Patent and trademark – PTO grants trademark registration 10 years after deadline

Where the United States Patent and Trademark Office granted renewal of a trademark registration 10 years after the renewal deadline, it did not act arbitrarily and capriciously.

Background

In 2005, Cubaexport applied to renew a trademark registration with the United States Patent and Trademark Office, or PTO. But Cubaexport’s payment of renewal fees was legally void without a specific license issued by the Treasury’s Office of Foreign Assets Control, or OFAC. For over a decade, OFAC refused to issue that license. Then, in 2016, it issued a license retroactively authorizing Cubaexport’s 2005 payment. Based on the issuance of that license, the PTO approved Cubaexport’s renewal filing.

Bacardi & Company Limited argues that the PTO exceeded its statutory authority and acted arbitrarily and capriciously by granting renewal 10 years after the renewal deadline. The district court disagreed.

Statutory challenge

Section 515.502 of the regulations governs when a license may authorize an earlier transaction: No license “shall be deemed to authorize or validate any transaction effected prior to the issuance thereof” unless the license “specifically so provides.” The phrase “specifically so provides” refers to the operative authorization in the preceding clause—the authorization or validation of an already-effected transaction. In other words, that antecedent phrase identifies what the license must specifically provide.

Cubaexport’s license did just that. It authorized Cubaexport “to engage in all transactions necessary to renew and maintain” its trademark registration, “including those related to Cubaexport’s submission filed with the USPTO on or about December 14, 2005, and the payment referenced therein.” The license specifically identifies and authorizes past transactions, including the December 2005 payment. That is enough under § 515.502(a).

And § 515.203(c) provides the license’s legal effect: A license authorizing a prior transfer “shall validate such transfer or render it enforceable to the same extent as it would be valid or enforceable but for” the embargo against Cuba. But for the embargo, the 2005 payment would have been timely and effective, satisfying the statutory renewal requirement. Indeed, the funds changed hands.

It was only later that the PTO examiner directed that the payment be refunded. When the Director considered the petition’s merits in 2016, the license had validated the December 2005 payment, making it just as valid as it would have been in a world with no embargo. So the Director correctly found that Cubaexport had paid the fee within the renewal period.

The OFAC license gave the prior payment new legal status. The Director was no longer required to refuse renewal—and acted within statutory limits by granting it. So Bacardi’s statutory-authority challenge fails.

Arbitrary and capricious

Agencies must offer a “rational connection between the facts found and the choice made.” Here, the Director identified the examiner’s reason for refusing renewal: Cubaexport lacked OFAC authorization for the fee payment. The Director then identified the changed fact: Cubaexport had obtained an OFAC license specifically authorizing the December 2005 filing and fee payment. So the Director drew the straightforward legal conclusion: “[T]he fee payment is effective as of December 14, 2005, and the combined § 8/9 filing is considered complete and acceptable as of that date.”

Even so, Bacardi contends the Director acted arbitrarily and capriciously by failing to explain the delay in deciding the petition for review. This court disagrees. Much of the delay required no explanation: The petition was stayed during the OFAC litigation.

And after the stay lifted, the Director considered Cubaexport’s renewed arguments against cancellation, leaving at most a fraction of the total delay unaccounted for. Regardless of the reasons for the delay, Bacardi did not timely challenge the decision’s timing or the lack of explanation for the delay. So this argument is forfeited.

Bacardi takes several more shots at the Director’s decision. None land. To the extent these objections dress Bacardi’s statutory arguments in arbitrary-and-capricious clothing, this court rejects them for the same reasons this court concluded the Director acted within statutory authority.

And an agency need only address the “important aspect[s] of the problem” before it, not every item in the administrative record. The administrative record makes clear that only the missing OFAC license prevented Cubaexport’s timely submission from satisfying the Lanham Act’s fee requirement. It was not arbitrary or capricious to conclude that removing this sole barrier satisfied the statute.

Affirmed.

Bacardi & Company Limited v. Squires, Case No. 25-1355, June 16, 2026. 4th Cir. (Richardson), from EDVA at Alexandria (Brinkema). David Meir Zionts for Appellants. Weili Justin Shaw and Carl Jonas Micarelli for Appellees. VLW 026-2-217. 15 pp.

Full-Text Opinion
VLW 026-2-217