FILED

U.S. COURT OF

APPEALS

ELEVENTH CIRCUIT

December 17, 2008

THOMAS K. KAHN

[DO NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

________________________

No. 07-10106

________________________

D. C. Docket No. 06-20169-CR-FAM

UNITED STATES OF AMERICA,

Plaintiff-Appellee,

versus

JUAN PENTON,

Defendant-Appellant.

________________________

Appeal from the United States District Court

for the Southern District of Florida

_________________________

(December 17, 2008)

Before BIRCH and MARCUS, Circuit Judges, and FORRESTER, District Judge. *

PER CURIAM:

Honorable J. Owen Forrester, Senior United States District Judge for the Northern *

District of Georgia, sitting by designation.
Defendant, Juan Jose Penton, was prosecuted for violating 18 U.S.C.

§ 2320(a), the Trademark Counterfeiting Act. After a jury trial, Penton was found

guilty and the court sentenced him to five years’ probation with five months of

home confinement, a $7500 fine and a $300 special assessment. On appeal,

Defendant argues that (1) the district court erred in denying his motion for

judgment of acquittal for the insufficiency of the evidence in general and

specifically with reference to Count 3 of the indictment; (2) the district court erred

in refusing to give Defendant’s requested jury instruction on his theory of the

defense; and (3) the Government’s improper closing argument deprived Defendant

of his due process right to a fair trial. After a thorough review, we find no

reversible error and affirm.

I. Background

 The indictment charged Defendant with three counts of trafficking and

attempting to traffic in counterfeit goods – cigars – on October 5, 2005. Count 1

of the indictment alleges trafficking of Cuban Cigar Brands, N.V. (“CCB”) marks,

Count 2 of Max Rohr marks, and Count 3 of General Cigar Co. marks. Three

other counts were dropped by the Government at trial and are not at issue. 

CCB is a corporation of the Netherlands Antilles with its principal place of

business in Fort Lauderdale, Florida. CCB owns the United States trademarks for

2
the following brands and associated artwork: Monte Cristo, H. Upmann, and Por

Larranaga. Max Rohr is a Delaware corporation with its principal place of

business in Delaware. Max Rohr owns the United States trademarks for Romeo y

Julieta and Trinidad. Altadis U.S.A. is a Delaware corporation with its principal

place of business in Fort Lauderdale, Florida. Altadis U.S.A. is the exclusive

licensee of CCB and Max Rohr. 

General Cigar Co. is a Delaware corporation with its principal place of

business in New York, New York. General Cigar owns the United States

trademarks for Cohiba, Partagas, Flor de Tabacos de Partagas YCA, Hoyo de

Monterrey, Hoyo de Monterrey de Jose Gener Excalibur, Bolivar Simon Bolivar,

Simon Bolivar the Liberator, Punch Elite, Punch Punch, Punch Gran Fabrica de

Tabacos Punch, and de J. Valley ca Manuel Lopez Habana. 

The police investigation of Penton began when Altadis U.S.A. provided

information to the Miami-Dade County police that enabled them to send an

undercover officer to Defendant’s shop. In a sting that occurred on October 5,

2005, Defendant sold to the officer and a confidential informant sixty boxes of

cigars: fifteen boxes of Cohiba Esplendidos, ten boxes of Montecristo Number 2,

ten boxes of Romeo y Julieta Churchill, ten boxes of Partagas Lusitania, ten boxes

of Hoyo de Monterrey Coronas, and five boxes of Hoyo de Monterrey Pyramid. 

3
The boxes contained a combination of trademarked terms and artwork as well as

the words “Habana,” “Habana, Cuba,” “Habanos SA,” and “Hecho en Cuba.” The

boxes were sealed with fabricated Cuban seals and contained fake Cuban

government guarantees in the boxes. “Habana” was also printed on the cigar

rings. DE150, at 82-83. 

Eric Workman, Altadis U.S.A.’s vice-president of marketing and national

accounts, testified at trial. He identified trademarked names and artwork for

Montecristo, Romeo y Julieta, Trinidad, H. Upmann, and Por Larranaga. DE150,

at 67-82. Mr. Workman published to the jury genuine cigar boxes, cigars, and

cigar rings for these brands. Id. He also testified that the boxes sold by Defendant

were not sold with Altadis U.S.A.’s authorization. Id. at 83-85, 91. Mr. Workman

testified that he understood Defendant’s boxes referenced Cuba, but that it was not

unusual for genuine cigar manufacturers to reference Cuba in their packaging. 

