations
Office of For(O!ign Assets Control
US Depmtment of Treasury

-----Original
From:
Sent: 20, 2.007 1:31 PM
To:
(b)(5)
Subject: CT-7447 Suspension letter. edits
File: CT-7692 CT-7646 CT-7447 Suspension letter.doc-
3
2003-06-032 000146
(b)(5)
From:
Sent:
To:
Cc:
Subject:
-raJ I11vestigations

0, 2007 1:54PM

I (b)(S) I
CT-7646 CT-7447 Suspension letter-dits
-
(b)(S)
-ral Investigations
1
________ _,__ ________ _
US Department ofTreasmy
~ F a x
-----Original Messa------
From:
Sent: ues ay, ebruary 20, 2007 1:31 PM
To:
SubJect: CT-7692 CT-7646 CT-7447 Suspension letter-dits
2
2003-06-032 000148
-------
& (b)(7)(C) unless otherwise noted
From:
Sent:
To:
Cc:
Subject: -7646 CT-7447 Suspension letter. edits
Helpful, thanks.
Original
From: 1
Sent: 2007 1:49PM
To:
Cc:
Subject:

From: I!!!
Sent:
To:
Cc:
Subject: Suspensio'n letter. edits
20, 2007i1ii:3i7iPM
Matthew;
CT-7646 CT-7447 Suspension lette- edits
-
-ral Investigations
. US Depmiment of Treasury

-----Original Messa------
From:
Sent: Tues ay, ebruary 20, 2007 1:31 PM
(b)(5)
To:JJ
SubJect: CT-7692 CT-7646 CT-7447 Suspension letter. edits
I (b)(5) I
I (b)(5) I
2003-06-032 _________________ _
All redactions on this page are made pursuant to FOIA Exemption (b)(6) & (b)(7)(C)

From:
Sent:
To:
Cc:
Subject:
Best regards,

- 2006 7:35PM
Matthew
RE: Response to EC Commissioners Letter to E on Havana Club
2003-06-032 000150
otherwise noted

From:
Sent:
To:
Cc:
-t 02, 2006 5:19PM

Subject: FW: Link to HC page
..
Further to my voice message, here is a link to the page where all PTO documents related to Havana Club are posted.
Because the site limits the number of people using it at any given time. it may not always work to cut and paste this link (in
which case you have to start from the home page, and run a search, which I can show you how to do), but I know Liz was
able to use it successfully earlier today and it worked for me just now. The OFAC response letter is the top document, i.e.
the first of two documents identified as an incoming fax dated August 1, 2006.
Best regards,

.....
From: 1!1!1
Sent: Wednesday, August 02, 2006 12:49 PM
To: Farrow, Liz
Subject: Link to HC page
http :I/ portal. uspto.qov/external/portal/!uUp/ s. 7 0 A/7 0 111/.cmd/ad/.ar/sa.qov. uspto. tow.actions. DetaiiViewAction/.c/6
0 CH/.ce/7 0 1 JJ/p/5 0 1 CH/.d/O?isSubmitted=true&details=&SELECT=US+Seriai+No& TEXT=73023981
)
2003-06-032
otherwise noted

From:
Sent:
To:
Subject:
Thank you.

Thornton, Sean
RE: Guidance has been FAXED to OFAC
Sent: Friday, July 28, 2006 1:34PM
To:
Subject: Fw: Guidance has been FAXED to OFAC
Fyi
From: McBrien, Bob
To: Canter, Virginia; Thornton, Sean; Millerwise, Molly; Farrow, Liz;-
Sent: Fri Jul 28 13:31:56 2006
Subject: FW: Guidance has been FAXED to OFAC,...
The OFAC letter to the applicant has been signed by me at approximately 1:25pm. Liz Farrow will advise all
when it is fax'd to the applicant.
2003-06-032 --
--------
_ ... __.......------ ----
otherwise noted
1111111111-----------------------------------
From:
Sent:
To:
Subject:

Thornton, Sean
FW: Press points for HC
PRIVILEGED & CONFIDENTIAL --ATTORNEY WORK PRODUCT-- PREDECISIONAL
Sean,
I've emerged from the WMD meeting (which I can report on when things quiet down), and am now doing my best to catch
up. Thank you so much for handling all this, and please let me know if I can help. 1 (b)(5) 1
Best regards,

F/om: Millerwise, Molly
To: Canter, Virginia; McBrien, Bob; Thornton, Sean; Szubin, Adam; Farrow, Liz;
Subject: Press points for HC
All- I have cleared the following points with Sean. Please let me know any last tweaks. l plan to give
these to press on the record that call about the issue.
Thanks,
Molly
200306032 000153

From:

Thornton, Sean
Sent:
To:
From: Thornton, Se<ln
Cc: Monborne, Mark
From: McBrien, Bob
Cc: Monborne, Mark
Sent: Thurscay, July 27, 2006 12:35 PM
Cc: Monborne, Mark
Importance: High
PRIVILEGED
Thanks,
Sean
2003-06-032 000154
From:
Sent:
To:
Cc:
Subject:
Attachments:
-
Thank you.
Best regards,

otherwise noted
006 10:03 AM
orn an
FW: FW: bootleg
OFAC Publishing GL OCC redline4.doc
1
2003-06-032 000155

From:
Sent:
To:
Subject:
---- l(b)(6)l

Farrow, Liz
Accepted: Status of Havana Club licensing matter
1
2003-06-032 000156
-------------------
From:
Sent:
To:

Thornton, Sean
Subject: FW: havana club
fyi
From: Szubin, Adam
To: Farrow, Liz
From: Farrow, Liz
To: Szubin, Adam
Adam,
Liz
From: Szubin, Adam
To: Farrow, Liz
Cc: McBrien, Bob
Subject: havana club
Liz-
2003-06-032 000157
I (b)(5) I
I (b)(5) I
111111111----------------------------------
From:
Sent:
To:
Cc:
- 20061:53 PM
Farrow Liz Canter, Virginia; McBrien, Bob
; Thornton, Sean
Subject: ub
Liz, Ginny and Bob,
Best regards,

From: Farrow/ Liz
Sent: Wednesday/ July 26
1
2006 11:42 AM
To: Canter McBrien Bob
Cc:
su
Ginny and Bob,


Sent: 4:58PM
To: Thornton/ Sean; Farrow/ Liz;
Sean, Liz and.
Best regards,
2003-06-032 000158
I (b)(5) I
otherwise noted

From:
Sent:
To:
Subject:
Attachments:

Tuchband, Matthew
FW: Havana Club
LEGAL-#31294-v1-Memo_to_OFAC - HC.DOC
Just FYI, in case you're curious and NOT to burden you
Hope you're enjoying a worry-free and relaxed vacation.
2003-06-032 000159
otherwise noted

From:
Sent:
To:
Subject:

Thornton, Sean
RE: Havana Club
No - do you think it's worth another call?
Sent: Tuesday, July 25, 2006 5:00PM
To:
-called you back yet?
From:
Sent: Tue Jul 25 16:57:56 2006
Sean, Liz and.
Best regards,
(b)(5)
2003-06-032 000160

From:
Sent:
To:
Subject:
Attachments:
Sean, Liz and.
Best regards,

Thmnton, Sean; Farrow, Liz;
FW: Havana Club
LEGAL-#31294-v1-Memo_to_OFAC - HC.DOC
2003-06-032 000161
From:
Sent:
To:
Subject:
otherwise noted
6 4:55PM
2003-06-032 000162
~ ~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
From:
Sent:
To:
Subject:
~ i i l ! l e s a u , 0061:37PM
; Farrow, Liz; Thornton, Sean
: avana lub case draft copy
(b)(5)
2003-06-032 000163
From:
Sent:
To:
Cc:
1:17PM
, an
Subject: RE: Havana Club case/ uncleared draft memo from State

Best regards,
-----0
From:
Sent:
To: Farrow, Liz;
Subject: FW: Havana

(b)(5)
uncleared draft memo from State
2 0 0 3 ~ 0 6 - 0 3 2 000164
I (b)(5) I

From:
Sent:
To:
Subject:
Great, thanks.
AM

2006 11:27 AM
. I just spoke to Liz She said she would talk t0 you about it
2003-06-032 000165

From:
Sent:
To:
Subject:
Attachments:
FYI, I'll take a lo.ok.
-----0
From:
Sent: ay,
To: Farrow, Liz;
Subject: FW:

Thornton, Sean
FW: Havana Club case/ uncleared draft memo from State
CU-75835 Ropes & Gray (Havana Club).doc
1
2003-06-032 000166
(b)(5)
From:
Sent:
To:
otherwise noted
6 10:30 AM
Subject:
Thank you.

2006 10:19 AM
.
Cc: Farrow, Liz
Jen,
-
10:15 AM
Cc: rrow,
-
Best regards,

From:
Sent: 2006 9:59AM
To:
Cc: rro.w,

2003-06-032 000167
-------------------------
(b)(5)
I (b)(5) I
Thanks.
,--,I (,...,.b)..,...,..( 6 ),....,I
2
2003-06-032 000168
From:
Sent:
To:
Cc:
Subject:

Best regards,

Cc: i
arrow,
10 15 AM
RE: lberotravel Vacations Holding/CU75899
2006 9:59AM

Thanks .

2003-06-032 000169
(b)(5)

From:
Sent:
To:
Subject:

Tuchband, Matthe:w
Cuba stuff
I know your schedule must be crazy, but I'd greatly appreciate a chance to talk through some Cuba this
afternoon or tomorrow before you go (Havana club and a bunch of files I'm ready to sign or send back). -has
called a meeting at 4 on TSP things but I'm otherwise around, focusing on the WMD regs but available whenever works
for you. Thank you!
2003-06-032 000170

I

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2003-06-032 000171
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Message
otherwise noted
From: Thornton. Sean
Page 1 of 1
To: liiiillr Farrow, Liz; Millerwise, Molly; szubin, Adam;
Subject: FW: URGENT: Please Clear attached rollout talking points and Q/A's for Havana c;tub Rollout
7/27/2006
2003-06-032 000172
1 1 1 1 1 1 1 1 1 ~ - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
From:
Thornton, Sean
Monborne, Mark
To:
Cc:
Original Message-
From: McBrien, Bob
Cc: Monborne, Mark
Sean,
-Original Message--
Cc: Monborne, Mark
Importance: High
PRIVILEGED
Gang,
Thanks,
Sean
1
2003-06-032 000173
- - - - - - - - - - - - - - - - - - ~ - - - - - - - - - - - - - - -
I (b)(5) I
I (b)(5) I
Department
to:---------
of the treasury
Office of Foreign
Assets Control
Chief Counsel
room: ___ date: ___ -------
I (b)(6) I
Senior Counsel
room
phone
2003-06-032 00017 4
I (b)(5) I
Message
From: Farrow, Liz
Sent: Wednesday, July 26, 2006 11 :42 AM
To: Canter, Virginia; McBrien, Bob
Cc:
Ginny and Bob,
Liz
From:
Sent: 4:58 PM
To: Thornton, Sean; Farrow, Liz;-
Sean, Liz and.
Best regards,
7/26/2006
2003-06-032 000175
Page 1 or l
(b)(5)
All redactions on this page are made pursuant to
FOIA Exemption (b)(6) unless otherwise noted
To: Farrow, Liz;
Subject: FW: Havana Club case/ uncleared draft memo from State
.__ _ _.
712512006
2003-06-032 000176
Page 1 or 1
Withheld in Full pursuant to FOIA Exemption (b)(5)
2003-06-032 000177
~ :
1 .....
2003-06-032 000178
otherwise noted
-----------------
Sent:
To:
Subject:

-nsibilities while he is on leave
vVhen you feel better, please check in with me on Havana Club. Thanks!
Sent: Friday, July 14, 2.006 6:2.9 PM
To: Hammerle, Barbara; Canter, Virginia; McBrien, Bob; Farrow, Liz
Cc:
Subject:
I will be on leave until Tuesday, August 1. During my absence, my work responsibilities i
If there is an emergency and you absolutely need to reach me, I will have my cell phone
the relevant attorney below first (my family thanks you).
;,asters for Peace ---
::;AFC 11--
Union--
=acuity Senate v. Winn (FL preemption)-- and Sean Thornton
::cOET v. Treasury (suit related to educational travel regs)---
-lavana Club --
\JCB and ING-related matters---
3usiness processes working group ---
::Jublishers litigation --
2003-06-032 000179
as set out below.
But please try
)
Page 1 of 1
From:-.
( ~ . J'
__ , ____ --------------------..-------..- - - - - - - - - - - - - - - - - - - - ~ ! < - ~ - - ~
Sent: Monday, June 26, 2006 3:33PM
Cc:
...
Washin-on DC 20220
Phone:
Fax: -
6/26/2006
I (b)(5) I
2003-06-032 000180
All redactions on this page are made pursuant to FOIA Exemption (b)(6) unless otherwise noted Page 1 of 1
DOCID:
Correspondent:
OFAC FACDB System
OFAC Correspondence History Report
DOC ID: CU-273201
Report Date: July 06,2006 User:-
CU-273201
Organization: Ropes & Gray LLP
Address: Fish & Neave IP Group, 1251 Avenue ofthe Americas, New York NY 10020-1104
Actual Party: Cubaexport
Subject: License to pay HAVANA CLUB registration renewal fee.
Correspondence Type: Public mail
Exec. Sec.#: (None)
Enforcement#: (None)
Other No: (None)
Legislative A(fair No: (None)
FOIA No: (None)
Document Date: 07-APR-06
Received at OFAC: 07-APR-06
Date Out:
Date Closed:
emental dtd 6/14/06 sent to .. /Licensing 6/16/06; fax dtd 06/27/06, sent to .. /lic and CC to:
--------------1-------- ... _______ ,.. ___ - .. ------- ---- ----------------------------- ---------------.---------- ------------------ -........... ___________________________________________ _. ___ _
tilT
http:/ /ofacoraprod.do.treas.gov/pls/fac/OF ACRprts.HistoryRpt ?p docid=2 73201
- .
7/612006
2003-06-032 000181
DOC ID:
otherwise noted
OFAC FACDB System
DOC ID: cu-27320 1
Report Date: April 07,2006 User:-
CU-273201
Correspondent:
Page '1 of 1
Address: Fish & Neave IP Group, 1251 Avenue ofthe Americas, New York NY 10020-i 104
License to pay HAVANA CLUB registration renewal fee.
Exec. Sec.#: (None)
Other No: (None)
Legislative Affair No: (None)
FOIA No: (None)
Received at OFAC: 07-APR..:o6
Date Out:
Date Closed:
- -------. ------- ..... -- ----- ------ --- ----- _____, .. _. __ --- .. - --=---------- ---
r-,
h1

{) C C:
httn://ofacoranrod.do. treas. !WV.In ls/fac/( 2003-06-032 000182 t?n doc i d=27320 1
4/7/2006
Apr-07"'06

