It is a basic tenet of trademark law that rights are jurisdictional. Trademark owners only have rights in the mark in the jurisdictions in which they have registered (or, in some cases, used) the mark.

But a recent case highlights a lesser-known exception to that rule. In General Cigar Co. Inc. v. Empresa Cubana del Tabaco, case number 1:23-cv-00227, decided by the U.S. District Court for the Eastern District of Virginia on May 7, 2025, the court affirmed the TTAB's cancellation of a U.S. registration for the COHIBA trademark for use in connection with cigars based on the petitioner's rights in the same mark in Cuba.

Generally, such foreign rights will present a basis to undermine or prevent U.S. registration where (1) the mark was protected in another juriscition prior to the applicant/registrant filing to register the mark in the U.S., and (2) the applicant/registrant was aware of the earlier use of/rights in the mark.

Foreign rights can only affect U.S. registrability where the U.S. has an agreement with the foreign jurisdiction recognizing reciprocal enforcement rights. Currently, there is only one such treaty—the Pan-American Convention of 1929, with contracting states comprising Cuba, Colombia, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, and Peru. While the U.S. is a signatory to other trademark treaties, most notably the Paris Convention, such treaties do not include such a recognition of reciprocal enforcement rights.

While not a common issue, trademark professionals should be aware of this niche rule and take it into consideration in connection with registration and international searching.