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Trademark Protection: Strategies for Cuba

Following President Obama’s December 2014 announcement of a relaxed policy towards Cuba, many companies await the opening up of the Cuban market. 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.

How to Apply for a Trademark Registration in Cuba

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.

A Cuban application is screened against existing registrations granted by the Cuban OCPI. As in the US, applications that conflict with existing registrations will be rejected.

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. Lawyers in our Intellectual Property & Technology Practice Group can assist clients with all of these activities.

© Copyright 2019 Squire Patton Boggs (US) LLP

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About this Author

Lacy Kolo, Intellectual Property Attorney, Foley Lardner Law Firm
Partner

Lacy Kolo represents U.S. and international clients through every stage of intellectual property (IP) development and management, including patent prosecution, due diligence, patent litigation, licensing, and technology transfer.

202 457 6051
David Elkins Attorney Patent Litigation Squire Patton Boggs
Partner

David Elkins has led our global Intellectual Property & Technology Practice Group since 2010. Based in Silicon Valley, David serves as lead trial and arbitration counsel in patent, trademark, trade dress, trade secret, false advertising and copyright actions nationwide.

Following outstanding client feedback, David has been named a “star lawyer” in the Acritas Stars™ global database in 2017 and 2018: “He’s a very dedicated lawyer and we can have full confidence and trust that he will act in our interests”; “The quality of his advice: it is sharp, it is to the point, and it’s very concise and relevant.” David has also been a Thomson Reuters Northern California Super Lawyer since 2014.

David served for more than seven years on the Silicon Valley Board of Directors of Playworks, including several years as the board’s chair. Playworks (which David continues to support) is a national nonprofit organization that supports learning at low-income, urban schools by transforming recess and play into a positive experience – helping kids and teachers get the most out of every learning opportunity throughout the school day.

Experience

  • Lead counsel for our stealth-mode battery technology company client in an arbitration (JAMS) against two former R&D scientist-employees who, after the respective employment of each terminated, wrote and published a journal article unlawfully disclosing a number of our client’s key trade secrets. Our client’s trade secret misappropriation and related claims will be tried in a multiple-day hearing scheduled for June 2018.
  • Lead counsel for the famous Muirfield Village Golf Club, securing a TRO, preliminary injunction and, ultimately, a permanent injunction in S.D. Ohio, preventing a Texas LLC from claiming exclusive rights to Muirfield’s 40+ year old trademark for its annual PGA Tour tournament.
  • Lead trial and appellate counsel for Venture Corporation Ltd and Venture Design Services, Inc. Following a two-week jury trial in N.D. Cal., the jury (i) confirmed our clients’ ownership of patents that a former employee claimed to have invented before his employment commenced, and (ii) rejected the former employee’s counterclaims seeking US$52 million-US$103 million in damages. Venture Corp. Ltd v. Barrett, No. 5:13-CV-03384-PSG, 2015 U.S. Dist. LEXIS 165809, 2015 WL 8479475 (N.D. Cal. Dec. 9, 2015). After the Court of Appeals affirmed, Venture Corp. Ltd v. Barrett, Case No. 15-17439, 2017 U.S. App. LEXIS 14174 (9th Cir. Aug. 2, 2017), the district court awarded our clients more than US$1.4 million in attorneys’ fees and related expenses.
  • Lead counsel for Zippo Manufacturing Co., maker of the iconic windproof lighter, in a number of trademark enforcement actions. In one action, David first-chaired our enforcement of one of Zippo’s trademark families in an infringement action in C.D. Cal. while directing parallel litigation in the German Regional Court of Frankfurt am Main and in the High Court of Justice in London. The parallel proceedings resolved by settlement on the eve of trial in C.D. Cal.
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