11:1 a & GRAY LLP
+21 z 596 9096
T-993 P.001/009 F-972
ROPES & GRAY LLP
FACSIMILE TRANSMISSION
TO
Licensing Division
Matthew Tuchband, Esq.
(Office of Legal Counsel)
Liz Farrow (OF AC)
SENDER
001214.0001
COMPANY/FIRM RECIPIENT FAX
Office ofForeign Assets Control 202.622.1657
U.S. Department of Treasury
1500 Pennsylvania Ave, N.W.- Annex
202.622.0447
OATE SENDE.R'S FAX
RECIP:ENT PHONE
SENDER'S PHONE
April 7, 2006 646.728.2671 212.596.907.0
RE: TIME PAGES (INCLUOING COVER)
HAVANA CLUB 9
Tnit communication '5 Olllv lor lha oSt! o1 JCd1'1.Wle an:l.:n!y coMJir, tnJrls pr,vllr.ge.G.lnC 1: '1" ara on!llle r<e1DIIll1i. you m nmoy
r.otii;ea tnarllie 1s cronlbliad. 11 na,c :11 roury us lmmedWely lti9pr.ora. :f
complete,y Ole.Jsa DlCJ< 31 212.5QS.noo IOCn
--------------------------------------
tlSI IY[NUE OF THE lMEIItCAS, lfEw NT tID20 TEL lt2.SIC,,QQI FAX
II 0 $ T 0 N N E W Y 0 ( P A L 0 A l T 0 5 l U f R N C I C 0 W A S H t N G T 0 O.C
2003-06-032 000183
Apr-07-06 II: I 0 From-ROPES ' GRAY LLP
+ZIZ 596 9096
T-993 P 002/009 F-972
FISH & 1\IEA\/E IP GROUP
Gr;;... _,:
:!> CF
7
r-'c 'OF<K. ''''' ..
EC F01: I;E'' ,.::H ;::-.,,( !...7C S.:.l.' .VASH:H;.:: hs OC "'""''" COl';"\
VINCNT N. PALLADINO
DIRECT DIAL 212.596.!!0?0
DIRECT FA)( 64E.728.2B71
EMAIL VINCENT .PAu.AOINOOJ'lOPESGRAY .COM
April 7, 2006
VIA FACSIMILE- CONFIRMATlON BY FEDEX
Office of foreign Assets Control
U.S. Department ofTreasury
1500 Pennsylvania Avenue, N.W.- Annex
Washjngton, DC 20220
Attn: Licensing Division
License To Pay HAVANA CLUB Registration Renewal Fee
Dear Sir/Madam:
This letter is prompted by Ms. Barbara C. Hammerle's April 6, 2006letter (copy
enclosed).
Ropes & Gray was granted License No, CU-74488 authorizing it to receive payment
for services rendered and expenses incurred in connection with representing Cubaexpon in a
dispute with Bacardi regarding among other issues cancellation of Cubaexport's Uruted States _
Registration-No. 1,031,651 ofHAVANACLUB & Desigri (''tne HAVANA CLUB Registration").
Ropes & Gray interpreted that license to authorize it to incur the expense of renewing the
HAVANA CLUB Registration, which is at issue in the litigation, by paying the United -States
Patent and Trademark Office ('"PTO") registration. renewal filing fee and to receive payment for
that expense.
Ms. Hammerle's lener states that Ucense No. CU-74488 does not authorize Ropes
& Gray to incur and receive payment for the expense of renewing the registration. The letter
invites Ropes & Gray to seek a license authorizing Ropes & Gray to do so. Ropes & Gray
respectfully requests that such a license be granted.
2003-06-032 000184
Apr-07-06 II: I 0 l GRAY LLP
+212 596 9096
T-993 P 003/009 F-972
ROPES & GRAY LLP
April 7, 2006
Page 2
Ropes & Gray respectfuJly submits that in light of OF AC' s willingness to grant
License No. CU-74488, authorizing payment for large legal and other expenses incurred on
Cubaexport's behalf in maintaining the HAY ANA CLUB Regjstration, it would be reasonable to
authorize Ropes & Gray to incur and be paid for the minor expense ($500 or less) of maintaining
the registration through payment of the renewal fee.
In addition, Ropes & Gray submits that the grant of this further limited license is
reasonable in light of the follow.ing reasons discussed in our December 13, 2005 Iener (copy
enclosed) and summarized in Ms. Hammerle's letter:
(l) paying the fee is necessary to maintain the srarus quo by maintaining the
HAVANA CLUB trademark registration, (2) failure to pay the fee will result in
cancellation of the registration, (3) if the registration is not maintained, the
District Court will be denied an opportunity to reach a reasoned decision in the
pending litigation, and (4) failure to maintain the registration will effectively
overrule the decision of the United States Trademark Tria) and Appeal Board
while it is on appeal.
As we stated in ow- December 13, 2005 letter; we believe that "outcome would be and would be
perceived to be unfair." Although we appreciate that OFAC has determined these reasons do not
support payment of the renewaJ fee under License No. CU-74488, we believe they offer further
support for the grant of the additional license Ropes & Gray hereby requests.
Final1y, Ropes & Gray wishes to poim out thal renewing the HAVANA CLUB
Reg)stration before it would otherwise expire on July 27, 2006 does not mean the Court hearing the
litigation will affinn the PTO's Trademark Trial and Appeal Board decision that the HAVANA
CLUB Registration should not be cancelled. That issue will remain to be resolved by. the Coun,
along with Bacardi 's additional claims for declaratory and injunctive relief.
If the additional license is granted nunc pro rune to December 13, 2005 when Ropes
& Gray submined Cubaexpon's renewal application, the renewal fee wilJ be $400. If the additional
license is not granted nunc pro cunc, the fee wj}] be $500 ..
2003-06-032 000185

Apr-07-06 II: 10 ' GRAY LLP
ROPES & GRAY LLP
April 7, 2006
Page 3
+ZlZ 596 9096 i-993 P 004/009 F-972
Because the renewal period for the HAVANA CL lJB Registration will expire on
July 27, 2006, Ropes & Gray respectfully requests that any new license be issued well before that
date so that the PTO may be so advised. We appreciate OFAC's attention to this matter and
respectfully request that the additional license be granted.
VNP:emf
Enclosure
cc: Conunissioner for Trademarks
Sincerely yours,

Manhew Tuchband, Esq., Office of Legal Counsel, OF AC
Liz Farrow, OFAC .
(each via facsimile and FedEx)
2003-06-032 000186
---- -====
Apr-0706 II: I 0 From-ROPES ' GRAY llP +212 596 9096
WASHINGTON, D.C. 202.20
T-993 P.OOS/009 F-972
F AC No. CU-268932
6 2006
Ropes & Gray LLP
125l Avenue oftbe Americas
New York, NY l 0020-1104
Rc: License No. CU-74488
Dear Mr. Pa l\adino:
APR
The purpose of this letter is to clarify that License No. CU-74488, issued by the
Office of Foreign Assets Control ("OFAC") on March 4, 2005, does not authorize Ropes
& Gray LLP to pay a filing fee to the U.S. Patent and Trademark Office ("PTO") for
renewal of Registration No.1 ,031,651 (the "HAVANA CLUB trademark") on behalf of
Empresa Cubana Exportadora de AJirnentosy Productos Varios dlb/a Cubaexpor1
("Cuba export"). In a December J 3, 2006, Jetter to PTO, Ropes & Gray LLP applied for
renewal of the HAVANA CLUB trademark and requested thal 'PTO deduct the filing fee
from a Ropes & Gray LLP deposit account, arguing that License No. CU-74488
authorizes payment ofthe filing fee.
License No. CU- 74488 pertains to a cancellation proceeding. Tt states that it is
issued "Pursuant to an application dated January 26, 2005." The authorization see1ion of
License No. 74488, quoted in full (with emphasis added), stat'es:
All transactions are authorized to enable the Licensee [Ropes &
Gray LLP], in connection [with] the legal representation of
Empresa Cubana fxportadora de Ali111entos y Productos Varios
("Cubaexport"), and Havana CJub Holdings S.A. in legal
proceedings in the United States related to the HAVANA CLUB
trademark, as described in the application, to receive payment for
such services and reimbursement for expenses related to such
services from Cuban- nationals through banking channels,
the funds are routed from Cuba to the United States via a third-
country bank.
The only legal proceeding described in your firm's January 26, 2005 application was "a
complainl [] curren1ly pending in the U.S. District Court for the District of Columbia
against our clients Cubaexpor1 and Havana Club Holdings S.A." This complaint is an
appeal from 1he dismissal of a cancellation procer:ding before tbe United States
Trademark Trial and Appeal Board concerning the HAVANA CLUB trademark.
In your letter to PTO dated December 13, 2005,.you present a number of
arguments why the renewal fee for the HAVANA CLUB trademark should be :allowed to
2003-06-032 000187
Apr-07-06 II: I 0 F ro'm-ROPES l GRAY LLP +ZIZ 596 9096
T-993 p 006/009 F-972
be paid, including the following: (l) paying the fee is necessary to maintain the status
quo by maintaining the HAVANA CLUB trademark registration, (2) failure to pay the
fee will result in c(lncetlation ofthe registration, (3) if the registration is not maintained,
the District Court will be denied an opport\lnity to reach a reasoned decision in the
pending litigation, and (4) failure to maintain the registration will effectively overrule the
decision of the United States Trademark Trial and Appeal Board while it is on appeal.
These arguments do not extend the limited authorization contained in License No. CU-
74488, whjch covers only those transactions in connection with the pending District
Court litigation, to r.hose transactions that are external to the! pending District Court
litigation, such as the payment of a renewal fee to initiate n separate action before the
PTO.
In your letter of December 13, 2005, you also argue that the failure of the District
Coun to reach a reasoned decision, which allegedly will result from the failure to pay the
rrademark registration renewal fee, will deprive Cubaexport of rhe representarion that
OFAC has authorized Ropes & Gray LLP to provide. We disagree with that argument.
In issuing License No. C U ~ 74488, OFAC authorized Ropes & Gray LLP to engage in
transactions necessary to provide Cubaexport representation only in the litigation pending
before the District Court. OF AC is not in a position to gauge the extent to which any
other administrative orjudicial proceedings may h a v ~ some etfect on that litigation, and,
in any event, License No. CU74488 does not pw-port to authorize any transactions
related to such other proceedings.
We note that this discussion does not in any way prejudice the ability of Ropes &
Gray LLP to request separate authorization from OF AC to engage in transactions relateq
to the renewal of the HAVANA CLUB trademark registration at the PTO. lf you wish to
request such a specific license or further guidance from OF AC, you may do so by writing
directly to OF AC's Licensing Division. Should you have any further qu.estions, please
contact the Deputy Chief Counsel (Foreign Assets Control) at 202-622-2410.
Sincerely,
Barbara C. Hammerle
Acting Director
Offiee ofForeign Assets Control
cc: Commissioner for Trademarks, PTO
2003-06-032 000188
Apr-07-06 11:10 From-ROPES ' GRAY LLP
+212 596 9096 T-993 P.OOT/009 F-972
ROPES a GRAY LlP
1251 AVeNUE OF TH! AMERICAS . NEW YORK. loJY 10<1 2;2.S9o-'f000 F
SOSTON NEW YQRJ( PALO ALiO Sr<N WASHINGTON, DC www
VINCENT H. PAUADINO
C!f\ECT DIAl. 212.5&Ei.eo?O
OIAECT FAX 6<1(;.?26.2671
EMAll. VINCENT.PAUACINOOROPE6GAAY.COM
VlAFEDEX
Mr. David W. Mills
Chief ofLicens)ng
Dear Mr. Mills:
December 13, 2 005
We are enclosing a copy of our DecemberJ3, 2005 letter addressed to the
Commissioner for Trademarks in connection with an application filed by Empresa Cubana
Exportadora de Alirnentos y Productos Varios d/b/a Cubaexport ( .. Cubaexport") to renew United
States Trademark Registration 1.031,651 of the HAVANA CLUB & Design trademark and the
attachments to that Jener.
On behalf of our client Cubaexpon, Ropes & Gray has prepared the renewal
t application and undertaken to pay the filing fee that is required in order to maintain the registration
and intends to recover those expenses from Cuba export. Ropes & Gray .has taken these steps
pursuant to License No. CU 74488, which Ropes & Gray understands authorizes the finn to
represent Cubaexport in aJJ matters related to legal proceedings concerning the HAVANA CLUB
trademark, including Bacardi & Company Limited v. Cubaexport and Havana Club Holding, 1 :04-
CV -00519 (EGS) (D.D.C. 2004) (the "Litigation"), and to be paid for the services it renders and
expenses it incurs in the course of that representation. ln the Bacardi & Company
Limited ("Bacardi") has appealed a decision of the Trademarks Trial and Appeal Board (the
"Board") and requested cancellation of Registration No. l ,031 ,651.
While the Litigation is ongoing, Cubaexport seeks to maintain the status quo by
maintaining Registration No. 1,031,651 untillhe Court can decjde whether the Board's decision
should be affirmed or reversed and the regisrration maintained or cancelled. Given the current
posrure of the Litigation, no final Wlappealable dedsion on those issues will be rendered before
Regjstration No. 1 ,031 must be renewed.
2003-06-032 000189
Apr-07-06 II : 10
ROPES & GRAY LLP
Mr. David W. Mills
December 13, 2005
Page 2
- ~ = = = ~ - - - - - - - - - - - -
+212 596 9096
T-993 P 008/009 F-972
If Registration No. 1,03 J ,65 J is not maintained, the Court will be denied an
opportunity to reach a reasoned decision as to whether the registration should be canceJled, as
Bacardi claims, or whether the Board correctly dismissed Bacardi's cancellation petition, as
Cubaexport contends. That wj]J, moreover, deprive Cubaexport of the representation Ropes &
Gray has been authorized to provide by cancelbng the registration before the Court can decide
whether it should be cancelled or maintained.
That outcome would be and would be perceived to be unfair. The Board has
detennined that the reg] strati on was properly maintained in 1996 and that Bacardi failed to plead
any legal basis for canceJJing the registration in its cancellation proceeding. In Bacardi's appeal of
that ruling, the Coun has ordered Cubae:xpon and i1s co-defendant HCH to file renewed motions to
dismiss the Complaint, and the parties are currently engaged in Court ordered discovery concerning
those motions. Effectively overruling the Board's decision while it is on appeal to the Court by
declining to maintain the .srazus quo would be inappropriate. On the other hand,. if the registration is
maintained during the Litigation, the Court remains free to decide whether the decision should be
affll11led or reversed.
Paying the renewal fee will not dictate the outcome of the Litigation, but failing to
pay it might. If Ropes & Gray were deemed not authorized under the License (or otherwise) to
incur on Cubaexport's behalf the expense of renewing Registration No. 1,031,651 in the course of
its authorized representation ofCubaexpon, Ropes & Gray would be unable to provide Cubaexport
effective representation, and Cubaexport would be denied effective representation, in connection
with the Litigation (which has been commenced by Bacardi), and the Cow-t would be denied the
opporru.nlty to decide whether or not lhe registration should or should not be maintained.
To avoid that unfair result, to meet its ongoing obligation to represent its client, and
to affirm the Court's traditional authority to decide cases pending before it, Ropes & Gray on behalf
ofCubaexport has rel]ed .on License No. CU 74488 to mairitliln the status quo untii a decision in the
Litigation is rendered by the Court or by any court to which such a decision may finally be
appea]ed.
2003-06-032 000190
Anr-07-06 11:11
ROPES & GRAY LLP
:Mr. David W. Mills
December 13, 2005
Page 3
-+212 596 9096
T-993 P 009/009 F-972
We appreciate this office's continued anent-jon to this maner. lfwe can be of further
assistance, please do not hesitate to call me.
VNP:emf
) Enclosures
Sincerely,

