In December 2014, President Obama declared that the United States would finally be working toward lifting a fifty-year-old embargo and resuming economic relations with the neighboring country of Cuba. Aside from potentially numerous implications to the business endeavors of both American and Cuban citizens, there promise to be important legal consequences as well, at least in the realm of intellectual property protection.
Unlike in the United States, trademark rights in Cuba vest in the first to file a trademark registration application in the Cuban Industrial Property Office, and not the first to use the mark in commerce. In anticipation of burgeoning economic relations, it may in fact be beneficial to apply for a trademark registration in Cuba promptly, perhaps even before the lift of the embargo, if one anticipates conducting any business in Cuba once trade resumes between the nations. A Cuban trademark registration would not only serve to secure one’s rights in his or her important and valuable marks in a new market, but would also help prevent others from applying to register those marks first, in a behavior known as trademark squatting, in an attempt to profit from selling the trademark registration back to a legitimate user at a premium cost.
As an important caveat, however, it is still unclear when economic relations with Cuba will actively resume, and trademark registrations in Cuba remain subject to cancellation for three consecutive years of non-use. Those not desirous of playing the prediction game should nevertheless consider other options to better protect their valuable marks in preparation. It becomes even more vital to register and adequately maintain trademarks in the United States, including policing would-be infringers, to ensure the strength of the mark before taking it abroad. Additionally with an eye to increases in imports, it may be wise to record trademarks with U.S. Customs and Border Protection to guard against importation of counterfeit goods.
Overall, Cuba may prove to be an important new market for the United States, and Cuban enterprises looking to enter the U.S. will likely have an impact on U.S. commerce. At this point, what practical ramifications arise once the embargo is lifted is anyone’s guess, but it is evident that businesses are already vying to secure their place in the changing marketplace.