Top Ten Reasons For U.S. Companies To Protect Brands In Cuba Now: Part I

Every company - regardless of size - has a name and/ or a trademark. Often, that name or trademark is a company's most valuable asset, and should be protected as such. Yet, historically, protection of trademarks in Cuba has not been high on U.S. companies' agendas. Protection of U.S. trademarks in Cuba is currently possible, is relatively simple, and is a smart and strategic business move: Below are five of the top ten reasons to seek protection of trademarks in Cuba now:

Cuba Is A First-To-File Jurisdiction The first party to file for a trademark registration in Cuba is the first party to obtain exclusive rights in the underlying trademark in Cuba. This is different from the U.S. use-based system, under which a party's rights in a trademark are based on actual use of that mark in commerce, regardless of registration.

Without the requirement for use, (1) a U.S. company that has not yet entered the Cuban market can still lock up protection of its brand, and (2) an unauthorized third party (Cuban or not) can do the same. Even absent underlying use and good will, a third party "troll" could obtain exclusive rights to a legitimate U.S. brand in Cuba - thus further underscoring the need to file now.

Because They Can . . . It is relatively easy for a U.S. company to file an application for trademark protection in Cuba - indeed, it is no more complicated than filing in? the more common jurisdictions of expansion, such as Europe, Canada, or Mexico. The only requirement is that a Cuban lawyer handle the actual filing before the Cuban Office of Intellectual Property (OPCI). An application can be filed in Cuba on a number of bases, including under the Madrid Protocol, an existing foreign application or registration, or a direct Cuban national application.

. . . And So Can Others Without demonstrating any actual interest, use, or bona fide intent to use a mark in Cuba, unauthorized third parties (they could be Cuban or foreign national companies or individuals, distributors, manufacturers, suppliers, etc.) can file an application and register a trademark in Cuba, thus acquiring exclusive and prior rights to that trademark in Cuba.

By way of example, one...