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With the resumption of diplomatic relations and the reopening of the U.S. Embassy in Cuba, the opportunity for commercial relations with Cuba is not far behind. But with that opportunity comes the need to protect one's intellectual property. It is not unrealistic for a U.S. company to expect opportunists in Cuba to illegally trade off the established brands of American companies. To combat such misconduct, U.S. brand owners should consider a strategy to secure their trademark rights in Cuba.
Cuba is a first-to-file jurisdiction for trademark rights. Thus, legal rights are granted to the first entity to file a trademark application, regardless of whether it is using the mark in Cuba or whether someone else has had prior use. For some time, an exception in the U.S. trade embargo has permitted American companies to obtain trademark registrations in Cuba and to litigate or take other steps to protect their trademarks from infringement in Cuba. However, until recently, filing in Cuba was not a priority for most U.S. brand owners because they were not able to actually offer their goods or services in Cuba due to the embargo. With that likely to change in the near future, U.S. brand owners should be prepared to secure their rights in Cuba promptly before a trademark pirate attempts to do so.
There are already reports of bad-faith trademark application filing in Cuba. One individual recently filed trademark applications in that country for more than 50 famous trademarks, including NASCAR, NORDSTROM, SAM'S CLUB, CHASE, QUIZNOS, KOHLS, CHIPOTLE, and DENNY'S. In reality, that person likely has no intention of using the brands but rather hopes to block the true brand owner from entering Cuba and then sell his or her ill-gotten rights to the true brand owner. The costs of combating these abusive registrants or purchasing the trademark rights from them typically far exceed those of filing a trademark application to secure your rights preemptively.
As a general best practice for brand protection, any company that intends to do business in Cuba or to have important trade partners, manufacturers or suppliers in Cuba should seek trademark registration. In addition, given the proximity of Cuba to the United States and the likelihood that brand recognition of U.S. companies will spill over into Cuba, even companies without immediate plans to enter Cuba should consider seeking protection there, just as they often do in Canada or Mexico, to protect against bad-faith filings. In light of the foregoing, the time to start considering protection in Cuba is now.
There are many options and considerations for pursuing trademark protection in Cuba. Day Pitney's Intellectual Property team can work with your company to navigate these complexities and tailor an approach that best secures trademark protection for your brands in Cuba.
Day Pitney Intellectual Property Attorney Brandon McCool authored the article, "The Game Plan: Conducting Trademark Clearance for New Team Names," for Sports Business Journal.
Intellectual Property Partner Jonathan Tropp will speak at the "Attorney's Guide for Understanding Copyright Law and Software in 2021," webinar presented by Thompson Reuters, the Global Cyber Institute, and Lexeprint Publishing on January 24.
On May 19, Partner Jonathan Handler moderated a virtual book talk for the Massachusetts Chapter of the Federal Bar Association with Professor Jeff Kosseff, author of The Twenty-Six Words That Created the Internet.
Partners Kevin J. Duffy and Richard H. Brown authored the article, "Shouting FIRE! (or Worse) on Social Media: The Interplay of the First Amendment and Government Involvement in Efforts to Limit or Remove Social Media Content," which was published in the Intellectual Property & Technology Law Journal.
On August 27, Tracy Friedenberg, Director of Technical Services & Project Management, co-presented "The Accidental Project Manager: Tools & Methodologies to Help You Succeed" at this year's ILTA>ON2020.
VCV Digital Technology announced that it plans to become a publicly traded company via a business combination with Fortune Rise Acquisition Corporation (NASDAQ: FRLAW, FRLA and FRLAW), a special purpose acquisition corporation.
Day Pitney Intellectual Property partner Elizabeth Alquist's inclusion in Hartford Business Journal's Top 25 Women in Business was featured in We-Ha.com's Business Buzz column.
Day Pitney Press Release
Day Pitney's Litigation Department chair Elizabeth Alquist was selected for inclusion in the Hartford Business Journal's "2022 Top 25 Women in Business."
On April 6, Day Pitney Intellectual Property Attorney Brandon McCool discussed with University of New Hampshire Franklin Pierce School of Law's The Legal Impact podcast his recent article published in the Sports Business Journal, which details the unique trademark process sports teams must undergo when they are selecting and clearing names and logos for their franchises.
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This website may use cookies, pixel tags and other passive tracking technologies, including Google Analytics, to improve functionality and performance. For more information, see our Privacy Policy. By using our website, you are consenting to our use of these tracking technologies. You can alter the configuration of your browser to refuse to accept cookies, but if you do so, it is possible that some areas of web sites that use cookies will not function properly when you view them. To learn more about how to delete and manage cookies, refer to the support instructions for each browser (e.g., see AllAboutCookies.org). You may locate Google Analytics' currently available opt-outs for the web here.