DE150, at 91-99. Cooper Gardiner, vice president of marketing for General Cigar

Co., provided similar testimony for the brands Partagas, Punch, Hoyo de

Monterrey, Bolivar, and Cohiba. Genuine boxes, cigars, and cigar rings for these

brands were published to the jury. DE152, at 50-55. 

Defendant’s witness, Gary Arzt, an investor, business consultant, and avid

cigar smoker, also testified that most consumers do not see the outside of a cigar

4
box and simply ask for a brand name, such as Montecristo, without specifying

whether it is the Cuban variety or variety sold in the United States. DE156, at 94-

95. On cross-examination, Mr. Arzt testified that the artwork and trademark on

Defendant’s Romeo y Julieta cigar box was not substantially different from

Altadis U.S.A.’s Romeo y Julieta product. Id. at 110-11. Mr. Arzt testified the

same concerning Defendant’s Partagas artwork and that trademarked by General

Cigar in the United States. Id. at 111-12.

Defendant testified at trial that he was imitating the Cuban brands which

were not protected in the United States. DE116, at 13-15. He said he did not

think it was a crime to sell boxes of replica “Cuban” cigars. Id. at 15. He testified

that he had never sold full boxes before the sting sale and his business was selling

empty “Cuban” trademarked boxes that were replicas of what he had in Cuba as a

child before the Revolution. Id. 

Both at the conclusion of the Government’s case and his defense, Defendant

moved for a judgment of acquittal. Defendant argued that there was no evidence

in the record that the Cohiba Esplendido and the Partagas Lusitania cigar brands

were “in use” in the United States, as required by the statute. DE156, at 77-79. 

Defendant also contended that the evidence showed that there were “parallel”

marks in the United States and Cuba and that Defendant’s cigar boxes did not

5
imitate the United States marks, but rather the Cuban marks which are not

protected in the United States under the structure of the Helms-Burton statute. As

such, Defendant’s conduct did not violate 18 U.S.C. § 2320(a). Id. at 80; DE158,

at 36. With respect to Defendant’s “in use” argument on the Cohiba Esplendido

and the Partagas Lusitania cigars, the district court noted that in addition to those

brands, Count 3 also encompassed the Hoyo de Monterrey brand for which there

was testimony of “use” in the United States. Therefore, the court denied

Defendant’s motion on that basis but noted that it might eventually have

implications for sentencing. DE156, at 79. The court also denied Defendant’s

motion on his Cuban imitation theory. Id. at 84-85. 

II. Discussion

A. Sufficiency of the Evidence

We review the denial of a motion for judgment of acquittal and the

sufficiency of the evidence to sustain a conviction de novo viewing the evidence

in the light most favorable to the government, and drawing all reasonable

inferences and credibility choices in favor of the jury’s verdict. United States v.

Campa, 529 F.3d 980, 992 (11 Cir. 2008). “Whether the government proved the th

jurisdictional element [of a statute] is measured as a challenge to the sufficiency of

6
the evidence.” United States v. Key, 76 F.3d 350, 353 (11 Cir. 1996) (per th

curiam). 

Defendant contends that his conviction violates the expanded Helms-Burton

Act because it equates to the Government granting protection to Cuban marks. He

also asserts that the Government did not offer proof that the marks were “in use”

or that their use would result in consumer confusion. We note initially that

Defendant did not raise his consumer confusion argument at trial, on his motions

for acquittal, or at any length in his initial appellate brief. We need not determine

whether Defendant waived this issue, however, because even considering

Defendant’s argument, the Government presented sufficient evidence of consumer

confusion at trial.

To understand the context of Defendant’s arguments, some background on

the Cuban revolution and eventual embargo imposed by the United States is

helpful. See generally Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462

(2d Cir. 2005), and 213 F. Supp. 2d 247 (S.D.N.Y. 2002). Fidel Castro took

control of the Cuban government on January 1, 1959. Culbro, 213 F. Supp. 2d at

256. The Castro regime nationalized cigar manufacturers on September 15, 1960. 

Id. Some of the owners of the appropriated companies fled to the United States

7
and other countries and reopened their businesses “using the trademarks their

families had owned before the government seizure.” Id. 

