This guest post was written by Joanne Ludovici, partner in the law firm of McDermott Will & Emery LLP.

The easing of restrictions by the Obama administration has opened the door, albeit slightly, for businesses in both the U.S. and Cuba to resume marketing and selling their branded products and services across the waters.

Joanne Ludovici, partner in the law firm of McDermott Will & Emery LLP.

Joanne Ludovici, partner in the law firm of McDermott Will & Emery LLP.

Now is the time for brand owners to assess or re-assess their current business and trademark protection plans to take this new landscape into account. Don’t wait for the embargo to be lifted to act. Filing new trademark applications now may save you a brand battle, with all its related costs, rum headaches and headlines, later.

Cuba is a “first to file” country. Is the Cuban market anywhere near your business plan within the next five years? If your business operates in the financial services, construction/tool, travel/hospitality, telecomm, among other previously-prohibited sectors, file trademark applications in Cuba now. If you hope to be able to sell and ship products to Cuban consumers over the internet, file now. If your business plans might call for importation into Cuba someday, file now.

Cuban brand owners must also take steps to protect their brands in the U.S. for all of the same reasons. While there are still barriers to importation of Cuban products beyond bringing back a few Cuban cigars or liters of Cuban rum, there is some light at the end of the embargo tunnel.

It would also be wise for Cuban brand owners to file U.S. applications now.

One more reason to file U.S. trademark applications now: the U.S. is a “first to use” country, with a “first to file” twist that makes it interesting, a system especially helpful under the shifting U.S.-Cuba commercial landscape. Trademark applicants, with a bona fide intent to use a brand in U.S. commerce, can stretch out the pendency of a U.S. trademark application for yearspost-filing. The two countries can take their sweet time sorting out the particulars to end or ease the embargo, while you keep your priority place in line at the U.S. Patent and Trademark Office.

Stopping fakes at the borders should also be in the plan. The defrosting relations with Cuba, while generally viewed as great for businesses and brands, can create opportunities for the unscrupulous to take advantage of the shifting landscape. Make sure your legal arsenal is ready. Record your U.S. trademark registrations with U.S. Customs and Border Protection.

The recordation process is relatively simple, inexpensive and of great benefit, and can help keep illegal, infringing counterfeit or grey market products from entering U.S. commerce, including those from Cuba.

Joanne Ludovici is based in McDermott Will & Emery LLP‘s Washington, D.C. office. From 2010-2013, she was head of the firm’s Global Trademark Prosecution, Transactions and Strategy Practice Group.


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