Editor
Considerations for U.S. Brand Owners in Cuba
Relaxation of sanctions associated with trade and travel to Cuba has many Americans dreaming of their next holiday to the longtime forbidden island. But for U.S. brand owners, increased opportunities to conduct business in Cuba also brings opportunities for trademark hijackers to take advantage of Cuba’s “first to file” system and obtain unauthorized rights to U.S. brands.U.S. brand owners need to consider taking steps now to protect their brands and enforce their rights against entrepreneurial trademark pirates and counterfeiters in Cuba. State of the embargo On Dec. 17, 2014, President Obama announced plans to normalize relations with Cuba. After 55 years of diplomatic and commercial isolation, Obama laid the groundwork for Cuba to be brought in from the cold. Shortly thereafter, the United States re-opened its embassy in Havana for the first time since 1961.

Following the president’s announcement, the Obama administration sought to ease aspects of the Cuban embargo by revising the Cuban Assets Control Regulations (CACR), 31 CFR Part 515, issued by the U.S. Department of Treasury’s Office of Foreign Asset Control (OFAC); and the Export Administration Regulations (EAR), 15 CFR Parts 730-774, issued by the U.S. Department of Commerce’s Bureau of Industry and Security (BIS). The revisions to the CACR have relaxed sanctions on travel to and from Cuba, the use of credit and debit cards in Cuba, certain activities conducted by U.S. banks in Cuba, commercial telecommunications and internet-based communications services in Cuba, transactions between U.S. companies based outside the U.S. and Cubans living outside Cuba, and the conduct of activities by U.S. companies in Cuba (e.g., the sale of agricultural, construction or communications products, mail/cargo transportation services, certain travel services).
Meanwhile, the revisions to the EAR include a new license exception entitled “Support for the Cuban People,” which authorizes the export of certain products to Cuba to improve living conditions, supports independent economic activity, strengthens civil society, and improves communication in Cuba; an expansion of the “Consumer Communications Devices” license exception, which removes the donation requirement and updates the list of devices (e.g., computers, mobile phones, televisions, etc.) that are eligible for export to and sale in Cuba; and the creation of a new “Environmental Protection” licensing policy that allows for the export of items related to renewable energy or energy efficiency. Opportunities for U.S. brand owners The shift in policy presents significant business opportunities for U.S. companies. Cuba has the largest population in the Caribbean, with more than 11 million inhabitants, and is the largest economy in the region, with a GDP of $77.1 billion.
Cuba also annually imports approximately $15.2 billion in goods such as petroleum, chemicals, food, machinery and equipment from key trade partners such as Venezuela and China.
In 2015, goods exported from the U.S. to Cuba totaled only $180 million. However, experts estimate that potential trade between the U.S. and Cuba could total approximately $20 billion annually with the normalization of relations.
Accordingly, U.S. brand owners have significant incentives to take proactive steps to protect their trademarks in Cuba as diplomatic relations improve.

The problem for U.S. brand owners

Cuba is a “first-to-file” jurisdiction, with rights arising from registration of a trademark as opposed to actual use of a trademark in commerce (unlike the U.S., which is a “first to use” jurisdiction).
Savvy trademark hijackers have already begun to take advantage of Cuba’s first to file principle by filing applications to some well-known U.S. brands in advance of trademark application filings by their rightful U.S. trademark owners.
For example, one individual recently filed more than 60 applications for famous American brands such as NASCAR, CARNIVAL, KOHL’S and CHICK-FIL-A. It then costs the rightful U.S. brand owners many thousands of dollars to oppose such unauthorized applications or take further legal action to wrestle back stolen rights from the piratical registrants.
Trademark hijackers understand the Cuban system; the backlog at the Cuban trademark office (the Oficina Cubana de la Propiedad Industrial or OCPI), which likely will get worse as U.S. sanctions are lifted; and the associated costs to raise a challenge in Cuba.
Hijackers make their money by selling back to the rightful U.S. brand owners the registrations that they have illegitimately obtained. In addition, counterfeiting of goods is rampant in Cuba.
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2017 Ⓒ Boston Patent Law Association
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Volume 48, Issue 1
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Index
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Message from the President Monica Grewal
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Implied In Ink?: How Tattoo Artists Can Claim And Protect Their Copyrights Against An Implied License Defense
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Message from the Editor-in-Chief
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A Conundrum for Time Bars to Institution of Inter Partes Review in Wi-Fi One, LLC v. Broadcom Corp.
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The Passing of a BPLA past president and Founding Partner of Hamilton Brook Smith Reynolds, Leo Reynolds
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Give Back by Getting Involved—BPLA’s Patent Pro Bono Program
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Boston Patent Law Association Minutes of The 2016 Annual Meeting
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Members on the Move
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Moot Court Judges Needed
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Arbitrating Patent Disputes — A Strategic Choice
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Considerations for U.S. brand owners in Cuba
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WIPO ST.26: A Roadmap To The Future of Sequence Listing Compliance
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PTAB Grants First Preliminary Reply and Sur-Reply Under New Rules
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Visual Artists Rights Act (VARA) and the Protection of Digital Embodiments of Artworks.
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SCOTUS UPSETS THE APPLE CART? The High Court Answers Key Question on Design Patent Damages, But Leaves Many
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New TTAB Rules Aim to Make Proceedings More Efficient
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Officers and Board of Governors
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Trademark Solicitation Scams
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