The United States imposed an embargo on Cuba in 1963. Culbro, 399 F.3d

at 465. The terms of the embargo were set forth in regulations promulgated by the

Office of Foreign Assets Control within the Department of Treasury. Id. Those

regulations were eventually codified by Congress in 1996 in the Cuban Liberty

and Democracy Solidarity Act (“LIBERTAD Act”), Pub. L. No. 104-114, Title I,

§ 102, 110 Stat. 792 (1996) (codified at 22 U.S.C. § 6032(h)), also known as the

Helms-Burton Act. The embargo regulations prevent Cuban cigar companies from

selling cigars in the United States. Id. As initially promulgated, however, the

embargo did not prevent tobacco companies controlled by the Cuban government

from registering trademarks in the United States. See Culbro, 213 F. Supp. 2d at

256; Empresa Cubana Exportadora de Alimentos y Productos Varios v. United

States Dep’t of Treasury, 516 F. Supp. 2d 43, 47 (D.D.C. 2007). In a series of

litigation in the 1960s and 1970s, however, U.S. courts determined that the fleeing

families had obtained common law rights to the trademarks prior to the

nationalizations. Culbro, 213 F. Supp. 2d at 256. As the rights of the individual

owners had been clarified, some families began selling trademark registrations to

8
U.S. cigar manufacturers. Id. at 256-57. Thus, the notion of “parallel brands”

developed. That is, 

the Cuban government sells a Cuban cigar in Cuba and other parts of

the world under the same apparent trademark as an unrelated

company that sells a non-Cuban cigar in the U.S. It is not the same

trademark, however, as the U.S. cigars are sold under trademarks

which the owners had registered and used in the United States for the

sale of their cigars prior to the expropriation of the Cuban cigar

companies.

Id. at 257. 

The Helms-Burton Act was further amended in 1999 to expand its coverage

to intellectual property rights. Section 211 of the amendment provides: 1

(a) (1) Notwithstanding any other provision of law, no

transaction or payment shall be authorized or approved

pursuant to section 515.527 of title 31, Code of Federal

Regulations, as in effect on September 9, 1998, with

respect to a mark, trade name, or commercial name that

is the same as or substantially similar to a mark, trade

name, or commercial name that was used in connection

with a business or assets that were confiscated unless the

original owner of the mark, trade name, or commercial

name, or the bona fide successor-in-interest has

expressly consented.

(2) No U.S. court shall recognize, enforce or otherwise

validate any assertion of rights by a designated national

This amendment was enacted on October 21, 1998, in Section 211 of the Omnibus 1

Consolidated and Emergency Supplemental Appropriations Act, 1999, Pub. L. No. 105-277, §

211, 112 Stat. 2681, 2681-88 (1998). There is no official legislative history of this amendment

which was passed as part of an omnibus appropriations bill and has no particular name. As the

parties have referred to it as the Helms-Burton Act, we will do so as well for the sake of

consistency. 

9
based on common law rights or registration obtained

under such section 515.527 of such a confiscated mark,

trade name, or commercial name.

(b) No U.S. court shall recognize, enforce or otherwise validate

any assertion of treaty rights by a designated national or its

successor-in-interest under sections 44(b) or (e) of the

Trademark Act of 1946 (15 U.S.C. § 1126(b) or (e)) for a mark,

trade name, or commercial name that is the same as or

substantially similar to a mark, trade name, or commercial

name that was used in connection with a business or assets that

were confiscated unless the original owner of such mark, trade

name, or commercial name, or the bona fide successor-ininterest has expressly consented.

Id. The import of this legislation is to prohibit Cuban companies from registering

“appropriated” trademarks in the United States without permission of the original

owner. U.S. courts are also prohibited from recognizing any such rights. 

