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Now is the Time to Protect Your Marks in Cuba

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In view of the US embargo imposed on Cuba in 1961 that prohibited US companies from selling products or doing business in Cuba, most US companies have not focused on this near neighbor to the south as part of their business strategy. When an intellectual property rights exception to the US embargo was recognized in 1995, which enabled US companies to protect their trademarks, patents, copyrights, and trade names in Cuba, some companies filed applications to register their trademarks and patents in Cuba. But many chose not to, feeling that the commercial imperative to do so was not there since they were unable to sell their products in Cuba and had no real prospects of being able to do so.

However, the landscape is changing in light of President Obama's announcement in December 2014 signaling improved trade relations with Cuba and the implementation of changes to the import and export policy under the Cuban Asset Control Regulations & Export Administration Regulations (EAR) in January 2015. It appears that now may be the time to take action to protect your trademarks, copyrights, patents, and trade names in Cuba.

US companies who are thinking proactively and strategically about filing applications in Cuba now will be best positioned to enter the Cuban marketplace as trade relations continue to improve. Proactively filing for trademark protection in Cuba at this point in time will also preempt others from hijacking the trademarks of US companies in Cuba if, and when, trade with Cuba is again permitted. At that point the floodgates will open and US companies will have an even greater commercial imperative to be able to protect and use their marks in Cuba (and hijackers will surely capitalize on this opportunity.)

Since Cuba is a member of the Madrid Protocol, filing trademark applications in Cuba is relatively inexpensive, particularly if the US company already has Madrid Protocol filings and Cuba can be added as a subsequent designation for official fees of less than $400 (including the Cuban country fee and the Cuban registration fee for an application covering 1 class of goods/services.) Compared to the cost of dealing with a trademark hijacker or counterfeiter, filing for trademark protection in Cuba now is money well spent. 

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.