Trademark Registration in Today’s Cuba: Opportunities in a
More Open Economy

President Obama is planning a trip to Cuba in March, marking the first time in more than 80 years a sitting U.S. president will visit the country, according to sources with knowledge of the plan. The trip is planned for March 21-22 before the president flies to Argentina on March 23-24. During the trip to Cuba, President Obama is set to meet with Cuban President Raul Castro.The Obama Administration is pursuing ways to open up more opportunities for U.S. businesses and travelers to engage with Cuba, and wants the Cuban government to open up more opportunities for its people to benefit from that engagement.

In the following YouTube video, President Obama provides information about his upcoming Cuba visit:

In a more open economy that exchanges products and services with American companies, trademark rights can be of great importance. Some steps can be taken now to protect a company’s valuable trademarks and other IP in Cuba.

An exception to the long-standing US embargo on trade with Cuba permits US companies to file for and obtain trademark registrations in Cuba. US companies should consider taking immediate action to protect their trademark rights in that country. Doing so is advisable because Cuba is a “first to file” jurisdiction – in other words, a Cuban registration for a trademark will be awarded to the first applicant, even if that applicant has no legitimate claim to the mark.

An applicant does not have to use the mark in Cuba, or even plan to expand its business into that country, before filing an application for trademark registration. Proactively seeking a Cuban trademark registration now will help ensure that the mark is available when trade with Cuba is allowed. Applying for trademark registrations now also will help avoid later conflicts with counterfeiters or serial infringers who may try to beat legitimate trademark owners to the registration punch.

There are two ways to apply for a Cuban trademark registration: (1) if a US company owns a current US trademark registration, a Cuban application can be based on the US registration and filed through the international Madrid Protocol treaty; or (2) a national Cuban trademark application can be filed through local trademark agents with the Oficina Cubana de la Propiedad Industrial (OCPI), the Cuban equivalent of the US Patent and Trademark Office.

The IP exception to the embargo allows US businesses to pay filing fees and retain local agents in Cuba in order to protect their intellectual property rights. In addition to obtaining trademark registrations in Cuba, US companies can seek patents in Cuba. US companies also are permitted to litigate or take other steps to protect their copyrights, trademarks and patents from infringement in Cuba.