Defendant’s theory of the case is that his cigar box replicas were copies of

Cuban cigars and trademarks, not those of Altadis and General Cigar Co. Because

Cuban marks are not entitled to any protection in the United States, Defendant

argues, he cannot have committed a crime by copying Cuban trademarked

material. The problem for Defendant is that we have already rejected his defense

in a similar case. In United States v. Guerra, 293 F.3d 1279 (11 Cir. 2002), three th

defendants were indicted for trafficking in counterfeit cigars. Guerra also

defended against the charges arguing that his products were meant to copy the

Cuban marks and not the United States marks. Id. at 1287. In affirming Guerra’s

10
conviction under the terms of 18 U.S.C. § 2320(d), we determined that “it is

irrelevant that Guerra did not know the marks were registered in the United States,

or thought the marks were only unprotectable Cuban marks.” Id. Based on

Guerra, therefore, Defendant’s theory of Cuban counterfeiting is not available to

him.

We reject Defendant’s argument that Guerra is no longer good law because

it was issued prior to the 1998 amendment of the Helms-Burton Act which

purportedly established the idea of the “parallel marks.” Defendant’s argument

with respect to “parallel marks” is premised in his belief that under the HelmsBurton Act, parallel marks are not entitled to protection in the United States. We

find, however, that this is not an accurate statement of the law. The Helms-Burton

Act provides that no transactions or enforcement of rights of Cuban trademarks

can occur under United States law. For this reason, the district court properly

instructed the jury that Cuban marks are entitled to no protection in United States

courts. This limitation, however, is not extended to a trademark that is properly

registered with the United States Patent and Trademark Office by a company

incorporated outside of Cuba. The mere fact that the trademarks used by Altadis

and the other victims in this case are “parallel” to marks used by Cuban companies

for Cuban cigars marketed outside the United States does not mean that the U.S.

11
marks registered by U.S. companies are not protected. Here, testimony at trial

demonstrated that the original owners sold their rights to various companies,

including Altadis U.S.A. and Cuban Cigar Co. More significantly, however, there

is nothing in the Helms-Burton Act which indicates it would apply to a federal

criminal prosecution.

Next, Defendant argues to us – as he did in the district court – that his

motion for acquittal on sufficiency of the evidence should at least have been

granted on Count 3 because the evidence showed that Cohiba Esplendidos and

Partagas Lusitania cigars are not sold in the United States and therefore could not

be “in use” under the terms of § 2320. Title 18 Section 2320(a) reads:

Whoever; intentionally traffics or attempts to traffic in goods or

services and knowingly uses a counterfeit mark on or in connection

with such goods or services, or intentionally traffics or attempts to

traffic in labels, patches, stickers, wrappers, badges, emblems,

medallions, charms, boxes, containers, cans, cases, hangtags,

documentation, or packaging of any type or nature, knowing that a

counterfeit mark has been applied thereto, the use of which is likely

to cause confusion, to cause mistake, or to deceive, shall, if an

individual, be fined not more than $2,000,000 or imprisoned not more

than 10 years, or both . . . .

Id. See also § 2320(e)(1)(A)(ii) (mark must be “identical with, or substantially

indistinguishable from, a mark registered on the principal register in the United

States Patent and Trademark Office and in use”).

12
As the district court recognized, Defendant correctly states the law as to

these two types of cigars; however, Count 3 also charged Defendant with

counterfeiting the Hoyo de Monterrey cigar also produced by General Cigar Co. 

Because evidence was presented as to the Hoyo de Monterrey cigars, the jury was

still entitled to reach a verdict on Count 3 with any question of the number of

cigars impacted going to sentencing. 

Finally, Defendant asserted at oral argument that the Government did not

present sufficient evidence with respect to whether the use was likely “to cause

confusion.” We note that Defendant did not raise this argument to the district

court at trial, although the district court carefully considered the Government’s

burden of proof on this statutory element. See, e.g., DE152, at 68-71 (district

court discussing what type of testimony would be required to demonstrate

confusion).

Significantly, during the trial, all parties agreed, based on our prior

precedent, that it is not necessary to show proof of confusion through the

testimony of consumers or experts or the admission of surveys. See United States

v. Torkington, 812 F.2d 1347 (11 Cir. 1987). In Torkington, the defendant was th

charged with two counts of violating the Trademark Counterfeiting Act of 1984,

the same statute at issue in the instant matter. The district court held that

13
§ 2320(d)(1)(A) required a showing that direct purchasers would be likely

confused, mistaken or deceived by the allegedly counterfeit goods. Id. at 1349. 