cc: Matthew Tuchband, Office ofLegal Counsel, OFAC (encl.)
Clara Licensing Division, OFAC (encl.)
Corrunissioner for Trademarks
2003-06-032 000191
All redactions on this page are made pursuant to FOIA Exemption (b)(6)unless otherwise noted
DOC ID:
OFAC F ACDB System
DOC ID: CU-273201
Report Date: June 30, 2006 User:-
CU-273201
Correspondent: Palladino, Vincent N.
Page I of I
Address: Fish & Neave IP Group, 125I Avenue of the Americas, New York NY 1 0020-II04
Subject: License to pay HAVANA CLUB registration renewal fee.
Remarks
Exec. Sec.#: (None)
Other No: (None)
FOIA No: (None)
Received at OFAC: 07-APR-06
Date Out:
Date Closed:
Supplemental dtd 6/14/06 sent to .. /Licensing 6/I6/06; fax dtd 06127106, sent to .. /lic.and CC to:
'
i
" I ' ~ f'\
l\ ,;./' :. : . \
( . / ( : . ~ - i . ..
http://ofacoraprod.do. treas.gov/pls/fac/OF ACRprts. HistoryRpt?p docid=2 7320 l
2003-06-032 000192
6/30/2006
OFAC FACDB System
OFAC Correspondence History Repo
DOC ID: cu-277514
Report Date: May 17,2006 User:-
DOC ID: CU-277514
Correspondent: J.
Organization: Bacardi U.S.A., Inc.
Address: 21100 Biscayne Boulevard, Miami FL 33137-5088
Actual Party: -acardi U.S.A., Inc.
Subject:
Request for a meeting with Acting Director Hammerle to
discuss Cubaexport's request for a license to incur and
rec.eive payment for the expense of renewing the Havana
Club trademark registration; ref. letter dated May 9, 2006
(CU-276082).
Correspondence Type: Public mail Document Date: 16-MAY-06
Received at OFAC: 17-MA Y -06
Date Out:
Exec. Sec. #: (None)
Enforcement#:
Other No:
(None)
(None)
Legislativ.e Affair No: (None)
FOIA No: (None)
Date Closed:
v
--------------- 1---.. --..-------------------- ----------------- __________ ,_,_ ___
http://ofacoraprod.do.treas.gov/pls/fae/OF ACRprts.HistoryRpt?p.:.. docid=277 514
000193
5117/2006
,.-
B.A.CARDI U.S.A., INC.
LEGAL DEPARTMENT
FACSIMILE TRANSMITTAL SHEET
TO: PROM:
Mr. Tuchbnnc!, Office of Legal
Counsel
corvIP.i\NY:
DATE:
Office of Foreign Control M..'1y 17, 200(}
TOTAL# OF PAGES INCLUDING COVER:
J
0 PJI:.A:.:r.:
IXii\H;:-J!N(;: Yr1i,< f,,.,.irrnk 1< iNcnJ.o,l 011ly tot the tf the inJi-.1dml or :no1y tr. .vh,cn t .,n.J my C(>(IC\i" lnfnmw:mn
C:rnli .. k;nri,"tl :1nJ/1rt' ll,d.'( /.1.u., f f ;'Ire nnr- rh.:.: n.:c\rt:nl; r tMr; .;mrJoy*.:C Of
frrr
rh.:: you ;rrc hcr'\;h> th'.fl .tnr di:.ttriblll:"it.H"'\ (If nf commu,.,ir: ... O"n
1:. r'""'lub{wd. f( Y''U I'"Cl".t..'I\"C.:d thlj m nociry IU.."T"!.dr:t rr.tc..,honc. r:cr:tlm lh.: liri{pn4.l (a.cl'lfmik !Y)
i'lt the. :ll.)l'wc fir:e:r. m:nl. l"h:1nk -tu.
2100 lHSCA YNE BOULEVARD
MIAMI, FLORIDA .33137
TP..LEPHONE: (305) 573-8511
FASCIMILE: (305) 571-2730
2003-06-032 000194
.
!_:: .A .. . Cii\ .t.-2 ,2, :.: s. A ' N("
'\ . ,.J'..,..I .. ... - "'':' ,; .. .._ .....
VIA FAX (202) 622-1657
Ms. Barbara Hammerly
Acting Director
Dear Ms. Hammcrly:
May 16,2006
WRITI!R'S F'AX: <.'05) 57:327Jn
LEGALD!:P,\Rn1ENT
As a fol.low up to the attached letter dated May 9, 2006 from our
Covington & Bmling, I hereby request a meeting with you to discuss Cubaexport's
request for a license to incur and receive payment for the expense of renewing the
Havana Club trademark registration.
You Can contact me at the following address below. Thank you for this
consideration.
- 1 (b)(6)
Attachment
Sr. Vice President, General Counsel
& Secretary
cc: Mathew Tuchband, Office of Legal OFAC (w/o enclosures)
2100 RISC.\YN'F. BOUT.J'V,<\RO. M!AMl. FtOR!OA J)J.17.51l8S TEL: (J05) I !3ll5) 573-MOn
n,.,r. ;\1\Qf AND Tllf "" r ot:''l\.f. A. H. .. TII.\N .\1.\ nr. o " .. ..,,tJ,! ' {\o\.JI' ... -... v 1
2003-06-032 000195
ROPES & GRAY LLP
ONE METRO CENTER 700 12TH STREET. NW SUITE 900 WASHINGTON, DC 20005-3948 202-508-4600 F 202-508-4650
BOSTON NEW YORK PALO ALTO SAN FRANCISCO WASHINGTON, DC. www.ropesgray.com
January 26, 2005
VIA FACSIMILE(CONF. BY FEDEX)
Jay Ahn
Licensing Department
1500 Pennsylvania A venue, NW
Mr. Ahn:
Renee L. Stasio
202-508-4673
renee.stasio@ropesgray.com
. Pursuant to your request made during our January 25 telephone conversation, I
am providing you with additional information regarding the renewal of License No. CT-1943. I
had previously requested renewal of this license in my January 5, 2005 letter to David Mills (the
"Stasio letter").
Referring you to the second paragraph of the Stasio letter, I explained that a
complaint is currently pending in the U.S. District Court for the District of Columbia against our
clients Cubaexport and Havana Club Holdings S.A. (the "District Court case"). On behalf of our
clients, Ropes & Gray has filed a motion to dismiss that complaint, and we are currently awaiting
a decision from the Court on that motion.
In the past year, we have not had the opportunity to travel to Cuba despite the
authorization given to us by OFAC in License No. CT-1943. We have not traveled to Cuba
because we have not started to conduct discovery in the District Court case. Once the Court
rules on our clients' motion to dismiss, we will know whether we need to proceed with
discovery, which undoubtedly will require travel to Cuba to, among other things, conduct
depositions and collect documents.
For your convenience, I have attached the Stasio letter which included License
No. CT-1943. In addition, I have attached OFAC's January II letter in response to the Stasio
letter.
2003-06-032 000196
ROPES & GRAY LLP
Jay Ahn - 2 - January 26, 2005
I hope this letter provides you with the information you need in order to .renew
Ropes & Gray's license. Thank you for your attention to this matter . .Ifl can be of further
assistance, please do not hesitate to call me at (202) 508-4673.
RLS:cs
Enclosure
cc:
.:
Office of Legal Counsel, OF AC
censing Division, OF AC
2003-06-032 000197
ROPES & GRAY LLP
ONE METRO CENTER 700 12TH STREET, NW SUITE 900 WASHINGTON, DC 20005-39413 202-508-4600 F 202-508-4650
BOSTON NEW YORK PALO ALTO SAN FRANCISCO WASHINGTON, DC 'www.ropesgray.com
F U i N ~ I i L. STASIO
DIRECT DIAL 202.303.2429
DIRECT FAX 202.303.2918
EMAIL RENEE.STASIOOROPESGRAY.COM
January?, 2005
VIA FACSIMILE (CONF. BY FED EX>
Mr. David W. Mills
Chief of Licensing
Washington D.C. 20220
Dear Mr. Mills:
The law finn of Fish & Neave is currently the licensee under License No. CT -1943
pertaining to authorization for (a)" ... Licensee to engage in travel-related transactions involving
Cuba set forth in 31 CFR 515.560(c) of the Cuban Assets Control Regulations (the 'Regulations')
and such additional transa<:;tions as are directly incident to professional research relevant to legal
proceedings in the United States, including but not limited to conducting interv!ews and
depositions, and creating written and other records, as described in your application, subject to the
conditions set forth in Section 2 below; (b)" ... Licensee to provide legal services to, and receive
payment for such services from Empresa Cub ana Exportadora De Alimentos y Productos Varies
('Cubaexport'), a Cuban national; (c) multiple trips during the validity period of the license."
License No. CT -1943 is set to expire on March 31, 2005. A copy of this license is enclosed.
~ . . . .
On January 29, 2004, the Trademark Trial and Appeal Board of the United States
Patent and Trademark Office dismissed cancellation proceeding number 24,108. On March 29,
2004, Bacardi & Company Ltd. (the parent company of Galleon S.A.) and Bacardi U.S.A., Inc.
filed a complaint against Havana Club Holding S.A. a,nd Cubaexport, which was joined by the
Trademark Trial and Appeal Board to the cancellation proceeding. The complaint appeals the
decision of the Trademark Trial and Appeal Board and asserts additional claims against the
defendants. Fish & Neave has continued to represent Cubaexport in these proceedings.
2003-06-032 000198
)
Mr. David W. Mills
January 5, 2005
Page 2
Effective October 1, 2004, Fish & Neave became Fish & Neave LLP. Effective
January 1, 2005, Fish & Neave merged with Ropes & Gray LLP. The merged entity will conduct
business under the name of Ropes & Gray LLP. Ropes & Gray will be the law firm
representing Cubaexport in connection with the above-mentioned matters, Ropes & Gray hereby
requests a renewal of License No. CT -1943, or in the alternative, a new special license naming
Ropes & Gray as the ana giving Ropes & Gray the same rights as authorized in License
No. CT-1943. . .
Thank you for your attention to this matter. If we can be of further assistance, please
do not hesitate to call me at (202)303-2429.

RS:rs

Repee L. Stasio
cc: Office of Legal Counsel, OF AC
Clara David, Licensing Division, OF AC
2003-06-032 000199
WASHINGTON; D.C. 20220
Cuban Assets Control Regulations License No. CT-1943
To:
LICENSE
(Oranted under the authority of SO u.s.c. App . .S(b}, 22 u.s.c.
22 U.S.C. 6001 et seq . Proclamation 3447. and 31 CFR Parts 501 and 515)
Flsb & Neave (the "Licensee'1
125 1 A venue of the Americas
New York, NY 10020
ATIN: Martin A. Leroy
l. PurSuant to your application dated ll, Z004, the following is h.ereby licensed:
2. Tbis license is granted upon the statements and representations made in your application, or otherNise filed
with or made to the Treasury Department as a supplement to your application, and is subject to the conditions, among
"lthers, that you comply in all respects with all regulations, rulings, orders and instructions issued by the Secretary of the
.'reasucy under the authority cited above and the terms of this license.
3. The Licensee shall furnish and make available for inspection any relevant infoim.atiQn, records or reports
requested by the Secretary of' the Treasury or any duly authorized officer or agency of the Secretary.
4. This license expires on Ma.rebll, 2005, is not transferable, is subject to the provisions of31 C.F.R. Parts 50_1
and S 15, and any regulations and rulings issued pursuant thereto and may be revoked or modified at any time at the
discretion of the Secretary of the Treasury acting directly or through the agency through which the license was issued, or
any other agency designated by the Secretary of the Treasury. If this license was issued as a result of willful
misrepresentation on the part of the applicant or his duly authorized agent, it may, in the discretion ofthe Secretary of the
Treasury, be declared void from the date of its issuance, or from any other date.
S. This license does not excuse compliance with any law or regulation administered by the Office of Foreign
Assets Control or another.agency (including reporting requirement) applicable to the transaction(s) herein licensed, nor .
does it release the Llcensce(s) or tb..ird parties from civil or criminal liability for violation of any law or reitJlation.
---'--- ------------- -- .
Issued by direction and on behalf of the. of the Treasury:
OFFICE OF FOREIGN ASSETS CONTROL
. .t/.?,)<1:
Chief of Licensing
[Attention is directed to 19 U.S.C. 1392 and 1S95a, 18 U.S.C. 545, 18 U.S.C. 1001,
50 U.S.C. App. 16, and 31 CFR 515.701 et seq. for provisions relating to penalties.]
2003-06-032 000200
Ucense No. CTl943
Licensee: Fish & Neave
Pagel ofl
1- AUTHORIZATION: (a) This license authorizes the Licensee .to engage in travel-related
lnsactions involving Cuba set forth in 31 CFR 515.560{c) of the GUban Assets Control Regulations (the
Regulations') and such additional transactions as are directly incident to professional research relevant to legal
proceedings in the United States, including but not limited to conducting interviews and depositions, and
creating written and other records, as descnbed in your application, subject to the conditions set forth in Section
2 below.
(b) This license authorizes the Licensee to provide legal services to, and to receive payment for such services
from Empresa Cuban Exportation de Alimentos y Productos V arias ("Cubaexports"), a Cuban national.
(c) This license authorizes multiple trips durin& the validity period of the license.
'
Authority: 31 CFR S15.560(c), 515.564(b) and 515.801
SECTION 2- CONDITIONS: (a) The Licensee must provide each traveler with a letter continuing that the
named individUal will engage in authorized activities on behalf of the Licensee and cite the number of this
license.
(b) It' is a condition of this license that the inform each traveler of his/her responsibilities under the
Regulations, by, for example, providing each traveler with OFAC's "Travel Restrictions" brochure or other
document providing information concerning the travel-related transactions authorized by 31 CFR 5l5.560(c) of
the Regulations prior to travel.
..tCTION 3 .. WARNINGS: Except as explicitly a.uthorized in Section 1 above, nothing in this Uicense
authorizes aoy person subject to the jurisdiction of the United States to in any transaction or
activity prubibited by the Regulations. This license only authorizes transactions consistent
with a fuU-time schedule of activities autl,torized by this license.
SECTION 4 - RECORDKEEPING REQUIREMENTS: The Licensee is required to keep a list of
individuals whose travel transactions were authorized under this license and their actual dates.oftravel. Each
individual traveler must also retain records related to his/her travel transactions. Such records shall be made
available for examination upon demand for at least S years from the date of each transaction. A :repott from the
Licensee is required on activities undertaken pursuant to this license in conjunction with an application to renew
or extend this license.
SECTJQN _5.:- (a) for the of travel for which .
may be issued, please refer to our Comprehensive Guidelines far License Applications to Engage in
Related Transact!onslnvolving Cuba on our Internet website at www.treas.gov/ofac (Sanctions Programs &
Country Summaries - Cuba, Guidelines and Information).
(b) The Department of State publish.es consular information sheets (and, when necessarj, travel warnings) on
every country and territory in the world, including Cuba, which are available on the Internet at
http://travel.state.gov, or through the State Department's fax-on-demand service at (202) 647-3000. An
abridged version of consular information sheets can be heard by calling (202)
CTION 6- PRECEDENCE: The authorization contained in this license is limited to the facts and
..,,rcumstances specific to the application.

rll'HI P. lit'
2003-06-032 000201
D.C. 20220
Renee L. Stasio
Ropes & Gray LLP
700 12th H Street, NW, Suite 900
Washington, DC 20005-3948
RE: Letter dated January 5, 2005
Dear Mr. Stasio:
JAN 1 1 ,
'

