Given recent Obama administration steps that may make it possible for American companies to do business in Cuba and for American citizens to visit this tropical island on holidays, we may soon see couples returning to celebrate New Year's Eve in Cuba as shown in The Godfather II while drinking California wine, eating Texas beef and buying U.S. branded goods. However, given potential issues, trademark owners need to plan their strategy carefully in Cuba so that their brands do not suffer the same fate as brother Fredo in The Godfather II on his rowboat cruise.

Since the 1960's, the United States has maintained sanctions under the Cuban Assets Control Regulations, or "CACR", which generally prohibits (with a few exceptions) U.S. entities from conducting commercial trade with Cuba or Cuban businesses. Trade by foreign subsidiaries of U.S. corporations was also forbidden. The sanctions, however, have generally permitted intellectual property-related payments to the Cuban government and/or Cuban attorneys or representatives through either a special license from the Office of Foreign Assets Controls or a general license. The current CACR specifically permits US trademark owners to (i) file, prosecute and register trademark applications and related renewal applications in Cuba; (ii) file opposition, cancellation or infringement proceedings in Cuba; and (iii) make required payments in connection with the same to the Cuban government and/or attorneys relating to such permitted actions.

While an estimated 5,000 U.S. owners have already filed and obtained trademark registrations in Cuba under these regulations, many other owners have shied away from seeking such protection fearing a backlash from the appearance of doing business in Cuba. The recent administration proposal to loosen business and travel restrictions in Cuba though may quickly change the realities and optics of doing business in Cuba. Intellectual property owners would be well-advised to begin clearing and registering their trademark rights to control ownership of their brand and avoid costly legal battles. Indeed, some owners may face obstacles as Cuban trademark squatters have already filed applications for famous marks such as NFL, KOHL'S, DENNY'S, NORDSTROM, QUIZNOS and CHIPOTLE.

To address these issues, Troutman Sanders has the following recommendations:

  1. Get the "lay of the land" in Cuba. Conduct trademark searches of the Cuban Trademark Register to determine if your marks are available or already registered;
  2. If available, file trademark applications as soon as possible (especially with the wave of fresh applications expected to pour into the Cuba Patent Office) to prevent trademark squatters and others from being the first to file and obtaining registered rights to your marks.
  3. If a trademark squatter or another party has already registered your mark, consult with counsel to determine whether an opposition or cancellation proceeding or an infringement suit in Cuba should be filed in order to recapture rights to your mark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.