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.
To the great joy of some and the great outrage of others, the United States Patent and Trademark Office Trademark Trial and Appeal Board cancelled six federal trademark registrations for the name of the Washington Redskins on July 18, 2014. The cancellations came as a result of a long battle by Native American individuals and groups, since at least the early 1990s, to petition the U.S. Patent and Trademark Office to agree that the name was offensive to Native Americans and thus undeserving of trademark protection under federal law 15 U.S.C. §1052. The portion of the Lanham Act in Section 1052 disallows trademark registration for any mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The direct impetus of the recent cancellations was a petition filed by six Native American individuals in 2006. The Trademark Trial and Appeal Board reached its decision by going through a two-part analysis. The Board decided that the term “Redskins” in the marks would clearly be understood to identify Native Americans as a group, and further, that the term may be perceived as disparaging by a substantial composite, or significant portion, of that group. Perhaps most interestingly, the Board ultimately held the federal registrations should be cancelled because the marks were disparaging at the time they were registered.
In this case, as in many other socially and politically charged issues, the pendulum of tradition swings both ways. On the one hand, the Washington Redskins have gone by that name for more than forty years and were granted federal registrations despite the Board’s assertion that the names have always been disparaging. On the other hand, society’s increased sensitivity to what has been termed “political correctness” is not necessarily a bad thing when derogatory names for racial groups are broadcast in popular culture on a national level. It is important to note that the trademark cancellations do not require the team to change its name or prevent it from still enjoying the protection of state and common laws resultant from its long period of use and fame of the marks. Additionally, much of the NFL is governed by contract, with a multitude of licensing arrangements that more than likely still provide the team with a large portion of exclusivity to the name. The team does, however, lose the benefits afforded by federal registration, such as presumptions of trademark validity, U.S. Customs protections, and the ability to sue for potentially large statutory damages for trademark infringement. It is also widely believed that the decision will be appealed, most likely to the federal district court, which has the ability to review such decisions de novo. As such, no matter which side one falls on, it is probably way too early to call “Game Over.”