Caught between a Mark and a Hard Place: Resolving U.S.-Cuban Trademark Disputes in a Post-Embargo World

– Mary Grace Griffin

With the recent diplomatic changes in U.S.-Cuban relations, new questions arise as to the treatment of Cuban trademarks in the United States when the current economic embargo is terminated. Despite the existence of international intellectual property treaties to which both the U.S. and Cuba are a part, American courts have ruled that the embargo trumps any trademark rights that Cuban entities may own, allowing American businesses to register their own versions of the marks in the American market and presenting obvious conflicts if the embargo is ever lifted. To resolve the potential for future U.S.-Cuban trademark disputes, Congress should adopt a concurrent use registration scheme specifically designed to address the fallout from the embargo repeal. Since the publication of this Article, the Trump Administration has announced a rollback of President Obama’s announced policy for diplomatic reconciliation with Cuba. In April 2017, Bloomberg published an article recommending that American companies should protect their brands in Cuba by registering as early as possible there (https://www.bna.com/us-companies-register-n57982086391/). In July 2017, one month after President Trump’s Cuba policy announcement, Law.com similarly advised American companies to register in Cuba to protect from “trademark trolls” who began registering American brands in the island nation in anticipation of economic profit since Obama’s policy shift (https://www.law.com/dailybusinessreview/almID/1202793595697/). As far as Cuban trademarks in the U.S., nothing so far has changed due to the Trump Administration’s position, except for possibly extending the timeline for repealing the embargo (Law.com). This Article is important because it foresees future international trademark conflicts which will undoubtedly affect American businesses and recommends a legislative scheme to reconcile these conflicts so that circuit courts will give uniform treatment to challenges arising out of the eventual Cuban embargo repeal.

Abstract Written by Matthew S. Chandler, 2018