This is in response to your letter on behalf of the Ropes & Gray LLP, requesting authorization to
engage in travel-related transactions involving Cuba.
The Cuban Assets Control Regulations, 31 C.F.R. Part 515 (the "Regulations"), administered by
the U.S. Department of the Treasury'.s Office of Foreign Assets Control, prohibit all persons
subject to the jurisdiction of the United States from dealing in property in which Cuba or a
Cuban national has an interest. This prohibition includes all Cuba travel-related transactions
unless such transactions are authorized in accordance with current licensing policy set forth in
515.560(a) and the related sections of the Regulations enumerated in 515.560(a).
We have reviewed your request and determined that you have not addressed a portion of the
relevant criteria listed in our Comprehensive Guidelines for License Applications to Engage in
Travel-Related Transactions Involving Cuba (the "Application Guidelines"), which are available
on our Internet website at your application is hereby denied.
Should you wish to reapply for a license,jllease review and address the Application Guidelines
for the relevant category of travel in order that we may more favorably consider your request.
'2003-06-032 000202
XI. TRAVEL RELATED TO LICENSED EXPORTATIONS
1. Exportations from the United States and exportations of 100%
u.s.-origin items from oversees entities - 31 CFR Sl5.533(e)
,,
Application Criteria for a specific license under Sl5.533(e):
1. Identify yourself. Furnish your name, address, a.nd daytime
phone number.
2. Identify your organization. If you are applying on behalf
of an organization, tell us about the organization: what type
of organization is it (e.g., organization, producer,
or seller of agricultural what are its
goals/objectives. If available, provide a copy of its miss.ion
statement', brochure, or' other literature describing -typical
activities it
3. Identify the category of travel. State your request for a
specific license under 515.533(e) of the Regulations to
engage in transactions in Cuba for the purpose
of marketing, sales negotiation, accompanied delivery, or
servicing of exports that are consistent with the licensing
policy of the U.S. Department of Commerce.
4. Identify the exportations involved.
(a) Humanitarian donations: The following must be provided
in the application: 1) a copy of the Department of Commerce
export license or other Department of Commerce authorization
listing the donated goods; 2) the name and address of the Cuban
consignee(s) or donee(s); and 3) a descriptibn of the plan of
delivery of the items inCub.a that correlates to the consignees
in the Department- of Commerce license. Travel-
related transactions will. oniy be authorized for purposes of
delivering the goods toconsignees pre-approved and identified
in the license issued by the Department of Commerce. Licenses
will not be issued under this section in connection with
carrying. or transporting small quantities of items such as
those that are eligible to be shipped in gift parcels.
Furthermore, licenses will generally authorize 5-days of travel
in Cuba for deliveries to Havana including arrival and
departure, but additi0nal days of travel for deliveries to
areas outside of Havana, Cuba, may be authorized where
appropriate.
(b) Commercial exportations: 1) Provide a description of
the goods that are or may be exported to Cuba and the purpose
of travel in regard to such exports: e.g., marketing, sales
negotiation, accompanied delivery, or servicing. 2) Provide
65
Revised September 30, 2004
2003-06-032 000203
either a copy of the validated license issued by the Department
of Commerce or a statement that the exportation from the United
States has been or will be done consistent with the applicable.
Department of Commerce export regulations. 3) If your
organization is not itself a producer or distr"ibutor of the
described goods, provide a letter from the producer
distributor stating that your organization directly represents
that entity in your proposed marketing, sales negotiation,
delivery, or servicing activities in Cuba.
5. Identify the persons traveling. Provide a statement of the
proposed number of persons who would travel under the authority
of this. license, their affiliationA.t.o .the applicant, and the
... ,
justification of their need to engage. in Cuba travel-related
transactions.
6. Certification of full-time schedule. Certify that the
proposed transactions will constitute a full-time schedule for
all the participants.that could not be completed in a shorter
period of time.
7. Extensions & renewals. When applying for extensions or
renewals of licenses, .. be sure to reference the license number
in your application. You must also include the following:
(a) an explanation why an extension or renewal is
necessary;
(b) a detailed report setting forth a record of all
activities undertaken pursuant to the original license; and
. (c) a complete copy of the license.
8. Sign your letter .. Your'l:Jignature is your certification
that the statements in your application are true and accurate.
Note: Consistent with the Trade Sanctions Reform and Export
Enhancement Act of 2 0 0 0 ( "TSRA," ) L Reg_ul_p._t_i_Qns..._p.r.mdde..-that--..::.. __
tra:ver-a:naotner -transactions ___ that are directly incident to the
"marketing, sales negotiation, accompanied delivery, or servicing of
exports that appear consistent with the export licensing policy of
the Department of Commerce" may he authorized by specific license.
This licensing policy does not extend to trade missions to discuss
transactions that are not currently authorized, such as direct U.S.
financing, with a view toward the eventual end of the embargo. It
also does not permit individuals whose qualifications have no
apparent nexus to this licensing criteria to travel to Cuba, whether
individually or in conjunction with other authorized travelers.
66
2003-06-032 000204
General transportation services relating to licensed exports are
authorized by general license in 515.533(a) of the Regulations.
Financing of these exports is restricted by TSRA to payment of cash
in advance or financing by third country financial institutions.
such financing may be confirmed or advised by a U.S"\ 'financia,l
institution. Vessels are authorized by general license under
515.550 of the Regulations to goods to Cuba are
authorized for export by the Department of Commerce or items that
are exempt from the embargo, e.g., informational materials,, provided
that: 1) they have not engaged in unauthorized trade, including
services in Cuba within 180 days and, 2) the vessels are _not
otherwise carrying goods or.passengers in which Cuba or a Cuban
national has an interest. by
tr'ansportation services companies must e;e'" specificaily licensed and
will be considered pursuant 515.533{e) 6f the Regulations.
For questions related to the licensing requirements for the.
exportation of commodities and humanitari'an goods from the United
States to Cuba, please contact the U.S. Department of Commerce,
Bureau of Industry and Security at (202) 482-4811
Examples:
Licensable
Example 1: A U.S. charitable organization has obtained authorization
from the U.S. Department of Commerce to deliver medicine and clothing
to a Cuban non-governmental organization and furnishes a copy of the
license and information on the organization's plan for delivery of
the goods to the consignees designated in the Commerce Department's
license.
Example 2: A consultant hired by a U.S. medical supply company
proposes to engage in travel-related transactions in CUba for the
purpose of meeting with Cuban ifficials to discuss the sale of
medical supplies to CUba eligible for exportation under Department of
Commerce rules.
Example 3: A u.s. association representing grain producers proposes
___ j:_Q__enggg__i_n __ t_rav:eL=-related-t-ransaee-i-ens--in--eul?a-to-dis'cuss-wtn----- ..
CUban officials the marketing and sale of grains in Cuba eligible for
exportation under Department of Commerce rules.
Example 4: Representatives of a medical supplies company wish to
attend a Cuba-sponsored trade fair on medical equipment and medicine
to market and sell medical supplies to Cuban entities that are
eligible consignees under Department of Commerce rules.
Example 5: A seaport authority wants to travel to Cuba on its own
behalf for a brief visit to discuss the marketing and sale of
products that would be exported through that particular seaport to
67
2003-06-032 000205
Cuba. Under current licensing policy, travel to Cuba by a seaport
authority may be licensed once every consecutive 12-month period.
Example 6: A state's department of agriculture wishes to send a
delegation to CUba consisting of state employees and,local producers
to market products and negotiate contracts of agricultural goods
produced in the state.
Example 7: A U.S. shipping company that provides cargo shipping
services wishes to send its full-time employees to Cuba to discuss
the delivery of its transportation services in order to enter into
contracts with U.S. exporters who want their goods shipped to Cuba.
Not licensable
Example 1:
establish a
Cuban city
within the
City officials se.ek a license to travel to Cuba to
sister city'relationship with government officials
or province. Travel to CUba for this purpose is not
scope of current licensing policy.
of a
Example 2: A lawyer or consultant wants to obtain a license to
market his ability to promote the sale of agricultural commodities in
Cuba to prospective clients. Any person seeking to broker sales on
behalf of companies that are eligible to sell their commodities under
license from the Department of Commerce must have already been
retained for that purpose.
Example 3: Employees of a general trade council propose to travel to
Cuba to identify and negotiate the sale of agricultural products but
they are not directly representing specific companies. Absent a
letter from the producer or distributor stating that the general
trade council directly represents a produced or distributor of a.
category of commodities eligible for export to Cuba and that the
producer Qr distributor is interested in export .. of its products to
Cuba, such a request would not be.granted.
Example 4: An entity or individual wants to obtain a license to
organize and hold a trade fair in Cuba. The activity is inconsistent
with current U.S. foreign policy and will not be licensed.
Example 5: A company that provides inspection and testing s e r v i _ ~ ~ s __
-.. ---f0r- Ca-J;go- shippers-wshest:C>traverTo Ciioa -Fofiorcr tec-hnical- '
discussions with Cuban officials for the purpose of
68 Revised September 30, 2004
2003-06-032 000206
entering into a contractual agreement to provide services directly to
a CUban national. These services go beyond the type of activities
permitted under this licensing provision.
Mailing Address: Applications for specific licenses should be
submitted to:
Licensing Division
U.S. D.epartment of the Treasury
1500 Pennsylvania Avenue, N.W.
Washington, D.C. 20220
Tel. 202/622-2480
"
Internet website at www.treas.gov/ofac Programs & Country
Summaries - Cuba, Guidelines .and information)
------------
------------
69
2003-06-032 000207
Text of Regulatory Provision for 515.533:
515.533 Transactions inCident to exportations from the United States and reexportations ofU.S.-origio
items to Cuba; negotiation of executory contracts.
(a) AJI transactions ordinarily incident to the exportation of items from the United States, or the
reexportation ofU.S.-origin items from a third country, to any person within Cuba are authorized,
provided that:
(1) The exportation or reexportation is licensed or otherwise authorized by the Department of Commerce
under the provisions of the Export Administration Act of 1979, as amended (50 U.S.C. app. 2401-2420)
(see the Export Administration Regulations, 15 CFR 730-774); and
. : j, I '
.... ,. . ;
(2) Only the following payment and financing terms may be used:
(i) Payment of cash In advance;
(U) For authorized sales of agricultural items, financing by a banking institution located in a third
country provided the banking institution is not a designated national, U.S. U.S. permanent
resident alien, or an entity organized under the laws of the United States or any jurisdiction within the
United States (Including foreign branches). Such financing may be confirmed or advised by a U.S.
banking Institution; or
(iii) For all other authorized sales, financing by a banking institution located in a third country provided
the banking institution is not a designated national or a person subject to the jurisdiction of the United
. States. Such financing may be confirmed or advised by a U.S. banking institution.
Note to paragraph (a): The transactions authorized by this paragraph include, but are not limited to, aU
transactions that are directly incident to the shipping of specific exports or reexports (e.g., Insurance and
transportation of the exports to Cuba). Transactions that are not tied to specific exports or reexports,
such as transactions involving future (non-specific) shipments, must be separately Ucensed by OF AC. For
the waiver of the proliibitions on entry into U.S. ports contained in 515.207 for vessels transporting
shipments of items between the United States and Cuba pursuant to this section, see 515.550.
(b) Persons subject to the jurisdiction oftbe United-States are authorized to engage in all transactions
ordinar.ily incident to negotiation of and entry into executory contracts for the sale of items that may be
exported from the United States to Cuba or 100% U.S.-orlgin items that may be reexported from a third
country to Cuba consistent with the export licensing policy of the Department of Commerce, provided
that performance of such executory contracts is expressly made contingent on the prior authorization by
. - the Department of Commerce. - - - -- . -
Note to paragr-aph (b): This paragraph does not authorize transactions related to travel to, from, or
:within Cuba. See paragraph (e) for a statement of specific licensing policy with respect to such
transactions.
(c) This section does not authorize:
(1) The financing of any transactions from any blocked account.
(2) Any transaction involving, directly or indirectly, property in which any designated national, other
than a person located in the country to which the eipor:tation or reexportation is consigned, has an
interest or has had an interest since the effective 4ate set forth in 515.201 of this part.
70
2003-06-032 000208
(d) [Reserved!
(e) Specific licenses may be issued on a case-by-case basis authorizing the travel-related transactions set
forth in 51S.560(c) and other transactions that are directly h1cident to the marketing, sales negotiation,
accompanied delivery, or servicing of exports that appear consistent with the eiport or re-export
licensing policy of the Department of Commerce.
71
2003-06-032 000209
All redactions on this page are made pursuant to FOIA Exemption (b)(6)unless otherwise noted 1 of 1
OFAC FACDB System
DOC ID: CU-261038
Report Date: February 21, 2006 User:-
DOC ID: CU-261038
Correspondent: -
Organization: European Union of the European Commission
Address: Ambassador, 2300 M Street, Washington DC 20037
Actual Party: Havana Club
Copy of Jetter addressed to Ambassador Robert Portman
from European Commissioner Mandelson regarding the
Subject: WTO dispute on Section 211 ofthe Omnibus
Approriations Act of 1.998 (rightful owner of the US
registration of the Havana Club).
Exec. Sec.#: (None)
Other No: (None)
Legislative Affair No:. (None)
FOIA No: (None)
Document Date: 24-JAN-06
Received at OFAC: 25-JAN-06
Date Out:
Date Closed:
59
tr dtd 01/30/06, sent .. on 02/08/06; copy of fax dtd 02/14/06, sent to-OCC
\ +-\ tn .. \ c __ .\
_.-,
\ Vt\-o,
I---- -------
( Ut'-- h_S:-:o><?(-
http://ofacoraprod.do. tteas.gov/pls/fac/OF ACRprts.HistoryRpt?p _ docid=261 038
2003-06-032 00021 0
2/21/2006
}
'
OFAC FACDB System
DOC ID: CU-261038
Report Date: February 1.5, 2006 User:-
DOCID: CU-261038
Correspondent:-
Organization:
Address:,
Actual Party:
Subject:
European Union -Delegation of the European Commission
Ambassador, 2300 M Street, Washington DC 20037
Havana Club
Copy of letter addressed to Ambassador Robert Portman
WTO dispute on Section 211 of the Omnibus
Approriations Act of 1998 ( rightfull owner of the US
registration of the trademark Havana Club).
Correspondence Type: Public mail Document Date: 24-JAN-06
Exec. Sec.#: (None)
Other No: (None)
FOIA No: (None)
Date Out:
Date Closed:
http://ofacoraprod.do.treas.gov/pls/fac/OF ACRprts.History Rpt?p _ docid=26 j 038.
2003-06-032 000211
Page 1 of 1
/
2/15/2006
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recipient. or the employee or agent responstl'lle for delivery to the recipient. you are hereby notified that any use. copying, dtsdtV"""
or dissemination of this-communication may he subject to legal restriction or
\ '-.'Y?J/GOLDW'/!OI\J771.l
All redactions on this page are made pursuant to FOIA Exemption (b)(6)unless
otherwise noted
OFAC FACDB. system
DOC ID: CU-261038
Report Date: February 15, 2006 User:-
DOCID:
Correspondent:
Organization:
Addre'ss:
Actual Party:
Subject:
CU-261 038
European Union- Delegation of the European Commission
Ambassador, 2300 M Street, Washington DC 20037
Havana Club .
Copy of letter addressed to Ambassador Robert Portman
WTO dispute on Section 211 ofthe Omnibus
Approriations Act of 1998 (rightful! owner of the US
registration of the trademark Havana Club).
Correspondence Type: Public mail Document Date: 24-JAN-06
Exec. Sec.#: (None)
Enforcement#:
Other No:
(None)
(None)
.FOIA No: (None)
Date Out:
Date Closed:
59
Page 1 .of 1
tr dtd 6ll30/06, sent to. by. on.62/68766;copy of fax dtd' o2ii4J06, sent toMT/bccbyllt
http:/ /ofacoraprod.do. treas.gov/pls/fac/OF ACRprts.HistoryRpt?p _ docid=261 03 8
2003-06-032 000213
2/15/2006
T CO
TO
FIRM
CITY
FAX
PHONE
NO. OF PAGES
DATE
f MESSAGE:
I
I
FROM
PHONE
E-MAIL
TIMEKEEPER 10
CLIENT NO.
h. ELL E \' DR 'r' E IJ A R R Efl 12 8 0 8 7 5 3 3 t 0
FR
P.Bl
-
Washington, DC
202-622-1657
3 (including this page)
Febru(ll'y 14, 2006
KELLEY
DRYE
KELLEY DRYE & WARREN LLP
101 AVENUE
NEW YORK. NEW YORK 1 0178
(212) 808-7800
FAX (212) SOB-7897
.-
.. -
:.:.- ..
,_ ....... .......
'./" -::

