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Puerto Rican Trademarks

By Michael Agnew [March 31st, 2011] 

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Puerto Rico lies in between a state and a seperate country. It is officially part of the United States, but it isn’t really a state. The Commonwealth of Puerto Rico has some of its own laws when it comes to Intellectual Property. Puerto Rico falls under the U.S. federal laws when it comes to patents and trademarks. Trademarks are a little different. US trademark registrations under the Lanham Act cover Puerto Rico, but a Puerto Rican registration with the Puerto Rican government can give a trademark owner more rights locally.

What are the benefits of a Puerto Rican registration over simply registering a mark in the US under the Lanham Act?

Although the United States federal trademark law under the Lanham Act applies to Puerto Rico, Puerto Rican local law provides registered owners a faster and effective remedy when the mark is the victim of counterfeiting. For instance, ex parte temporary restraining orders to compel the infringer to cease continued use of the deceptively similar marks can be obtained by submitting a certified copy of the Puerto Rican trademark registration. There are also heighten criminal statutes making it illegal to possess counterfeit good that are passed off under a Puerto Rican registered trademark. Keeping empty authorized trademarked packaging to pass off counterfeits and defacing the packaging of trademarked products is also illegal under local Puerto Rican law.

Rheingold Breweries, Inc. v. Antilles Breweries, Inc is a case where items that are protected under the Lanham Act, not found in the Puerto Rican commerce, were not considered infringing when similar to the federal trademark goods. Defendant’s reusein Puerto Rico of wide mouthed beer bottle bearing mark CHUG-A-MUG for its own brand of beer was held not to infringe federally registered trademark CHUG-A-MUG. The federal trademark owner of CHUG-A-MUG never had  registered the mark for use in local Puerto Rican trademark office. The federal trademark owner’s product also did not havegreat impact in Puerto Rico. Since the defendant’s mark was not confusing to the Puerto Rican public, it was found not to infringe on the federally registered mark.

Puerto Rico is a huge counterfeit mark, especially with sales to tourists in San Juan. Any fashion company with an interest of protecting their brand to the fullest and in the most efficient way should register their mark locally in Puerto Rico.

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