Recent developments justify reconsidering companies’ trademark protection options.
Although US sanctions that generally prohibit US exports to Cuba as well as other transactions that involve Cuba largely remain in effect, recent developments aimed at normalizing US relations with Cuba have occurred within the last several months. These developments make it important for US companies and individuals to understand the limits and opportunities that may now exist with respect to trademark protection in this neighboring country, which may become increasingly important to travel and trade.
Relaxed sanctions on exports to Cuba have been minimal, with only specific product categories permitted and with restrictions on the Cuban recipients of such products limited primarily to private sector businesses, independent Cuban entrepreneurs, and nongovernmental agencies. The sanction relaxation was accomplished through revisions to the Cuban Assets Control Regulations (CACR, in 31 CFR Part 515) issued by the US Department of the Treasury’s Office of Foreign Assets Control (OFAC) and the Export Administration Regulations (EAR in 15 CFR Parts 730 - 774) issued by the Department of Commerce’s Bureau of Industry and Security (BIS). These revisions take the form of general licenses, license exceptions, and changes in licensing policy, all of which are narrowly drawn and quite detailed, including a requirement that payment for such exports be made by cash in advance. “Cash in advance” is defined by the regulations as cash receipt before transfer of title to and control of the exported items.
The safest way to approach a possible export to Cuba is to determine if a specific product category is identified in the CACR or EAR as subject to a general license, a license exception, or a change in licensing policy and then to make sure that compliance is possible with all the terms specified by such general license, license exception, or change in licensing policy.
The products specifically identified by the CACR and EAR and potentially exportable to Cuba under a general license, license exception, or change in licensing policy are as follows:
Certain specified agricultural commodities (15 CFR § 740.18)
Certain specified medicine and drugs (15 CFR 746.2)
Certain medical devices (15 CFR 746.2)
Certain consumer communication devices to individuals and independent nongovernmental organizations (15 CFR § 740.19 and 15 CFR § 740.21(d))
Building materials, equipment, and tools for use by the private sector to construct or renovate privately owned buildings (15 CFR 740.21(b)(1))
Tools and equipment for private sector agricultural activity (15 CFR 740.21(b)(2))
Tools, equipment, supplies, and instruments for use by private sector entrepreneurs (15 CFR 740.21(b)(3))
Nothing in the regulations issued since US President Barack Obama first charted the new course on Cuba policy in December 2014 has materially changed the US position on protecting US brands in Cuba. OFAC’s CACR include a “General License” that permits US companies and individuals to file trademark applications, maintain trademark registrations, and enforce and defend trademark administrative proceedings and infringement litigation in Cuba. US law allows trademark applications to be filed at the US Patent and Trademark Office through the Madrid Protocol designating Cuba or, alternatively, directly in Cuba through national applications with assistance from designated local law firms.
Nevertheless, the general prohibition on trade with Cuba and the inability of US companies and individuals to export products to Cuba or otherwise offer products or services there (aside from the exceptions noted above) means that Cuban trademark registrations are subject to cancellation for lack of use after three years. It is also important to note that any transfer of Cuban trademark applications or registrations owned by a US company requires first requesting and obtaining a “Specific License” from OFAC. Thus, as a practical matter, most companies have limited or deferred any filings in Cuba, or have not even considered filing.
Notwithstanding the new US policies regarding Cuba, how US-Cuba relations will develop over the coming year and the effect that will have on protecting trademarks of US brands in Cuba remain uncertain. In the meantime, US companies may wish to reconsider their brand strategies in Cuba—depending on brand plans and interests in possible trade with Cuba—to take advantage of any changes in trade with Cuba. This is particularly important if there is a likelihood that any brand may be extended to Cuba in the next three years, given the need to use marks in trade with Cuba to maintain registrations there.