U1
,.--,1 ;.:,
NEW YORK. NY
WASHINGTON, DC
TY_!:jONS CORNER. VA
CHICAGO,IL
STAMFORD, CT
PARSIPPANY. NJ I
BRUSSELS
AFFILIATE
JAKARTA I
MUMBAI
IF PROBLEMS OCCUR DURING 'TRANSMISSION PLEASE CALL (212) 808-5035.
The contained in this facsimile mossage is intended for the of the individual or entity to whicM it is addrB$Sed and may contain
inform:olticn thst is priviiGged. ccnfrdential ::>nd exempt from disclo.sure under law. If tne rllJd.er of lhis no! the lr,tended
recipient, or the employee or agent responsible for delivery rc ;,.,tended recipient, you are hereby notifil'!c:! that 2ny copying.
or dissemination of this communication may be subject to legal r&Stricrion or sanction.
i'n'Dl/GOlDW/lCS3773.1
2003-06-032 000214
}
I
i
otherwise noted
Correspondence Cover Sheet
Page 1 of l
Doc 10: CU-258980 Received: 13-JAN-06 Dated: 12-JAN-06 Initials:
Due Date: Exec Sec No.: Enforcement No.: Other Ref No.:
From:
Organization: Bacardi U.S.A_, Inc.
Address: 2100 Biscayne Boulevard
Miami, FL 33137-8600 -
Disposition cc
tnitial Assignment
Dire'ctor
Blocked Assets
Civil Penalties
Compliance

FTD
IT
lnt'l Programs
Licensing
Policy
Chief Counsel
Sr. Advisor/Records
..
5e J
Leg Affairs No.: FOIA No.:'
Actual Party: Ropes and Gray
Subject: Report about unlawful and improper use of license CU-74488.
Special:
II
Control Copy to Director
Reassign 2 Reassign 3
{).. U>

to
7
1'Y1etf-cl--4w

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1"\-<-t..d 1-t> k (__Cja rd_/11 ;._.Jed
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File lllitials: Date:
.R.-e_m.fl_rk.s
1ttp://ofacoraprod.do. treas.gov/pls/fac/OF 000'215 -
".-.... ';" ..
... -... ... ...:..
VIA EMAIL.& FEDERAL EXPRESS
Mr. Robert Werner
Director
1500 Pennsylvania Ave., N.W.
Wasrungton, D.C. 20220
Dear Mr. Werner:
January 12; 2006
.WRJTER'S F.<\X:
LEGAL DEPARTMENT
We are writing to bring to your attention an unlawful and improper attempt to use
a license issued by the Office of Foreign Assets Control (OF AC) for a transaction not
authorized by the license, all in detriment to Bacardi's interests. We request that OFAC
investigate the matter, confmn that the attempted use is unauthorized and take such other
action in safeguard of its authority as may be appropriate.
The license at issue is License No. CU-74488 (the License), which authorized
Ropes & Gray LLP (Ropes & Gray) in connection with its representation of Empresa
Cubana Exp6rtadora de Alimentos y Productos Varios (Cubaexport) in legal proceedings
in the United States related to the HAVANA CLUB trademark, ''to receive payment for
such services and reimbursement . for expenses related to such services from Cuban
nationals." Cubaexport is a defendant in a pending court case, Bacardi & Company
Limited v. Cubaexport et al., 1 :04-CV -00519 (EGS) (D.D.C. 2004) (the LawsUit) in
which Bacardi is seeking, among other cancellation of Registration No. 1,031,651
for the trademark HAVANA CLUB & Design (the Registration) and reverSal of a
decision of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark
Office (USPTO) that upheld the validity of the prior ( 1996) of :the Registration ..
On or about 14 December 2005, Cubaexport filed with the USPTO an application
for renewal of the Registration. In a letter attached to the application, Ropes & Gray
invoked the License and argued that it authorized such renewal. The included a
copy of a letter, dated 13 December 2005, in which of the law I (b)(6) I
firm Ropes & Gray, informed Mr. David W. Mills, of the Office of
Foreign Assets Control, that his firm was taking the position that it was authorized under
the License to pay the renewal fee. (Attached as Annex A is a copy of Cubaexport'.s
filing, as it appears on the USPTO database. The second page of the License does
appear on the database.)
2100 BISCAYNE BOULEVARD, MIAMI, FLORIDA 33137-5088 TEL: (305) 573-8511 I (305) 573-8600
kACARDI.AND THE BAT DE VIC All REC:ISTEkED TR ..... DEI\!Aft.K.S OF 8:1CMWJ /.: LIMiTF.O.
2003-06-032 000216
,.
Mr. Robert Werner, Director
January 12, 2006
Page2
By letter dated yesterday, Bacardi has filed with the USPTO a letter opposing
Cubaexport's renewal 0f the Registration. (Attached as Annex B is a copy of Bacardi's
filing with the USPTO.) In the letter, Bacardi explains to the USPTO that the
Registration is property in which Cuba or a Cuban national has an interest; that renewal
of the Registration is therefore a prohibited transaction absent a license from OFAC; that
in the circumstances of this case such renewal is excluded by 31 C.F.R. 5l5.527(a)(2)
from the general license of 31 C.F.R. 515.527(a)(l); and that, consequently, in the
absence of a specifie license from OF AC, such renewal is unlawful. See 3 I C.F.R.
5 I 5.201; 515.203; 515.306; 515.309 to 515.313; 515.527(a)(2).
As Bacardi points out iri its letter to the USPTO, Cubaexport's attempt to rely on
the License is groundless. The License was granted to Cubaexport's counsel, Ropes &
Gray, to receive payment from Cuban nationals for fees and expenses related to the legal
representation of Cubaexport and Havana Club Holding S.A. According to Ropes &
Gray's letter to the USPTO, the License authorizes
"All transactions ... to enable the Licensee [Ropes & Gray], in
connection [with] the legal representation ofEmpresa Cubana Exportadora
de Alimentos y Productos Varios ("Cubaexport"}, and Havana Club
Holding S.A. in legal proceedings in the United States related to the
HAVANA CLUB trademark ... to receive payment for such services and
reimbursement for expenses related to such services from Cuban
nationals."
1
The plain wording of the License authorizes Ropes & Gray to receive payment for
legal fees and reimbursement of expenses related thereto. It does not authorize
Cubaexport to seek or obtain renewal of the Registration. Accordingly, Cubaexport and
the licensee are .improperly seeking to apply the license to an unrelated transaction. That
attempt violates the specific terms of the license and the prohibitions of 31 C.F.R. Part
515, including 5 1 5 ~ 2 0 I (c), which forbids transactions that have the purpose or effect of
evading or avoiding the prohibitions of 515.20l(a) and (b).
We also note that the License itself recites that it is not transferable and that it
does not excuse compliance with OF AC regulations. See License, paragraphs 4 and 5. It
also recites that it is granted upon the statements and representations made in the
application and is subject to the conditions, among others, that the licensee comply with
OF AC regulations and the tenns of the license. !d., paragraph 2. The license applicati.on
submitted by Ropes & Gray (included in Annex B) refers only to representation of
1
Emphasis added. We ask that your office check this quotation (taken from Ropes &
Gray's letter to USPTO) against OFAC's copy of the License. As noted, page 2 of the
License, which apparently contains the language specifying the scope of the
authorization, does not appears on the USPTO electronic database.
2003-06-032 000217
Mr. Robert Werner, Director
January 12, 2006
Page 3
Cubaexport in existing legal proceedings and says nothing about renewal of the
Registration.
Cubaexport's counsel argues that it is merely trying to maintain the status quo by
renewing the Registration pending a decision in the Lawsuit on the validity of the 1996
renewal. But the existence of a dispute about the validity of the 1996 renewal does not
excuse Cubaexport from complying with the laws and regulations applicable to a further
renewal of the registration ten years later. Nor would Cubaexport be denied effective
legal representation by requiring its counsel to comply with the law.
In issuing the License, OF AC clearly identified the licensee (Ropes & Gray) and
the authorized transactions (receipt of payment of fees and expenses in connection with
their legal representation of Cubaexport). There is nothing in the License authorizing
Cubaexport to renew the Registration. The attempt of Cubaexport and its counsel to
circumvent OFAC's authority must not be countenanced. We request that OFAC (i) send
a letter to the USPTO confirming that the License does not authorize the renewal of the
Registration and (ii) take other appropriate action to safeguard its authority and the
integrity ofthe licensing process.
If you have any questions, please do not hesitate to contact me at (305) 573-8511,
extension ..
Enclosures
cc: David W. Mills, ChiefofLicensing, OFAC (w/o enclosures)
Matthew Tuchband, Office of Legal Counsel, OFAC (w/o enclosures)
- Licensing Division, OF AC (w/o enclosures)
2003-06-032 000218
- - - - ~ -
WASHINGTON, D.C. 20220
'License No. CU-74488
..... .' ;'
, .
....
.. .L..I C ENS E
.: . :: ll .' '
/.:
,,. ' ; . ' .. , ,
:' .
. !:
; .. .I
. -,
To: Ropes& Gray LLP (the "Licensee")
700 l ih Street, NW, Suite 900
Washington, DC 20005-3948
Attn: Renee L. Stasio, !;sq.
:'.
I. Pursuant to an application dated January 26, 2005, the following transactions are hereby licensed:
*****SEE REVERSE*****
.' ' .
2. This license is granted upon the statements and representations made in your application, or otherwise filed
with qr made to the Treasury Department as a supplement to your application, and is subject to the conditions, among
others, that you comply in all respects with all regulations, rulings, orders and instructions issued by the Secretary of the
Treasury under the authority cited above and the tenns of this license.
3. The Licensee shall furnish and make available for inspection any relevant infom1ation, records or reports
requested by the Secretary of the Treasury or any duly authorized officer or agency of the Secretary.
4. This I iccnse expires on March 31, 2006, and is not transferable, is subject to the provisions of Title 3 l, Part
515 of the Code of Federal Regulations, and any regulations and rulings issued pursuant thereto and may be revoked or
modified at any time at the discretion of the Secretary of the Treasury acting directly or through the agency through
which the license was issued, or any other agency designated by the Secretary of the Treasury. If this license was issued
as a result of willful misrepresentation on the part of the applicant or his duly authorized agent, it may, in the discretion
of the Secretary of the Treasury, be declared void from the date of its issuance, or from any other date.
5. This license does not excuse compliance with any law or regulation administered by the Office of Foreign
Assets Control or another agency (including reporting requirements) applicable to the transactions(s) herein licensed,
nor does it release Licensee(s) or third parties from civil or criminal liability for violation of any law
[ssued by direction and on behalf of the Secretary of the Treasmy:
By .3/q/o
frDavid W. Mills
Cbtef of Ltcens111g .
[Attention is directed to 19 U.S.C. 1592 and 1595a, 18 U.S.C. 545, 18 U.S.C. 1001,
50 U.S.C. App. l6, and Jl CFR 5 I 5. 70 l et seq. for provisions relating to penalties.]
2003-06-032 000219
\'
-::'('\

License No. CU-74488
Licensee: Ropes & Gray LLP
Page 2 of 2
SECTION 1- AUTHORIZATION: (a) All transactions are authorized to enable the Licensee, in connection
the legal representation ofEmpresa Cubana Exportadora de Alimentos y Productos Varios ("Cubaexport"), and
Havana Club Holdings S.A. in !ega! proceedings in the United States related to the HAVANA CLUB trademark,
as described in the application, to receive payment for such services and reimbursement for expenses related to
such services from Cuban nationals through banking channels, provided the funds are routed from Cuba to the
United States via a third-country bank.
Authority: 31 C.F.R. 515.801.
SECTION 2 -RECORD KEEPING REQUIREMENTS: The Licensee is required to keep a record of all
transactions engaged in pursuant to the authorization (Section 1) of this license. Such records shall be made
available for examination, upon demand, by the Office of Foreign Assets Control for at leas't five years from the
date of each transaction.
SECTION 3- (a) Except as authorized above, nothing in this license authorizes persons subject
to the jurisdiction of the United States to engage in any transaction or activity prohibited by the Cuban Assets
Control Regulations, 31 C.P.R. Part 515, as amended.
(b) Nothing in this license authorizes the transfer of funds through methods which involves debits or credits to
blocked accounts subject to the jurisdiction of the United States.
SECTION 4 - PRECEDENCE: The authorization contained in this license is lirnited to the facts and
circumstances specific to the application.
*******************************************************************************************
., ,. :. I
2003-06-032 000220
..
W.A.SHINGION, D.C. 202.20
,.:uban Assets Control Regulations
License No.
LICENSE
(Grant.ed urider the authority of 50 U.S.C. App. S(b), 22 U.S.t. 2370(a), 22 U.S.C. 6'001 e.t
. seq., Pro.chmation 3447, and 31 CFR Parts SOl and 515)
To:
Fish & NeavE! '(the ''Licensee'' l
i2Si Avenue of the Americas
York, New 16oib
Attn: Herbert
1. Pursuant to yo_ur letter c;iated January 29, 2003, the .following is hereby
.licensed:
* SEE ReyERS.E'*'*
2. This license is granted upon tlie statements. and representations made in your
application, or 'otherwise .f.iled with or to. the Treasury Depar
1
tment as a supplement to
your application, and is subject to the ccinditions, among others, that you comply in all
respects with all regulafions, rulings, oroers and instructions issued by the Secretary of
the Treasury.under the authority of Section 620(a), "Public Law or und.er the
authority of section 5 (b-) ot. the Act of October 6, 1917, as amended, and the terms of this
license.
3. The licensee shall furnish and make available for inspection any relevant
,,formation, records' or reports requested by the Secretary of the Treasury or any duly
authorized officer or agency of the Secretary.
This is not transferable, is subject to the prov1s1ons of Tiile 31, Parts
501 and 515 of the Code of Federal Regulations, and any and rulings
pursuant thereto and may be revoked or modified at any !:ime at: the. discretion of t:he
Secretary of the Treasury acting directly or through t'he agency through which the license
was issued, or any other agency designated by the Secretary of the Treasury. lf this
license was .issued as a result of willful misrepreseniation on t.he part. of the. applicant or
his duly authorized agent, it may, in the discretion of the secretary of the Treasury, be
declared void from the date of its issuance, or from any other date.
s. This does !'lot excuse \:.ith .:::ny :!:a..:o::- regulation administered
by the Office of Foreign Assets. Cont;.ro1 or .another agency {including reporting
requirements) applic'able to the transactions (s) herein licensed, nor does it release
Licensee(s) or third parties from civil or criminal liability for violation of any law or
regulation.
Issued by direction and on behalf of the Secretary of the Treasury:
. ... J
..
I(..) I

2003-06-032 000221
ense No. CU-71416.
Fish & Neave
'
Page 26. 2

SECTION. 1 A't.JTHORIZATIONS: All. t'ra:ns"ai;t.:ions. are ai..ithcri ZGd to enable
Fish',. Neave (thE} "Licensee, .. ), in. connection with all matters
to. GalJeon s .A. v. Havan'a Clu);:l Holdifig, '.s :A ... I T'rademark Trial. and Appeal
Board Cancellation No. 24,108, to provide legal services to, receive e
paymerlt for such services from and ..t.o r_ec:eive reimbursemenl;:. f.or expenses
related tc=f'such services from Empresa Cubana Exportadora De Alimentos y
ProduG:.tos
1
,Varios ("Cuba export' ) , a Cuban nationaL
'>'
. Autho.:d,ty: 31 CFR 515.801.
.
SECTION:2 CONDITIONS: (a) It is a condition of 'this License :that
shall afull accurate record of each .
underii:aken pursuant to this License, and that each such recor. shall be .
. for examination t:or at least five years after the date of such
. trans apt ion. . . . . . . . e
)
- 11"' .
SECTIONi:3 - REPORTING REQUIREMENT: Pursuant to 31 CFR 501.605 Licensee is
directed to provide all required reports, notices, cqp:les and facsimiles.
4 - WARNINGS: (a) Except- as expl i.ci zed in 1
-;ve;. nothing in this :}..icense. authorizes persons subject to the .
... .;risd.iption of. the Uni t.ed States to eng.age in any transaction or
activity prohibited by theRegulations.
SECTION 5 - WARNINGS: (b) Nothing in License authorizes debit or

credit from any blocked account.
SECTION 6 -PRECEDENCE: This License is issued on a nonprecedential
basis.

