Since the 1961 embargo of Cuba, it has been seen as a waste of time and money for American businesses to file for Cuban trademark protection, but that is changing. In December President Obama announced the reestablishment of full diplomatic relations with Cuba, and increased travel and economic growth between the two countries will likely follow. Shrewd U.S. businesses should plan now how they will take advantage of a market that is poised to become the Caribbean's fastest-growing economy, including a strategy for protection of their valuable intellectual property.
Cuban trademark law gives protection to a mark from the date of the application filing, so businesses should consider quickly registering their valuable marks in Cuba; particularly if they do business in Central or Latin America or the Caribbean. Standing idle could mean a loss of revenue due to late market-entry or worse, the bad-faith registration of your mark by someone else.
On Your 'Mark,' Get Set, Go! Two Reasons to Trademark Now
The Cuban Industrial Property Office administers trademarks in Cuba and currently, U.S. businesses can register their marks in Cuba through a general license from a division of the U.S. Dept. of the Treasury. But, akin to the Lanham Act in the U.S., Cuban trademark law requires marks be used in commerce to avoid being deemed "abandoned." With the embargo preventing businesses and individuals from any large-scale commercial transactions, U.S. businesses have generally viewed registering their marks in Cuba as not worth the effort.
However, while the embargo does still officially remain, a continued softening seems likely. As travel to and commerce with Cuba increases, so will the opportunity for U.S. business to expand their valuable brands into this new and close-to-home market. Companies should have a solid intellectual property protection strategy in place before 1.) the Cuban economy experiences what is likely to be a significant improvement, creating abundant business opportunities for American companies and 2.) bad faith efforts are undertaken by those in Cuba capitalizing on unprotected marks.
How Polsinelli Can Help
As Cuba is a member of the Madrid Protocol, the international system for trademark registration, obtaining rights to your mark in this foreign country may be well worth consideration. For a comprehensive review of your intellectual property portfolio and analysis of your current and future brand strategy both here in the U.S. and abroad, please contact the author or your Polsinelli attorney.