Because there was an enormous price differential between the counterfeit Rolex

watches offered by the defendant and authentic Rolex watches, the district court

held as a matter of law that it was unlikely that direct purchasers would be

confused.

We rejected this conclusion and held:

section 2320(d)(1)(A) does not require a showing that direct purchasers

would be confused, mistaken or deceived; rather, the section is satisfied

where it is shown that members of the purchasing public would be likely to

be confused, mistaken or deceived. Moreover, we find that this likely

confusion test includes the likelihood of confusion in a post-sale context.

Id. We further noted that it was a jury question as to whether a direct purchaser

would be confused, mistaken or deceived. Id. at 1353 n.8. Thus, we reversed the

district court’s dismissal of the indictment against the defendant by noting that in

addition to the indictment that set forth each element of the crime, “the district

court had before it evidence that the allegedly counterfeit watches are externally

identical to authentic Rolex watches and bear both the name ‘Rolex’ and the Rolex

crown trademark emblem.” Id. at 1354. Several of our sister circuits have reached

the same conclusion. See also United States v. Foote, 413 F.3d 1240 (10 Cir.

th

2005) (extending application beyond direct purchasers); United States v. Hon, 904

14
F.2d 803 (2d Cir. 1990) (same); United States v. Yamin, 868 F.2d 130 (5 Cir.

th

1989) (same); United States v. Gantos, 817 F.2d 41 (8 Cir. 1987) (same). th

Furthermore, we reiterated in Guerra that it was not necessary for a

trademark holder to testify before the jury or that the agent who conducted the

investigation be qualified as an expert in a particular type of product. 293 F.3d

1279 (11 Cir. 2002). “In this case, the jury had been shown registered designs of

th

the trademarks for each cigar, as well as various cigar labels or bands produced by

authorized licensees. The jury therefore had a valid basis for comparison in

determining whether the designs were ‘identical or substantially identical.’” Id. at

1288. 

 Here, Defendant was able to assert to the jury – through his own testimony,

and Mr. Artz’s, as well as the arguments of his counsel – that he was merely

mimicking Cuban cigar brands. This activity was not illegal, Defendant averred to

the jury, because Cuban trademarks do not receive protection in the United States. 

The Government argued to the jury that Defendant’s cigar boxes were not replicas

of Cuban brands, but rather were confusingly similar to trademarks and artwork

registered by U.S. corporations with the United States Patent and Trademark

Office. Numerous witnesses testified about the appearance of the boxes and the

jury had the boxes in the jury room. According to its verdict, the jury ultimately

15
concluded that Defendant’s cigar boxes were likely to cause confusion with the

American brands. Defendant does not – and cannot argue – that the jury’s

conclusion is contrary to the weight of the evidence presented.

B. Jury Instructions

We review the district court’s refusal to give a requested jury instruction for

abuse of discretion. United States v. Richardson, 532 F.3d 1279, 1289 (11 Cir.

th

2008). A refusal to give a requested instruction is an abuse of discretion if: (1)

the requested instruction is correct, (2) the court did not address the substance of

the instruction in the charge, and (3) the failure to give the instruction seriously

impaired the defendant’s ability to present an effective defense. Id. 

During the charge conference, the parties debated whether it was necessary

for the court to instruct the jury on the Cuban embargo as well as “parallel marks.” 

The court ultimately gave the jury the following instructions:

Title 18 United States Code, Section 2320(a) makes it a Federal

crime or offense for anyone to traffic in counterfeit goods or services.

For you to find the Defendant guilty of these crimes alleged in

Counts 1 to 3, you must be convinced that the government has proved

on the date alleged in each of the following beyond a reasonable

doubt:

First: That the Defendant trafficked, or attempted to

traffic, in goods, that is cigars.

16
Second: That such trafficking, or attempt to traffic, was

intentional;

Third: That the Defendant knowingly used a counterfeit

mark on, or in connection with, those goods; and

Fourth: That the use of the counterfeit marks was likely to

confuse the purchasing public to cause mistake, or

to deceive. The likely confusion test includes the

likelihood of confusion in a post-sale context.

The term “traffic” means to transport, transfer, or otherwise

dispose of, to another, for common commercial advantage or financial

gain.

See DE95, at 7.