2oo3-06-o32 ooo222

. FEE-24-212104 12:44 OFAC
OF THE TREASURY
WASHINGTON
1
O.C. 20220
P.01/B2
Cuban Assets Control Regulations
License No. CT-1943
LICENSE
(Granted under the authority of 50 U.S. C. App. S(b), 22 U.S.C. 2370(a),
22 U.S.C. 6001 et seq., Proclamation 3447, and 31 CFR Parts 501 and 515)
To: Fish & Neave (the .. Licensee")
1251 Avenue oftbe Americas
New York, NY 10020
A TIN: Martin A. Leroy
1. Pursuant to your application dated February ll, 2004, the following is hereby licensed;
"''****Sll:E REVERSE*****
2. This license is granted upon the statements and representations made in your application. or otherwise filed .
with or made to the Treasury Department as a supplement to your application. and subject to the conditions, among
.,thers., that you comply in all respeets wnh all regulations, rulinp, orders and instructions issued by the Secretary of the
reaswy under the authority cited above and the teaDS of this license.
3: The Licensee shall furnish and IJUike aw.ilable for inspection any relevant information, records or reports
requested by the Secretary of the Treasury or any duly authorized officer or agency of the Sccn:tuy.
4. This license expires on Marcll31, .%005, is not transferable, is subject to the provisions of31 C.F.R..Parts
and S 15. and any regulations and rulings issued pursuant thereto and may be revoked or modified at any time at the
discretion of the Secretary of the Treasury acting directly or throup the agency through which the lic=sc was issued, or
any other agency designated by the Secretary of the Treasury. If this license was issued as a result of willful
misrepresentation on the part of the applicant or his duly authorized agent, it may, in the discretion of the Secretary of the
Treasury, be declared void from the date of its or from any other date.
S. This license does not excuse compli.aru:e with any law or regulation administered by the Office of Foreign
Assets Control or another ,agency (including reporting applicable to the transaction(s) herein licensed, nor
does it release the Licensce(s) or tbird parties from civil or criminal liability for of any or regulation.
Issued by direction and on behalf of the Secretary of the Treasury:

Chief of Licensing .
[Attention is directed to 19 U.S.C. 1592 and 1595a, 18 U.S.C. S4S, 18 U.S.C. 1001,
SO U.S. C. App. 16, and 31 CFR 515.701 et seq. for provisions relating to penalties.} .
2003-06-032
. F.EB-24-2004 12: 44
Ucense No. Cf-1943
Licensee: F"lsh &. Neave
OFAC P.02/02
Pagel ofl
'crt ON 1 -AUTHORIZATION: (a) This license authorizes the Licensee to engage in travel-related
.nsactions involving Cuba set forth in 31 CFR 515.560(c) of the Cuban Assets Control Regulations (the

Regulations") and such additional transactions as are directly incident to professional research relevant to legal e
proceedings in the United States, including but not limited to conducting interviews and depositions, and
creating written and other records, as described in your application, subject to the conditions set forth in Section
2 below.
(b) This license authorizes the Ucensee to provide legal services to, and to receive payment for such services e
from Empresa Cuban Exportatiora de Alimentos y Productos Varios ("Cubaexports"), a Cuban national.
(c) This license authorizes multiple trips during the validity period of the license.
Authority: 31 CFR S1S.S60(c), SlS.564(b) and 515.801
SECIION l- CONDITIONS: (a) The License.e must provide each traveler with a letter confinning that the
named individual will engage in authorized activities on behalf of the Licensee and cite the number of this
license.
(b) It is a condition of this license that the Licensee inform each traveler ofhislher responsibilities under the
Regulations, by, for example, providing each traveler with OFAC"s "Travel Restrictions .. brochure or otber
document providing information concerning the travel-related transactions authorized by 31 CFR 51 5.560(c) of
...;criON 3 WARNINGS: Except as explicitly authorized in 1 nothing in this Ueense
authorizes aoy person subject to the jurisdiction of the United State.s to engaee in any transicdoiJ or
activity prohibited by the Replations. This Ucense only authorizes travel-related transactions consistent
with a fuU-time schedu)e ot activities authorized by this license.
SECTION 4 RECORDKEEPING REQUIREMENTS: The Licensee is required to keep a Jist of
individuals whose travel transactions were authorized under this license and their actual dates.of travel. Each
in& vidual traveler must also retain records related to biSiber travel transactions. Such records be made
available for examination upon demand for at least S years from the date of each transaction. A report from the
Licensee is required on activities undertaken pursuant to this license in conjunction with an application to renew
or extend this license.
SECI'ION S- INFORMATION: (a) For information concemi.ng the categories of travel for which licenses
may be issued, please refer to our Comprehensive Guidelines for License Applications to Engage in
Related Traruactions Involving Cuba on our lntemct website at www.treas.gov/ofac (Sanctions Programs &
Country Summaries - Cuba, Guidelines and Information).
(b) The Department of State publishes consular information sheets (and, when necessary, travel warnings) on
every country and territory in the worlcL including Cuba. which arc available on the Internet at
http://travel.state.gov, or through the State Department's fax-on-demand service at (202) 647-3000. An
abridged version of consular information sheets can be heard by calling (202) 64 7-5225.
CTION 6 PRECEDENCE: The authorization contained in this license is limited to the facts and
.... rcumstances specific to the application. .

TnTAf
2003-06-032 000225

---- -----------------------------------

2003-06-032 000226
------------------------ - - - - ~ ~ ~ - ~ - ~ - - - - - ~ ~ - - - -

'
t

ROPES & GRAY LLP
\251 AVENUE OF THE AMERICAS NEW YORK, NY 11Xl20-1 104 212-596-9000 F 212-596-9090
BOSTON NEW YORK PALO ALTO SAN FRANCISCO WASHINGTON, DC www.ropesgray.com
VINCSofT N. PA.L1.ADINO
OIAECT CIAL 2t2.15116.9070
OIAECT FAX 648.7:18.2871
. E-MAil. VINCENT.PAU.AOINOOROPt:SGRAY.COM
VIAFEDEX
Mr. David W. Mills
Chief of Licensing
Dear Mr. Mills:
December ~ 3 , 2005
We are enclosing a copy of our December 13, 2005 letter addressed to the
Conunissioner for Trademarks in connection with an application filed by Empresa Cubana
Exportadora de Alimentos y Productos ,Varios d/b/a Cubaexport ("Cubaexport") to renew United
States Trademark Registration No. 1,031,651 ofthe HAVANA CLUB & Design trademark and the
attachments to that letter.
On behalf of our client Cubaexport, Ropes & Gray has prepared the renewal
application and undertaken to pay the filing fee that is required in order to maintain the registration
and intends to recover those expenses from Cubaexport. Ropes & Gray has taken these steps
pursuant to License No. CU 74488, which Ropes & Gray understands authorizes the flrm to
represent Cubaexport in all matters related to legal proceedings concerning the HAVANA CLUB
trademark, including Bacardi & Company Limited v. Cubaexport and Havana Club Holding, 1:04-
CV -00519 (EGS) (D.D.C 2004) (the "Litigation"); and to be paid for the services it renders and
expenses it incurs in the course of that representation. In the Litigation, Bacardi & Company
Limited C'Bacardi'') has appealed a decision oftheTrademarks Trial and Appeal Board (the
'"Board") and requested cancellation of Registration No. 1,031 ,651.
While the Litigation is ongoing, Cubaexport seeks to mainta,in the status quo by
maintaining Registration No. 1,031,651 until the Court can decide whether the Board's decision
should be affirmed or reversed and the registration maintained or cancelled. Given the current
posture of the Litigation, no final unappealable decision on those issues will be rendered before
Registration No. 1,031,651 m ~ be renewed.
I'
I
I.
;.
I
I.

t
ROPES & GRAY LLP
Mr. David W. Mills
December i 3, 2005
Page2
- ---------
If Registration No. 1,031 ,651 is not maintained, the Court will be denied an
opportunity to reach a reasoned decision as to whether the registration should be cancelled, as
Bacardi claims, or whether the Board correctly dismissed Bacardi's cancellation petition. as
Cubaexport contends. That will, moreover, deprive Cubaexport o'fthe representation Ropes &
Gray has been authorized to provide by cancelling the registration before the Court can decide
whether it should be cancelled or maintained.
That outcome would be and would be perceived to be The Board has
determined that the registration was properly maintained in 1996 and that failed to plead
any legal basis for cancelling the registration in its cancellation proceeding. In Bacardi's appeal of
that ruling, the Court has ordered Cubaexport and its co-defendant HCH to file renewed motions to
dismiss the Complaint. and the parties are currently engaged in Court ordered discovery concerning
those motions. Effectively overruling the Board's decision while it is on appeal to the Court by
declining to maintain the status quo would be inappropriate. On the otper hand. if the registration is
maintained during the Litigation, the Court remains free to decide whether the decision should be
affirmed or reversed.
Paying the renewal fee will not dictate the outcome of the Litigation. but failing to
pay it might. If Ropes & Gray were deemed not authorized under the License (or otherwise) to
incur on Cubaexports behalf the expense of renewing Registration No. 1,031 ,651 in the course of
its authorized representation ofCubaexport, Ropes & Gray would be unable to provide Cubaexport
effective representation, and Cubaexport would be denied effective representation, in connection
with the Litigation (which has been commenced by Bacardi), and the Court would be deriied the
opportunity to decide whether or not the registration should or should not be maintained.
To avoid that unfair result, to its ongoing obligation to represent its client. and
to affirm the Court's traditional authority to decide cases pending before it, Ropes & Gray on behalf
of on_ License No. CU 74488 to maintain the status quo until a decision in the
Litigation is rendered by the Cowior.by a_ny-cotiit to which S:ucha decision niay fiiiiilty.be -- -
appealed.
..

ROPES & GRAY LLP
Mr . .David W. Mills
December 13, 2005
Page3
We appreciate this office's continued attention to this matter. If we can be of further
assistance; please do not hesitate to cail me .
Sincerely,

VNP:emf
Enclosures
cc:
Matthew Tuchband, Office ofLegal Counsel, OFAC (encl.)
Clara David,Licensing Division, OFAC (encl.)
Commissioner for Tradem1:1rks
2003-06-
01-05-05 11 :21am FrcmFish & Neavi
2023032600
ROPES & GRAY LLP
T-188 P.OOZ/005 F-025
18251 STREET NW, SUITE 400, WASHINGTON, DC 20006
OlRECT CIAL 202.303.242&
DIRECT FAX 2011,3011.at1e
liMAII.. AfiNI!I . STA!IIOAROPESQAAV.COM
VIA CCONF. BY FEDEXl
M.r. David W. Mills
Chief of Licensing
U.S. Department ofTrensury
Washington D.C. 20220
Deat Mr. Mills:
ace:: COPY
January s. 2005
The law fU'll'l of Fish & Neavc is ,currently the Hcensee under License No. CT-1943
pertaining to authorization for (a) " ... Licensee to engage in transactions involving
Cuba set forth in 31 CFR SlS.S60(c) of the Cub.an Assets Control Regulations (the 'Regulations')
and such additional transactions. as are directly incident to professional research to legal
proceedings in the United States, including but not limited to conducting interview and
depositions, and creating written and other records, ns described in your appllcatio subject to the
conditions forth in Section 2 below; (b) . , Licensee to provide legal services and receive
payment for such service5 from Empresa Cuban a Exportadora De Alunentos y Varios
('CUbaexport') a Cuban national; (c) multiple trips during the validity period license.
License No. CT-1943 is set to expire on March 31,2005. A copy oft:Us license is enclosed.
On January29, 2004, the Trademark Trial and Appeal Board of the States
Patent and Trademark Office dismissed cancellation proceeding 24,108. C1 Maroh 29,
2004, Bacardi & Company Ltd. (the parent company of Galleon S.A.) and Baoardi p.s.A., Inc.
filed a complaint against Havana CJub Holding S.A. and Cubaexport, which was jomed by the
Trademark Trial and Appeal Board to the cancellation proceeding, The complaint the
decision of the Trademark Trial and Appeal Board and asserts additioaal claims agamst the
defendants. Fish & Neave has continued to represent Cubaexport in these procccdipgs.
2003-06-032 000230
01-os-os
11: 21 am F rom-F i 5h & Heave zazaosteoo T-1 as P. oouoos F-025
Mr. David W. Mills
January S, 2005
Page2
Effective October l, Fish & Neave became Fish & Neave LLP. Effective
January 1. 2005, Fish & Neave merged with Ropes & Gray LLP. The merged entity will conduct
business under the name ofRopes & Gray LLP. Because Ropes & Omy will be tlle law fum
representing CUbaexport in connection with the above-mentioned matters, Ropes & Gray hereby
requests a renewal of License No, CT-1943, or in the alternative, a new special license naming
Ropes & Gray as the licensee and giving Ropes: & Gray the same rights ns authorized in License
No.
Thank you to this matter. If we can be of further assistance. please
do not hesitate to call me at-
RS:rs
Enclosures
cc:
bee:
Sincerely yours,
Office of Legal Counsel. OFAC
Division, OFAC
2003-06-032 000231
01-05-05 11 :21am

