Diserio Martin O'Connor & Castiglioni LLP

Now is the time to register your trademarks in Cuba!

April 28, 2015

DMOC CLIENT UPDATE

Now is the time to register your trademarks in Cuba!

With the federal government moving towards relaxed U.S. sanctions and export policy with Cuba, it is clear that US companies are anticipating new business opportunities in the Cuban market.  Technically, US companies have always had a legal way to protect their intellectual property assets in Cuba.  Specifically, an intellectual property exception to the current US embargo on trade with Cuba allows US companies to retain local agents and pay filing fees in Cuba to prosecute and protect their intellectual property rights, including trademarks and patents.  In light of these developments, US companies interested in the Cuban market should consider strategic first steps to protect valuable trademarks and other intellectual property in Cuba. 

First and foremost, US companies should consider proactively seeking a Cuban trademark registration to make certain that their mark is available when trade with Cuba opens up.  The Cuban trademark system is a “first to file” jurisdiction, meaning that the first applicant owns the mark, even if they do not actually use the mark in commerce in Cuba or elsewhere.  As a result of the first to file system and the current political atmosphere, there has been a recent uptick in opportunists filing Cuban applications for well-known US trademarks, even though the applicant has no legitimate claim to the mark.  US companies, especially those with famous logo marks, are encouraged to monitor the Cuban trademark files for this type of activity.  Compared to the cost of lengthy battles with potential trademark “squatters”, filing now for trademark protection in Cuba is a wise investment.

Applying for a Trademark Registration in Cuba

There are two ways to apply for a Cuban trademark registration: (1) filing a trademark application through the Oficina Cubana de la Propiedad Industrial (OCPI), the Cuban equivalent of the US Patent and Trademark Office; or (2) extend a current US trademark registration by designation to Cuba through filing an international application pursuant to the Madrid Protocol treaty.  Like the US trademark application process, the OCPI will reject applications found to conflict with existing Cuban trademark registrations.

Lawyers in our Intellectual Property Department can assist clients with all of these activities.  Now is the time to register your trademarks in Cuba!

For more information, please contact Matthew Wagner, chair of our Intellectual Property Department, at MWagner@dmoc.com, or 203-358-0800.