The court instructed the jury on “Counterfeit Mark” as:

A “mark” is a word, name, symbol, or device, or any

combination thereof, used to identify and distinguish goods and to

indicate their source. A mark used on or in the sale of goods is

known as a trademark. A certificate of registration from the United

States Patent and Trademark Office is initial evidence of the validity

of the registered mark, of the ownership of the mark, and of the

owner’s exclusive right to use the registered mark. That is, such a

certificate is sufficient proof of the existence of a valid registered

mark unless outweighed by other evidence in the case.

A mark need not be absolutely identical to be considered

counterfeit.

A “counterfeit mark” is a mark that is spurious, or not genuine

or authentic and is identical with, or substantially indistinguishable

from, a mark in use and registered for those same goods or services

on the principal register in the United States Patent and Trademark

Office. In order for the mark on the goods at issue to be genuine, it

17
must be placed there by the legitimate owner of the mark or with the

owner’s authorization. The genuine mark must not only be federally

registered, but must also be in actual use at the time of the

defendant’s use of that mark. Finally, a counterfeit mark is a mark

the use of which is likely to confuse the purchasing public.

For you to find that the genuine marks were “in use,” the

Government must prove, beyond a reasonable doubt, that the genuine

marks were actually being used during the period of the offense by

the genuine mark holder on or in connection with the goods or

services for which the genuine marks are registered. Evidence of

such use may, but need not, include testimony that the mark appears

on every good; advertisement depicting the mark and its goods or

services; or legal action to enforce trademark rights.

See id. at 8. 

The court described “Cuban marks” as:

United States trademark law does not protect Cuban

trademarks. However the law prohibits actions that deceive

consumers and impact a producer’s goodwill through the deceptive

and misleading use of protected marks. The Government has the

burden to prove that the use of the counterfeit of the protected marks

is likely to confuse the purchasing public. The Government also has

to prove that the defendant intentionally dealt in goods and

knowingly used a counterfeit of a protected mark in connection with

those goods. The government does not have to prove that the

defendant knew the law. What the government must prove is that he

intentionally trafficked in goods knowing that the goods are

counterfeit.

See id. at 11. At Defendant’s request, the court specifically agreed to add the

word “protected” throughout the “Cuban marks” instruction. At the charge

conference, Defendant conceded that the court’s addition of the word “protected”

18
mooted his request for a charge on the Cuban embargo. See DE158, at 131-34. 

2

Because of this concession before the district court, we do not consider any

arguments made by Defendant with respect to the Cuban embargo instruction.

On appeal, Defendant argues that the district court abused its discretion in

refusing to give his proffered instruction on “parallel marks.” Defendant’s

argument with respect to “parallel marks” is premised in his belief that under the

Helms-Burton Act, parallel marks are not entitled to protection in the United

States. We found above, however, that this is not an accurate statement of the law. 

The mere fact that the trademarks used by Altadis and the other victims in this

case are “parallel” to marks used by Cuban companies for Cuban cigars marketed

outside the United States does not mean that the U.S. marks registered by U.S.

companies are not protected. Once this defense theory is recognized and rejected,

the issue of jury instructions is more readily analyzed.

Defendant had requested a charge on the Cuban Embargo which stated: 2

The Court has determined and instructs you as a matter of law that the sale of

Cuban cigars is illegal in the United States but not in other countries and that

trademarks in which Cuba has an interest are not protectable under United States

law.

See Appellant’s Brief, at 11. He also wanted a charge on “Invalid Cuban Marks”:

In this case the defendant contends that the alleged counterfeit mark used

on the cigars was invalid as a Cuban trade mark. The defendant has the burden of

proving by a preponderance of the evidence that the alleged counterfeit mark is a

Cuban trade mark.

If you find by a preponderance of the evidence that the alleged counterfeit

mark was a Cuban mark, your verdict should be for the defendant.

Id. 

19
The court denied Defendant’s requested instruction on “parallel marks”

which read:

The defendant contends that the alleged counterfeit marks are

parallel marks and that the packaging of cigars in [sic] inherently

distinctive and identified the cigars as Cuban cigars with Cuban

marks. The defendant has the burden of proving by a preponderance

of the evidence that the alleged counterfeit marks are parallel marks. 

