Intellectual property owners in New Jersey and around the country may be familiar with the practice of trademark squatting. This occurs when individuals or companies register U.S.-protected trademarks in countries where the trademark holder has no commercial presence. Trademarks are protected under U.S. law for three years even when they are not used. Business experts have urged American companies to aggressively register their trademarks in Cuba even if they have no immediate plans to conduct business there. The issue was brought up on April 5 during an international conference on property law held by the American Bar Association.
The thawing of relations between the United States and Cuba could provide American businesses with a lucrative new market, but trademark squatters could also be attracted to the Caribbean island nation due to a key aspect of its intellectual property laws. Trademarks are awarded in the United States based on their earliest, continuous use. However, Cuba grants this protection on a first-to-file basis.
While Cuba has signed most of the major intellectual property treaties and is part of the Madrid Protocol, there are some important differences between registering a trademark in Cuba and registering one in the United States. Disclaimers of descriptions are handled differently in Cuba, and Cuban attorneys generally expect payment for the services they render upfront. Other barriers include regulatory obstacles left in place by the decades-long embargo and banking restrictions that make it difficult to transfer funds to Cuba.
Attorneys with trademark law experience may urge their clients to vigorously register their trademarks to guard against trademark squatting. Lawyers could also explain how single trademark filings can register trademarks in several countries and how the Nice Classification of goods and services applies to international trademark law.