US Companies TM Filings With Cuban Trademark Office

Trademark rights generally arise from first use of a particular trademark as used in connection with a particular good or service. As such, a trademark application filed with the United States Patent and Trademark Office (and many other countries) will not issue unless the applicant can show that use of the applied for trademark has begun in commerce.

There are a few exceptions to the "show use before registration" rule. One such exception exists for trademarks filed by persons or companies of Cuba. In short, the Cuban applicant can claim an exemption from "non-use" of the trademark in the US and obtain registration of their trademark with the United States Patent and Trademark Office (presuming that there was no conflict with another trademark).

This "fiction" is keeping many U.S. trademark owners from obtaining a trademark registration in the U.S. even though they own the prior common law rights in the U.S.

The other side to this loophole is that U.S. persons or companies are also free to file trademark applications in Cuba. This has been going on for some time. Not surprisingly, many large companies have recently taken steps to register their well-known trademarks with Cuba's Trademark Office, known as "Oficina Cubana de la Propriedad Industrial" ("OCPI"). This traditionally has been a mysterious and "behind the scenes" process which usually involved contacting certain "authorized" trademark agents in Cuba to conduct the filing on the U.S. applicant's behalf. The exchange of money for the trademark filings in Cuba is exempt from the Embargo so this is entirely legal.

What is interesting about this entire process is that the OCPI has now begun to make public many of the new trademark filings. For instance, you can now access www.ocpi.cu and download the "Boletin Oficial." Each "Boletin Oficial" contains detailed information relating to trademark applications. A brief review of each "Boletin Oficial" reveals that there appears to be an increase in trademark applications filed by U.S. companies in Cuba although they can not presently sell their products there.

This leads one to believe that: (1) large U.S. companies know that the opening of Cuba is imminent; and/or (2) Cuba itself believes that U.S. style capitalism is imminent and has decided to make these records public.

In any event, take a moment to access the website and to review the "Boletin Oficial." You might be surprised to see what trademarks have been applied for and the companies that own them.