Pam Huff is a member of the Intellectual Property Group in Dykema’s San Antonio office. Ms. Huff’s practice is primarily devoted to the prosecution and protection of extensive domestic and foreign trademark portfolios. Her practice includes brand management and enforcement, domestic and international strategy counseling and execution, and dispute resolution.
After 54 years, the American flag has once again been raised over the American Embassy in Cuba. And although American tourism in Cuba remains off limits, the list of approved travel to Cuba has been expanded to include humanitarian projects, religious activities, educational activities (aka “people-to-people” trips), professional research, and participation in athletic or public performances. Much debate still exists over whether the travel embargo will ultimately be lifted but that isn’t stopping related activities.
Cruise lines are gearing up for trips to Cuba, hundreds of rooms and homes are now available for rent on Airbnb.com, and flight availability from the US to Cuba has increased dramatically. Furthermore, the new US regulations are notably intended to allow US exporters to sell goods directly to the Cuban private sector instead of to government-controlled entities. With likely increased demands for goods and services to support the economic growth of Cuba’s infrastructure, the cell phone, internet, and computer industries are just of few of the areas anticipating large shipments of goods into Cuba.
So what does this newfound activity in Cuba mean for your brand? Is it time to protect your trademark in Cuba? The answer from most is a hearty “yes.” In fact, many contend that the time to secure trademark protection is behind us and that protecting your trademark in Cuba should have long been part of your global trademark strategy. Unfortunately, this brand protection strategy hasn’t been so easy to implement.
Since 1995, OFAC (Office of Foreign Asset Control) has contained express allowances in Cuba to establish, maintain, protect or register intellectual property rights. But in practice, it has often been difficult to find a US financial institution to process payments to Cuban trademark counsel. In view of the significant penalties assessed against OFAC violations, as well as the possibility of criminal charges, many US banks have simply refused to process payments to Cuba, no matter the reason.
With recent relaxations of the US embargo, there appears to be an easing to this banking practice and so securing trademark rights is at the top of many brand owners’ “to do” list. Arguably a smart strategy since, unlike the US where common law rights take precedence, Cuba operates under a “first to file” system, where the first party to file for a trademark registration has legal protection regardless of legitimate trademark interests. This system can result, and arguably has already resulted, in a fevered “race to the trademark office” in order to secure trademark rights.
Although no one is immune, many US trademark owners in the food and beverage as well as retail sales industries have been dismayed to find that their trademarks have been registered in Cuba by third parties with no actual use of or interest in the marks. Consequently, it makes sense to apply for Cuban trademark registrations as early as possible. And with a cost that is basically equivalent to filing in most South American jurisdictions, many brand owners find it an affordable strategy.
Source: Intellectual Property Watch