F ro11-F i.&h l NtaVI 2023032600
DEPARTM E;NT of" THE TREASURY
0,,
Cubttn Assets Rogulafions
UcENSE.
T-188 P.004/00S F-026
License No. CT-1943
(Orant.ed under 1M authority at .SO tr.S.C. App. 22 U.S.C. 2l10(a),
22 U.S.C. 6001 ot seq., Proclamaticni3447, and 31 CFR Partr. SOl and 515)
To: Ffsb & Neave (tbo "Licen.aec
11
)
1251 A. venue oftbe.Amorieas
NewYork,NY 10020
ATTN: .Martin A. Leroy
1. Pursuant t.o yaur application dated February 11.:1004, tho following is hureby licensed:
**"SEE REVERSE*****
2. This license is granted upon the statCIDeuts aad raproacmtations made in applicatiofi, or ot.herwiae filed
with or made to the Treasury Departmont 11 a supplement to ;your application, and is subject to thrJ conditiou, among
'}thcrs. tbat you comply in all rcapcota with all rogulanons, rulings, orders and inawctiocu by the Secretary ofthcs
.'reasury undar tho authority abov lllld the tCIIIlS of thi.S licc:uae.
3. The Lic:acee shall f\unish and m.ake avaibhlefor:iuapcorion .ny rdevaot information, toCorda or report&
requasted by tbe Secretary of tho Treumy or any daly offfcer ur ageacy of thtt SBQI"atary.
4. This liclt!H =cplres on March 31, 2005, ia uot tmaafonblo, !a aubject to tlte ptoviaions of 31 C.F.R. Pam 501
and 515, and any reQUlations and nillnga issued punuant thaitto and may be cevobcl or .modified at an,y time at the
ofthc Secretary ot'dlo Treasury actlng direl)tly or through the agoooy tbrougb which thG was issuod, or
any other ageuuy dosianatcld by the of the Treasucy:. Jftlaiti licwe was as a ofwillfi.U
rnisrcpreacntatloa oa the part oftbe applicant or his duly autf:1ori%od asant. it may. in the disorotion of the Secretary of the
Treasury, bo deoJIUCd void :fiotn tha date of its or &,om othe!" data.
S. 'Ibis license does not ex.cuas compliance -with anY: law or roJ:Ulalion OfficD ofFor:aip
As:lota Control or anothcr.apnoy applicable: to tho transaction(s) bcro!n nor
ck>oa it release the I.Jccnscc(s) or third putles &om civil liability tor viol::Ltion of any law or regulatiOn.
!S5\1od by direction and on behalf of the Secretary of the Treasury:
OFFICE OF FOREIGN ASSETS CONtROL

Chief ofLiceniJ!ng
[Attention is directed to 19 U.S.C.lS92 and 1S9.5a, 18 U.S.C. 545, l8 U.S.C. 1001,
SO U.S.C. App, 16, and 31 CPR. S lS. 701 for provisions to pellaltieli,J
2003-06-032 000232
11 :22am From-Fish I Neave
2023032600 r 1'98 P. aos/oos F.;ozs
Ucease No. CTl943
Lic;eDSee: Ftsh & Neave
Page :z of2
1-AUTHORIZATION: (a) This license twthomes the !Jcensee:to engage in travel-related
muctions involving Cuba set forth in 31 CPR. 515"5li0{c) of the Cuban AssetS Control: Resulations (the
and such additional transactions as ar.e directly incident to p.rofbssional rcscacch relevant to legal
proceedings in the United Sratos, including but not limited to oonductins intet\'lcwa and deposltiollS, .
creannr written and other as descn"'bed in your application. subject to the conditions set forth u. Section
2 below.
(b) This au.thorizet the Licensee to k\, Md tn rec(Sivc payment for such services
from EmpresA Cuban Exportation\ de A y Pro.otoa V atios a Cuban national. .
(c) '11iis fietnSo authorizes multiple trips durins the validity period of the licen.S=.:
Autbority: 31 CFR S15.560(c), Sl5.564(b) and 515.801
SECflON 2- CONDITIONS: (a) The Licensee must provide each traveler with a letter confirming that the
named individual will engago in auth.orizC:d "ctivities oa behalf of the !..iccn.sce and cite. the number of this
license.
(b) It is a condition of this liceMe that the Licensee infon:n euc:b. traveler ofhislbcr under th.o
.a.cgulatiom, by, forexamplc, providiJ:J.g each traveler with OF.AC's "Travel R.estrltions'" brochure or othor
document providing i.ntbnnation conccming the 11'avc1-rc1.ated transactions autb.orizi:d by 31 CFR SJS.S60(c} of
3 .. WARNINGS: as e:xpUdtJy authorized in Section 1 above. nathingln
Ruthorize! any person subject to tile J orisdlction of thiJ United States to enuagelll any transacdob or
activity prohibited by the Regulations. Tldl Uceue mnly authorizes travol.reJatecl tr311sactious
with a fuU-tlme M:hedule of activities autborizecll by license.
SEcriON 4 RECORDKEEPING REQUIREMENTS: The Licensee ls rettUired to keep a list of
individual$ whose travel transaoticms were urulor this Uaense and their aal <Jate..oftravel. Eaeb
individual traveler auo retain records rotated to his/her travel ttan.tactions.. Sueh records shall bo made
available f'ot examination upon demancl for at least S yean from tbe date of eac12 transaction. A repor:t:from tho
Licensee is required on activ[ties Ulldertaken pursuant to this license in colijunetioa' with an application to renew
or extend this Uoeasc.
.
SECTlON s -JNBORMA noN: (a) For information concerning the categories of era vel for which licenses
may be issued, please refer to our CDmpreAetutve Guldeltnes for License .Appllc".41ltt.t ID Engage in Trawl
Transactions involving Cuba on our Internet website at (Sanctions Programs &
Country Summaries - Cuba, Gu.ldeU.nea and. Intortllation);
(b) The Depa:rtment of State consular informati:ID sheets (and, when neoes;ary, travel warnings) on
avery country and territory in the world, including Cuba. which aro ava11able on the Internet at
http://iJayel.sta.b;goy, or tbrougb the State Deportment a tix-on..dcmand at (202) 647-3000. All
abridged version of consular infunnation sheets can bet heard by calling (202) 047-5225.
CTION 6 PRECEDENCE:. The authorization contnined in this license is limited to the facts and
... rcumstances specific to. the application.
........................ "' ................ * ............... 1(1.;4'+111ot ... *,.."'
2003-06-032 000233
Cuba- Havana Club Issue
Havana Club is a well-known brand of rum. A Cuban company currently
produces the rum and owns the Havana Club trademark in Cuba and many third
countries. There is a long and complex history of administrative, judicial, and
international action surrounding the rights to the Havana Club trademark in the United
States.
A very abbreviated history follows: The original owners of the Havana Club
mark in the United States left Cuba after Castro and confiscated their rum-
making facilities. When the original OW'ners failed to renew their U.S. mark in the 1970s,
a Cuban company (Cubaexport) obtailled the U.S, mark. In the 990s, after ,
Cubaexport built Havana Club into a ?'ell-known brand and prepared. to form a joint
venture with France-based Pemod Riard to market Havana Club worldwide, U.S.-owned
Bacardi teamed up with the original Havana. Club owners to fight for the U.S. trademark.
Bacardi succeeded in getting legislation enacted- Section 211 of the Omnibus
Appropriations Act for FY 1999 (generally referred to as simply "Section 211") -that,
among other things, prohibited an exiSting general license in .the Cuban Assets Control
Regulations (the "CACR"), which upuntil then authorized registration and renewal of
Cuban-owned trademarks in the United States, from applying in cases where the
trademark is similar to one with assets that were confiscated. In other words,
Section 211 blocked Cubaexpqrt from using the CACR general license to renew its
Havana Club mark. Instead, cbbaexport would have to apply for a specific license from
OF ACto renew the mark. This and other restrictions in Section 211 were the subject of a
PemodRic,ard-initiated European complaint to the World Trade Organization ("WTO")
claiming that the legislation is inconsistent with international agreements on protection of
intellectual
\
\
In July .. 2006, Cubaexport's Havana Club mark was
receiving poliCy guidance from State, OF AC denied Cu
license to rene9,1 the mark. Although Cubaexport is still tr;ing
rights through other proceedings at the U.S. Patent and
it no longer owns the Havana Club mark in the United States.
. After
for a specific
its ownership
it appears that
Bacardi already has started producing and distributing its own Havana Club rum
in the United States. Various news reports have discussed the possible ramifications of
OFAC's recent denial on the protection ofU.S.-owned trademarks in Cuba fwhich
(b)(5)
000234
Cubaexport, a Cuban entity, and Bacardi, Inc., a U.S. entity, have been engaged in a legal
struggle over the Havana Club rum trademark since the late 1990s. The original Havana Club
company assets were confiscated by the Castro government in the 1960s. The original owners
fled to the United States and joined forces with Bacardi' in the 1990s to battle Cubaexport for title
to the mark in the United States. At the same time, Cubaexport sought to join forces with French
spirit manufacturer Pemod Ricard in a commercial joint venture. The battle between
Cubaexport/Pemod Ricard and Bacardi led to a number of licensing requests to OF AC, a specific
piece of legislation (Section 211 ofthe Omnibus Appropriations Act of 1998) amending OFAC's
Cuba regulations regarding licensing of activities related to confiscated marks, a dispute before
the World Trade Organization, and significant and ongoing actions before the USPTO and
Federal courts.
The current trademark registration owned by Cubaexport expires this year. Pursuant to Section
211 ofthe Omnibus Appropriations Act of 1998, a general authorization in OFAC's Cuba
embargo regulations that normally allows Cuban parties to register and renew their trademarks at
the U.S. Patent and Trademark Office is not available for the registration or renewal of
confiscated marks such as the Havana Club mark. Instead, a specific license issued by OFAC
would be needed. In December 2005, Cubaexport applied to the USPTO for renewal of its mark
claiming that the renewal action is authorized by an OFAC specific license issued to the party's
counsel for the conduct of the ongoing litigation. In January 2006, Bacardi filed a document
with the USPTO that the OF AC fie license did not cover the renewal action.
2003-06-032 000235
From:
Sent:
To:
Cc:
Subject:
Attachments:
otherwise noted
ment (English Translation)
header.htm
Follow Up Flag: Follow up
Flagged Flag Status:
FYI
2003-06-032 000236
~ .
Tuchband, Matthew
From:
Sent:
To:
Subject:
otherwise noted
Millerwise, Molly .
Wednesday, August 1
Millerwise
Bacardi Confident of Its Re-Launch of Havana Club Rum in the U.S.
Bacardi Responds to Inaccurate Claims in Lawsuit against Havana Club Re-Launch
Business Wire
MIAMI- (BUSINESS.WIRE)- Aug. 16,2006- One week after its successful re-launch of HAVANA CLUB rum in the
United States, Bacardi U.S.A reaffirms its ownership of the brand and that its packaging does not mislead consumers.
The company will vigorously defend its position in the wake of inaccurate allegations in a lawsuit filed by Pernod Ricard.
HAVANA CLUB rum was re-launched in the United States August 8 and is based on the original recipe created in Cuba.
HAVANA CLUB rum is an ultra-smooth, clear, premium spirit, distilled and. finely crafted in Puerto Rico.
The front of the bottle clearly states that HAVANA CLUB is Puerto Rican rum and no where on its packaging does it claim
it is produced in Cuba. Rum requires no geographic designation, in contrast to Champagne, Scotch, Cognac or Bourbon,
which by law must .be produced in specific regions.
Historically, in addition to b'eing produced in Cuba, HAVANA CLUB rum was f!lade in Puerto Rico during World War II by
the Arechabala company. Puerto Rico has a rich heritage of producing fine quality rums.
Bacardi purchased the rights to the HAVANA CLUB trademark from the creators and original owners, the Arechabala
family. They made their famous rum in Cuba from the 1930s until1960 and exported it to the United States and other
countries until their rum-making facilities and personal assets were seized without compensation during the Cuban
revolution.
The U.S. Patent and Trademark Office (PTO) determined on August 3 that Cuba's registration of the HAVANA CLUB
trademark is "cancelled/expired." The decision means that the Cuban government can no longer claim any rights to the
mark in the United States. Bacardi- which owns the rights to the brand based on use and as a successor to the original
owners - has a pending application to register the mark in its own name.
The PTO's action came just six days after the U.S. Treasury's Office of Foreign Assets Control (OFAC) denied a Cuban
government agency a specific license that was necessary to seek renewal of the trademark registration at the PTO.
The OFAC and PTO decisions are watershed events in the ten-year dispute between Bacardi and the Cuban government
and its French partner over the rights to the HAVANA CLUB trademark in the United States. In a case that went all the
way up to the Supreme Court, the U.S. courts ruled that the Cuban-French joint venture had no rights to the trademark.
Bacardi continued to fight the Cuban government's claim to the U.S. registration in the PTO and the courts, even though
by law that claim cannot be recognized or enforced in the U.S. Now Cuba's registration has finally been declared expired
and cancelled.
2003-06-032 000237
The French liquor company Pernod Ricard, whose U.S. company today challenged Bacardi's legitimate ownership, has no
trademark registration and no rights to the HAVANA CLUB brand in the United States.
Background
HAVANA CLUB rum was created in Cuba in 1935 by the.Arechabala family company (Jose Arechabala, S.A.), which
registered the trademark in the U.S. in 1935 and sold its rum in the U.S. over a twenty year period. The company's assets
were seized without compensation by the Cuban government in 1960. In 1976, after the Arechabala family's HAVANA
CLUB trademark registration expired, Cubaexport (a Cuban government agency) registered the HAVANA CLUB
trademark in the U.S. through a loophole in the trade embargo. In 1993 the Cuban government established a partnership
with the French liquor company Pernod Ricard to exploit the brand. Because the Arechabalas' business and personal
assets were confiscated by the Cuban government, the Arechabala family was left without the means to produce rum.
Nevertheless, the family always intended to resume producing and marketing HAVANA CLUB rum as soon as they were
able to do so. The Arechabalas formed an alliance with Bacardi to achieve this end.
Congress closed the loophole in the Cuban embargo in 1998, when it passed a law to prevent recognition of trademarks
confiscated without compensation by Cuba, except with the consent. of the rightful owners.
This principle was upheld by the World Trade Organization as consistent with international agreements on intellectual
property rights.
About Bacardi
Bacardi USA is the import, sales, and marketing arm of one of the world's leading wine and spirits producers. Bacardi
USA boasts a brand portfolio of. some the United States' most recognized and top selling spirits including: BACARDI rum,
the favorite spirit in the U.S. and favorite rum in the world; GREY GOOSE vodka, the world leader in ultra premium vodka;
MARTINI & ROSSI vermouth, the world leader in Vermouth; DEWAR'S scotch whisky, the favorite selling blended scotch
whisky in the United States; BOMBAY SAPPHIRE gin, the best selling super premium gin in the US; and CAZADORES
blue agave tequila, the top selling 100% blue agave tequila in the world and other fine brands.
Bacardi USA Amy Federman, 305-347-4343 or Patricia Neal, 305-446-9050
2
2003-06-032 000238
Message
Hammerle, Barbara
From:
Sent:
To:
Thornton, Sean
Thursday, November 09, 2006 3:26 PM
_DL_OFAC & Chief Counsel Staff
Subject: Records relating to HAVANA CLUB
Importance: High
Attachments: Havana Club Do-Not-Destroy Memo.pdf
Please see the attached memo.
Page 1 of 1
In short, all OFAC and Chief Counsel staff are instructed to preserve any records concerning the HAVANA CLUB
trademark. You are 11Qt required to do a search of your records at this time. Please just preserve any HAVANA
CLUB records already in your possession, and please do not transfer any such records off-site until further
notice. Complete instructions are in the attachment
If you have any questions about this matter, please contact
Thanks,
Sean
1/8/2008
2003-06-032 000239
Message
Hammerle, Barbara
From: Szubin, Adam
Sent: Thursday, November 09, 2006 2:04PM
To:
,-,--j(b.,...,.....,)(6..,.....,) I Cc: l(b)(6) I
Not from me. Ginny and Barbara?
Sent: Thursday, November 09, 2006 2:02PM
r-:-:-c:--:-::-:-, To: Szu Ada Hammerle, Barbara; Ca
I (b )(6) ICc: Tuchban
Su
(b)(5)
Sent: Wednesday, November 08, 2006 5:36PM
r-:-:-c:--:-::-:,-, To: Barbara; Canter
l(b)(6) ICc: Matthew
Su
Just wanted to give you a head's-up.
(b)(5)
Page 1 of 1
(b)(5)
j(b)(6) ~ - i s working on the text of a short memo, which I would propose to send over my signature by
email to all OFAC & Chief Counsel staff soon, ideally tomorrow {before the long weekend).
1/8/2008
Please let me know if you have any questions or concerns about this approach.
Thanks,
Sean
2003-06-032 000240
Hammerle, Barbara
From:
l(b)(6) I
Sent: Friday, December 08, 2006 5:51 PM
To:
Cc:
Hammerle, Barbara; Szubin, Adam; Canter, Virginia
Thornton, Sean; Tuchband, Matthew
Subject: RE: Privileged - Cubaexport litigation - agency record
Flagged Flag Status:
Privileged & Confidential --Attorney-Client Communication -- Predecisional & Deliberative
Barbara,
Best regards,
-l(b)(6) I
l(b)(S)I
Sent: j(b)(6) I rrr:v src:mtri'' 200.6 5:37PM ...
To: Szub1n, Adam; canter, V1rgm1a
Cc: Thornton, Sean; Tuchband, Matthew
Thanks.
Barbara
-----Original M e s ~
~ ~ ~ : l(b )(6)1 Friday, December 08, 2006 4:38PM
To: Hammerle, Barbara; Szubin, Adam; Canter, Virginia
Privileged & Confidential-- Attorney-Client Communication-- Predecisional & Deliberative
1
2003-06-032 000241
Best regards,
- l(b)(6) 1
Sent:
,...,.,.(b..,...)(-:-::-6,.....,) I ...... ;
(b)(5) & (b)(6)
Adam; Canter, Virginia
Matthew
Subject: RE: Privileged- Cubaexport litigation- agency record
Deliberative process
Thursday, December PM
To: Szubin, Adam; Hammerle, Barbara; Canter, Virginia
Subject: Privileged - Cubaexport litigation - agency record
l(b)(s) I
Privileged & Confidential - Attorney Client Communication - Predecisional & Deliberative
2
2003-06-032 000242
All redactions on this page are made pursuant to FOIA exemptions (b)(5) except where
noted otherwise.
Adam, Barbara, and Ginny,
Best regards,
-l(b)(6) I
3
2003-06-032 000243
Hammerle, Barbara
From: l(b)(6) I
Sent:
To:
Cc:
Subject:
Friday, December 08, 2006 4:38 PM
Hammerle, Barbara; Szubin, Adam; Canter, Virginia
Thornton, Sean; Tuchband, Matthew
RE: Privileged - Cubaexport litigation - agency record
Privileged & Confidential -- Attorney-Client Communication -- Predecisional & Deliberative
1 (b )(5) & (b )(6) 1
Best regards,
-l(b)(6) I
Sent: Friday, December 08, 2006 9:33 AM
To: Szubin, Adam; Canter, Virginia
Deliberative process
l(b)(s) I
2003-06-032 000244
Messaae----- j(b )(
6
) I
Sent: Thursday, December 07, 2006 6:39 PM
To: Szubin, Adam; Hammerle, Barbara; Canter, Virginia
SUbject: Privileged - Cubaexport litigation - agency record
Privileged & Confidential - Attorney Client Communication - Predecisional & Deliberative
Adam, Barbara, and Ginny, (b )(5) & (b )(6)
2
2003-06-032 000245