Preponderance of the evidence means that you must be persuaded by

the evidence that it is more probably true than not true that the

counterfeit marks are parallel marks.

If you find by a preponderance of the evidence that the

counterfeit mark is distinguished from the United States protected

trademark, you must find the defendant not guilty.

See DE103. 

3

The court did offer, however, to give an instruction directly from the case

Defendant cited – Culbro, 213 F. Supp. 2d 247 – which provided:

“parallel brands” developed, i.e., the Cuban government sells a Cuban

cigar in Cuba and other parts of the world under the same apparent

trademark as an unrelated company that sells a non-Cuban cigar in the

U.S. It is not the same trademark, however, as the U.S. cigars are

sold under trademarks which the owners had registered and used

Defendant had also proposed a written instruction on the definition of parallel 3

trademarks which read:

The court has determined and instructs you as a matter of law that parallel

trademarks are not protected by United States law. In this case parallel

trademarks means those marks which the Cuban government sells in Cuba and

other parts of the world under the same apparent trademark as another company

that sells a non-Cuban cigar in the United States. They are not the same

trademarks.

See Appellant’s Brief, at 10.

20
in the United States for the sale of their cigars prior to the

expropriation of the Cuban cigar companies.

Id. at 256-57 (emphasis added). Defendant, however, would only agree to that

instruction if the court did not read the portion in bold. See DE158, at 114-16. 

The court refused to give a partial definition but offered to Defendant that the

court would consider any other definition of “parallel marks” that Defendant could

locate. Id. at 115-34. Defendant did not provide any. 

As we have discussed above, there is no dispute that the concept of parallel

marks exists. However, the fact that marks can be described as “parallel” does not

mean that the marks registered in the United States by U.S. companies are not due

any protection. The Government elicited testimony at trial that the marks used by

Altadis and General Cigar Co. were traced to those used by the individual families

that left Cuba and came to the United States after the Cuban government

nationalized the cigar industry. DE152, at 4-5, 38-39. We disagree with

Defendant’s assertion that because one of the American companies holding the

trademarks is a subsidiary of a corporation partially owned by the Cuban

government, the American company would not be entitled to trademark protection

under Helms-Burton. Further, the instructions given by the district court made it

21
clear that Cuban trademarks are not protected in the United States. Thus, the jury

was only comparing Defendant’s cigar boxes to the American trademarks. 

We conclude that Defendant’s proffered “parallel marks” instruction was

not a complete statement of the law because it omitted a portion of the statement

made by the district court in Culbro. Further, we find that Defendant was

adequately able to argue his theory of defense to the jury without a “parallel mark”

instruction. 

C. Prosecutorial Misconduct/Closing Arguments

“In reviewing claims of prosecutorial misconduct, ‘we must assess (1)

whether the challenged comments were improper; and (2) if so, whether they

prejudicially affected the substantial rights of the defendant.’” United States v.

Miranda, 279 Fed. Appx. 950, 951-52 (11 Cir. 2008) (per curiam) (quoting th

United States v. Arias-Izquierdo, 449 F.3d 1168, 1177 (11 Cir. 2006)). As th

Defendant’s counsel objected to the comments at trial, the standard of review is de

novo. United States v. Bailey, 123 F.3d 1381, 1400 (11 Cir. 1997). “A

th

defendant’s substantial rights are prejudicially affected when a reasonable

probability arises that, but for the remarks, the outcome of the trial would have

been different.” United States v. Eckhardt, 466 F.3d 938, 947 (11 Cir. 2006). th

22
In its initial closing, the Government argued that although Defendant used

boxes and labels designed to look like “Cuban” cigars, the names, symbols, and

artwork Defendant used were identical to or substantially indistinguishable from

the U.S. trademarks. Defendant’s attorney argued in his closing that copying

Cuban cigars and marks was not a crime because Cuba had no rights in the United

States. Defendant’s attorney also implied that Altadis U.S.A. was a puppet of the

Cuban government and that the Cuban government was behind Altadis U.S.A.’s

registration of marks in the United States and behind the prosecution of

Defendant. Specifically, Defendant’s counsel stated:

This is not about U.S. trademarks. Let me tell you how you know

that. You have to analyze, look at the big picture . . . . What is the

big picture here?

The big picture is easy. These guys are the little puppets of Altadis. 

