President Obama recently announced that the United States and Cuba would begin talks to reestablish diplomatic relations and partially lift the economic and travel sanctions that have existed between the two nations for over fifty years. While the embargo in general remains in place at this time, it appears that the entrance of U.S. companies into the Cuban market is no longer a remote possibility, but merely a matter of time.  As Cuba slowly begins to open to the U.S., brand owners should take proactive measures to protect their valuable intellectual property in Cuba.  Like many jurisdictions outside of the U.S., trademark rights in Cuba are established and granted to the first party to file a trademark application for a particular mark.  Thus, brands should take advantage of the President’s announcement to consider expanding or obtaining trademark rights in Cuba to fully prepare for possible future expansion. 

Read more about this U.S. policy shift towards Cuba. 

On December 17, 2014, President Obama announced that the United States and Cuba would begin talks to reestablish diplomatic relations and partially lift the economic and travel sanctions that have existed between the two nations for over fifty years.

Most significantly, President Obama announced plans to authorize certain types of travel to Cuba, exports of telecommunication devices and industrial materials to help build Cuba’s infrastructure, and the use of U.S. debit cards other financial instruments to facilitate economic activity in the underdeveloped nation.  Although these changes will not take effect immediately, and Congressional approval is also required, the possibility of normalized diplomatic relations between the United States and Cuba for the first time in more than fifty years provides brand owners with an early opportunity to evaluate the current state of their intellectual property portfolio in Cuba. 

Two of the primary motivations for this policy shift appear to be re-opening access to Cuba for U.S. companies as well as a desire to foster Cuban entrepreneurship. While full-scale trade with Cuba is not yet a possibility, these incremental steps to facilitate transactions between the two nations should help create opportunities for new business. It is expected that the U.S. business community, which has long supported eliminating trade restrictions with Cuba, will further encourage the lifting of additional restrictions to facilitate the further development of trade with Cuba.

The potential market for the export of goods and services to Cuba is significant. Although it will likely take time for economic relations to fully normalize, many industries stand to benefit from these anticipated policy changes, including the finance, agricultural, and industrial sectors, which stand to improve Cuba’s domestic infrastructure, and to help the island nation stimulate its own market economy. Moreover, as the number of foreigners who visit Cuba is expected to greatly increase, the food and beverage, retail, and tourism sectors will see Cuba as a more profitable prospect for expansion as travelers seek out the familiar products and services of the U.S., not previously available in Cuba.  

The entrance of U.S. companies into the Cuban market in no longer a remote possibility, but merely a matter of time. As Cuba slowly begins to open to the United States, brand owners should take proactive measures to protect their valuable intellectual property in Cuba. 

Like many jurisdictions outside of the United States, trademark rights in Cuba are established and granted to the first party to file a trademark application for a particular mark.  In other words, trademark rights in Cuba arise only through federal registration. Thus, as in many other jurisdictions, there exists the potential for brand hijackers or counterfeiters. As the relationship between the U.S. and Cuba broadens, U.S. brands will receive greater exposure in Cuba, thereby increasing the risk of unauthorized acquisition of Cuban trademark rights for U.S. brands. 

To avoid the difficulty and expense of the unauthorized registration of a brand in Cuba, it is advisable for U.S. entities to contemplate filing for protection of their marks in Cuba before the embargo is lifted.  Two avenues to obtain trademark protection in Cuba exist. Brand owners may obtain protection for their marks by filing a national Cuban trademark application or through an international registration under the Madrid Protocol. In fact, international registration holders are able to file for trademark protection in Cuba simply by designating Cuba under an existing international registration. 

U.S. entities are currently permitted to file for and obtain trademark registrations in Cuba pursuant to an exception to the embargo. This exception allows entities to pay the official fees associated with trademark prosecution through local representatives or the Madrid international filing system. Further payments to Cuban counsel for services rendered in connection with intellectual property matters are also covered under this exception. 

The imminent aperture of the Cuban market and the current methods available to U.S. brand owners to protect intellectual property presents a unique opportunity for international expansion. While Cuban expansion is not yet a reality, it is a realistic possibility in the near future. Thus, to ensure adequate protection of a brand’s core intellectual property assets, brand owners should take advantage of the President’s announcement as an opportunity to reevaluate their intellectual property holdings in Cuba, and contemplate whether to obtain or expand the scope of their trademark rights in Cuba. By proactively considering a brand’s strategy with respect to Cuba at present, brand owners will be well-equipped to enter the Cuban market with the assurance that they hold all relevant rights necessary for successful expansion in the jurisdiction.