- l(b)(6)
3
2003-06-032 000246
Message
Hammerle, Barbara
From: l(b )(6) I
Sent: Thursday, November 09, 2006 2:56 PM
To: Canter, Virginia; Szubin, Adam; Thornton, Sean; Hammerle, Barbara
Cc: Tuchband, Matth l(b )(6) I
Subject: RE: Havana Club I (b)(5) I
Attachments: Cubaexport complaint (Havana Club matter).pdf
Ginny,
Best lgards, I
- (b)(6)
Sent: Thursday/ November 09
1
2006 2:42 PM
I
To: Sz Adam Thornton, Sean; Hamm
I (b )(6) . Tuchband
From: Szubin
1
Adam
Sent: Thursday
1
November 09, 2006 2:04 PM
To: merle
1
Barbara;
Cc:
Not from me. Ginny and Barbara?
From: Thornton
1
Sean
Sent: Thursday/ November 09
1
2006 2:02 PM
l(b)(6) I
l(b)(6) I
r.:-:-....,-::-:--, To: Szubin Ada Hammerle/ Barbara;
l(b)(6) I Cc: Tuchband, Matthew;--
1/8/2008
Sent: Wednesday/ November 08, 2006 5:36PM

Barbara;
l(b)(6) ICc:----Tuchbandr Matthew;--
2003-06-032 000247
Page 1 of2
I (b)(5) I
Message
j(b)(6)
118/2008
Page 2 of2
I (b)(5) I
Just wanted to give you a head's-up .
.. is working on the text of a short memo, which I would propose to send over my
signature by email to all OFAC & Chief Counsel staff soon, ideally tomorrow (before
the long weekend).
Please let me know if you have any questions or concerns about this approach.
Thanks,
Sean
2003-06-032 000248
1
Hammerle, Barbara
From:
Sent:
To:
Subject:
Attachments:
l(b)(6) I
-ber 08, 2006 4:57PM
Hammerle, Barbara
Privileged - Havana Club draft memo and attachments
6-22-2006 Havana Club Memo to GC With Attchmnts.doc.pdf
Privileged & Confidential -- Attorney Client Communication
Barbara,
Attached below for your reference please find a draft memo and related materials that Matthew had prepared
for G. C. Havens on Havana Club as background.
Best regards,
,...,.,.....,.....,..,.....---,
j(b)(6)
4!J
6-22-2006 Havana
Club Memo to ...
2003-06-032 000249
Hammerle, Barbara
From:
Sent:
To:
Cc:
Subject:
Barbara,
Best regards,
- I (b)(6) I
I (b)(6) I
Monday, November 06, 2006 6:03 PM
Hammerle, Barbara
Thornton, Sean; Tuchband, Matthew; Szubin, Adam
RE: Cubaexport v. OFAC
Sent:
To:
Cc: Szubin, Adam
Subject: Cubaexport v. OFAC
Thanks.
Barbara
2003-06-032 000250
I (b)(s) I
Hammerle, Barbara
All redactions on this page are made pursuant to FOIA exemption
(b)(6), except where noted otherwise
From:
Sent:
To:
Cc:
Subject:
Looks very good. I had a few questions and some suggested edits. l'llleave in a folder for you with-

From:---
l(b)(s) I
Sent: Wednesday, December 13, 2006 11:12 AM
To: Szubin, Adam; Hammerle, Barbara
Subject: Privileged draft Cubaexport declaration
Privileged & Confidential -- Attorney-Client Communication -- Predecisional & Deliberative
Adam and Barbara,
your review please find a draft declaration prepared, in consultation with Matthew
Federal Programs, in connection with our response to the complaint filed against
OFAC by "Havana Club" matter). I have just provided this
to be reviewed by with a draft of the brief. I will let you know
any comments or concerns, but am providing it simultaneously in the interest of time (the brief is
due next Thursday-er 21 ). I expect that -.will share the draft brief with us as soon as he
has feedback from
I have also attached for your review a copy of the certification of the agency record and a pdf copy of
the complaint. I have a printed copy of each of these documents and of the agency record available
for your review. I have included as part of the agency record an unredacted version of the
realeCIISional memo from State based on our earlier call with State but I would like to confirm that you
Thank you.
Best regards,
-
Draft Declaration
<<File: Szubin Declaration (Cubaexport)v6(clean).doc >>
Agency Record Certification
<< File: Cubaexport Admin Record Certification.doc >>
Cubaexport Complaint
<<File: Cubaexport complaint (Havana Club matter).pdf>>
2003-06-032 000251
Please let me know if you would
schedule a time.
Hammerle, Barbara
From:
Sent:
To:
Szubin, Adam
Thursday, October 12, 2006 4:36 PM
Hammerle, Barbara
Subject: RE: litigation
The fun begins ...
Sent: Thursday, October 12, 2006 5:15PM
To: Szubin, Adam
Subject: litigation
Adam,
I had a brief about the complexity of the issues in the Havana Club litigation. -
going to talk wit a ou e I also talked with Matthew, who said he'd forward"'a
chain of e-m ails e on this case.
Not Responsive -- Not Related to HCH
Barbara
1
2003-06-032 000252
l(b)(s) I
Message
Page 1 of 4
Hammerle, Barbara
Sent: Thursday, October 16, 2003 3:25PM
To:
Cc:
Subject: I (b)(5) I
Attachments: Westlaw_Document_13_ 45_ 44_34361.rtf; 02-5307a1.pdf
To get everyone warmed up for tomorrow's meeting:
I didn't find any directly relevant IEEPA or TWEA cases on trademarks. All of the TWEA cases concerning
trademarks or other intellectual property had to do with marks registered by a foreign national in this country.
E.g., Propper v. Clark, 337 U.S. 472 (1949) (Alien Property Custodian vested claims to royal payments for the
U.S. use of Austrian ; Havana Club SA v. Galleon SA 203 F 2000
I found one trademark case that spoke forcefully about U.S. jurisdiction over activities of U.S. persons abroad,
and used IEEPA and TWEA as an instructive example. In International Bancorp LLC v. Societe des Bain de Mer,
329 F.3d 359 (4th Cir. 2003), the court held that services provided to U.S. citizens by a foreign casino operator
were "in commerce" for purposes of the Lanham Act and the Commerce Clause, such that a casino's infringing
use of a trademark was actionable under the Lanham Act. (The dispute was between the operator of those fancy
casinos in Monte Carlo and a dubious online gambling operation found at "casinodemontecarlo.com"; the court
held that the website was infringing on the more established casino's trademark.) The French-based website had
argued that its transactions with U.S. citizens were not subject to U.S. jurisdiction because they did not occur in
the United States, and Congress has no authority over such transactions. The court chose an interesting
example when demolishing that argument: TWEA and IEEPA. I've highlighted the relevant passage in the
attached document.
International Bancorp speaks only to jurisdiction, and not to the question whether the foreign government has an
"interest" in marks registered with it. On the "interest" question, my favorite recent case is Holy Land, where I
have also highlighted the key passage in the attached PDF file.
Sent: Tuesday, October 14, 2003 6:13 PM
To: Thornton Sean
l(b)(6) I
Cc:
l(b)(6) I
Thanks, Sean.
All -tomorrow is getting loaded up with tasks. Could we meet sometime Friday afternoon?
I'd like to ask someone to volunteer to do a LEXIS search through the IEEPA and TWEA case law to see
what we can come up with on trademark jurisprudence. (Not the specific section in TWEA on
trademarks).
Thanks.
Barbara
118/2008
2003-06-032 000253
Message
Sent: Tuesday, October 14, 2003 6:04 PM
Page 2 of 4
;;:-:-:-:::-:-. To: Ha Barbara
l(b)(6) I Cc: Monborn Mark
118/2008
Su
l(b)(5)l
the Havana Club case is the mirror image of our new scenario,
I (b)(s) I
Havana Club had to do with a mark registered by Cuban nationals in the United States, as
opposed to marks registered by U.S. nationals in sanctioned countries. The Havana Club court,
almost without discussion, noted that the U.S. trademark was subject to the Cuban Assets
Control Regulations, and its transfer was prohibited without a license, because it was
"property" (as specifically defined in the regulations) in which a Cuban national had an interest-
in that case, actually two Cuban nationals, Cubaexport (the registrant and purported transferor)
and Havana Rum & Liquors (the purported transferee). See 203 F.3d at 122 & n.3 (full decision
attached).
na govern n that case,
government-has the authority to interfere with the registrant's use of the mark and can grant or
deny the associated property rights as it sees fit within the range of domestic and international
legal obligations.
1 (b )(6)
Sent: Tuesday, October 14, 2003 2:25PM
To:
l(b)(5)
Sean, please take a look at the Havana Club 2d Circuit decision. Thanks.
l(b)(6)
l(b)(5)
Sent: Tuesday, October
I To: Ham
Subject
I checked your calendars, and it looks like all four of you would be free tomorrow
(Wednesday) at 3:30. Let me know if that works, and I'll send a meeting request
to everyone in our office.
2003-06-032 000254
Message
1/8/2008
From: Mills, David
Sent: Thu October 09 2003 2:14PM
To:
,.....,.,....,....,..,..,....., Cc
I (b)(6) I su'
l(b)(5) I
l(b)(6)
l(b)(5) I
Sent: October 07, 2003 2:12PM
To:
-Sean
l(b)(6) I ; ~ - ~ ~ i ... ---
To: Thornton Sean
l(b)(6) Cc:
fii:llh'ia,....
2003 4:54PM
.-:-:-1 ( b,...,...,)( 6.,........,) I
l(b)(s) I
2003-06-032 000255
Page 3 of 4
Message
Withheld in full pursuant to FOIA Exemption(b)(5)
Page 4 of 4
1/8/2008
2003-06-032 000256
Message
Hammerle, Barbara
From:
Sent:
To:
Cc:
Subject:
Thornton, Sean
Tuesday, October 14, 2003 5:04PM
Hammerle, Barbara
Flag Status: Flagged
Attachments: US Judicial Decisions.doc
j(b)(6)
I (b)(s) I
~ b case is the mirror image of our new scenario,
Page 1 of3
Havana Club had to do with a mark registered by Cuban nationals in the United States, as opposed to marks
registered by U.S. nationals in sanctioned countries. The Havana Club court, almost without discussion, noted
that the U.S. trademark was subject to the Cuban Assets Control Regulations, and its transfer was prohibited
without a license, because it was "property" (as specifically defined in the regulations) in which a Cuban national
had an interest-in that case, actually two Cuban nationals, Cubaexport (the registrant and purported transferor)
and Havana Rum & Liquors (the purported transferee). See 203 F.3d at 122 & n.3 (full decision attached).
avana lub de the nn\/Orr'n">nt.-ln
case, govern as the authority to interfere with the registrant's use of the mark and can grant or
deny the associated property rights as it sees fit within the range of domestic and international legal obligations.
l(b)(6) I
To: Thornto Sean
l(b)(5)
Sean, please take a look at the Havana Club 2d Circuit decision. Thanks.
I (b)(s) I
(b)(5) &
(b)(6)
1/8/2008
2003-06-032 000257
l(b)(6)
Message Page 2 of3
I checked your calendars, and it looks like all four of you would be free tomorrow (Wednesday) at
3:30. Let me know if that works, and I'll send a meeting request to everyone in our office.
From: Mills, David
Sent: Thursday, October 09 2003 2:14 PM
~ ~ ~ Thornto Sean r:-:-j(b-:-)(:-=cS),.....,j
lr;:-( b):-:-=( 6-:--1) I ---- .........
~
ber 07, 2003 2:12PM
l(b)(6) I
l(b)(s) I
-
-Sean
j(b)(6) 1 ~ ; ~ - ~ ~ i i l i l i i - - - -
t...:-..:....:...-.:..----1 Sent: Tuesday, October 07, 2003 1:04 PM
To: Sean
Cc Mills, David
,,........, (,.....,...b )..,.....,...(6--,) I IQ-2384
\fl/hy don't you draft proposed language and send it back down for review?
Sent: October
...-:-:-:....,....,..,----. To:
l(b)(6) Cc:
Subject:
l(b)(s) I
L_l!S/2008
--------------------
2003 06 032 00025S
Message jWithheld in full pursuant to FOIA Exemption (b)(5) Page 3 of3
118/2008
2003-06-032 000259

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