Who is Altadis? Altadis is fifty percent business partner of the Cuban

Government.

What were they looking for? They were trying to figure out a way

around U.S. laws to figure out how they could protect Cuban

trademarks. That’s really what this is all about.

See DE151, at 11. 

In its rebuttal closing, the Government responded to defense counsel’s

assertions that Defendant did not commit a crime because Cuba had no rights in

the United States. The Government argued that if Defendant’s interpretation were

23
correct, if a country such as Cuba or Venezuela decided to copy a McDonald’s

trademark, then anyone in the United States could open a McDonald’s (without

authorization from the company) by contending it was legal to do so because he

was just copying the Cuban or Venezuelan McDonald’s and not the U.S.

McDonald’s. In response to defense counsel’s comments about Altadis U.S.A.,

the Government stated that the case was not about the Cuban embargo and that the

jury would be receiving no instructions on the Cuban embargo. Rather, the jury

was only to determine whether Defendant violated 18 U.S.C. § 2320(a).

Specifically, Mr. Gilfarb, the prosecutor, stated:

I think Burger King used to have the phrase, have

it your way. The defendant cannot have it his way. 

He can’t have it his way because the argument is

that if Cuba or any other nation decides to ignore

our laws about what is protected then anyone here

in the United States can copy that –

MR. HERRERA: Objection.

THE COURT: Grounds?

MR. HERRERA: Inconsistent with the law and facts.

THE COURT: Overruled. What the lawyers say is not the law

nor is it the facts. It’s what they think the facts

are. And the law I will give you the law. You will

decide what the facts are.

MR. GILFARB: Now Cuba decides it’s going to have a McDonalds

–

MR. HERRERA: Objection, Golden Rule.

THE COURT: Overruled.

MR. GILFARB: Then somebody in Hialeah says I am going to

have a McDonalds too, so it’s the Cuban

24
McDonalds. Then you have Hugo Chavez who

decides he wants a McDonalds in Venezuela –

MR. HERRERA: Objection. This is Golden Rule.

THE COURT: Overruled.

MR. GILFARB: How long will that go on before U.S. trademark

law means nothing. That is the defendant having

it his way. U.S. law would mean nothing in the

end. This defendant stole what Castro couldn’t. 

Reached into the United States and stole what

Castro could not.

Stole from these expatriates their reputations and

their names. That Altadis, S.A., the parent

company to one of the victims, only one of the

victims – by the way, if you decide to for some

reason ignore Altadis as the victim what is the

defense to General Cigar that Altadis, S.A. is

violating the embargo because it’s a Spanish

corporation not subject to the jurisdiction here that

has a subsidiary company that is victim to a

company that violates the embargo? Despite that

the U.S. Government granted them protection, the

protection of the Patent and Trademark Office. 

That doesn’t make sense. Just because a company

that does business here has a parent that does

business with Cuba that violates the embargo.

There is not going to be an embargo instruction. 

You will be instructed on the law relevant to this

case. There’s no embargo instruction.

See DE151, at 20-22.

We do not find the prosecutor’s remarks to be improper. Throughout the

trial, Defendant’s counsel referred to the situation in Cuba and accused the

Government of siding with Fidel Castro and protecting Cuban trademarks. He

25
also repeatedly argued that the Government was going after the “little guy” and

protecting companies owned by the Cuban government. The Government’s

comments were in direct response to Defendant’s assertion that a guilty verdict

would be tantamount to supporting the Cuban government. 

Even if we did find the comments to be improper, we would not find that

they prejudicially affected the substantial rights of the defendant. Upon objection

of defense counsel, the district court reminded the jury that the comments of the

lawyers reflect neither the law nor the facts. Both the Government and Defendant

were able to press their theories to the jury. The Government argued that

Defendant was copying the trademarks of U.S. companies; Defendant argued he

was copying Cuban trademarks which are not afforded protection in the United

States. With this issue squarely presented to the jury, nothing in the rebuttal

argument of the Government prejudiced Defendant’s right to have the jury

consider his theory of the evidence. We do not find there is a reasonable

probability that but for these remarks, the outcome of the trial would have been

different.

III. Conclusion

For the above-stated reasons, we AFFIRM Defendant’s convictions and

sentence.

26