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March 15, 2019 Vol. 74 No. 5 Back to Bulletin Main Page

Is a Federally Registered Trademark Protected in the Self-Governing U.S. Territory of Puerto Rico?

Trademarks registered with the U.S. Patent and Trademark Office (USPTO), including marks registered in accordance with a convention or treaty relating to trademarks to which the United States is a party, may not be fully protected in Puerto Rico if rights owners fail to take certain key steps. Understanding the laws of both jurisdictions and how courts have approached individual cases can help trademark owners to obtain the most effective protection for their marks.

The Legal Backdrop
While the Commonwealth of Puerto Rico has been a territory of the United States since 1898, as a political entity, Puerto Rico has the power to enact and enforce local laws and regulations that are not in conflict with the federal laws of the United States or the U.S. Constitution. Therefore, the territory, which is located in the Caribbean, maintains a degree of self-governance that is comparable to that enjoyed by each of the 50 U.S. states. Unlike the states, however, Puerto Rico has fiscal autonomy from the United States, though it is not a sovereign in legal terms. It is subject to the Territorial Clause of the U.S. Constitution (Clause 2 of Section 3 of Article IV), which makes the U.S. Congress the original and ultimate source of power for the Constitution of Puerto Rico and its laws. Puerto Rico v. Sanchez Valle, 579 U.S. __, 136 S. Ct. 1863 (2016).

The Territorial Clause of the U.S. Constitution says the following: “The Congress shall have power to dispose of and make all needful rules and regulations respecting the territory or other property belonging to the United States; and nothing in this Constitution shall be so construed as to prejudice any claims of the United States, or of any particular state.” The U.S. Congress asserted such power when it enacted the Puerto Rico Oversight, Management and Economic Stability Act. 48 U.S.C.A. §§ 2101‒2241. This federal law created a bankruptcy-like legal regime for the government of Puerto Rico to restructure its debts and an independent financial oversight and management board—whose members are appointed by the President of the United States—with broad fiscal, budgetary, and other powers over the government of Puerto Rico and its public instrumentalities. See Id., § 2121.

Protecting Trademarks
Most U.S. federal laws apply in Puerto Rico, including the Trademark Act of 1946, as amended (15 U.S.C.A. §§ 1051‒1141n), known as the Lanham Act, which protects marks used in interstate commerce, including the territories of the United States. In this regard, the Lanham Act provides that the “United States includes and embraces all territory which is under its jurisdiction and control.” Id., § 1127. It further provides that the word “commerce,” as used therein, “means all commerce which may lawfully be regulated by Congress.” Id.

Puerto Rico, like other U.S. and non-U.S. jurisdictions that exercise self-rule over their local or internal affairs, also has its own trademark law, known as the Trademark Act of the Government of Puerto Rico, as amended. P.R. Laws Ann. tit. 10, §§ 223‒224b. This law provides for the registration of marks that are used or intended to be used in commerce in Puerto Rico; however, the Puerto Rico Supreme Court has held that, upon a conflict between the provisions of the Lanham Act and the Puerto Rico trademark law, the Lanham Act would prevail. See Federation De. Ind. v. Ebel, 173 D.P.R. 615, 626 (2007), 2007 WL 4689053 (P.R.). In this respect, and in light of the territorial relationship between Puerto Rico and the United States, the Puerto Rico Supreme Court has also held that federal case law under the Lanham Act is highly persuasive for interpreting the provisions of the Puerto Rico trademark law. See Id.

The Trademark Office of the Department of State of Puerto Rico maintains a public registry of marks registered or pending registration in Puerto Rico. There are two methods for registering a mark with the Puerto Rico Trademark Office: (1) a “deposit” of a certified copy of the registration certificate issued by the USPTO under the Lanham Act; or (2) an application for registration under the Puerto Rico Trademark Act.

The Federal Approach
The owner of a mark registered with the USPTO, including, for example, an international mark registered pursuant to Section 44(e) of the Lanham Act, may exercise the first option mentioned above by depositing a certified copy of its U.S. registration certificate at the Puerto Rico Trademark Office, which is authorized to issue local registration certificates based on such deposits. See Id., § 223(a).

The deposit of a federal registration certificate merely gives public notice in Puerto Rico of the mark’s registration with the USPTO. Such notice may deter persons contemplating the use or registration of the same or a similar mark in Puerto Rico. The Puerto Rico Trademark Office, however, generally does not review—nor is it required to review—USPTO registrations before allowing the local registration of a mark that is identical or confusingly similar to a mark registered with the USPTO. Thus, notwithstanding the local deposit of a mark registered with the USPTO, if there is a later application by another person to register the same or a similar mark in Puerto Rico, the Puerto Rico Trademark Office may proceed with the registration of the mark. In such a case, the federal registrant would need to oppose the local applicant upon a showing of the registrant’s actual entry or likelihood of entry into the Puerto Rico market.

Further, if the local registrant were to use the mark in commerce, the federal registrant would need to request that the local registrant cease and desist from using the mark. Such claim may be resolved out of court; otherwise, the federal registrant would need to pursue a trademark infringement action against the local registrant.

Rule 53 of the trademark regulation of the Puerto Rico Trademark Office provides that “[i]n no case shall the Examining Attorney use the existence of a prior Federal Registration Certificate or a U.S. Deposit as a reason for rejecting an Application [for Registration].” (Translation ours.) Reg. no. 8075 (Sept. 19, 2011). In other words, only the local registration of the same mark registered with the USPTO, as opposed to a “deposit” of the federal registration certificate, would likely prevent another person from registering the mark in Puerto Rico.

Keeping It Local
Alternatively, a mark may be registered with the Puerto Rico Trademark Office with or without use in commerce if the applicant is using or has a bona fide intent to use it in Puerto Rico. See P.R. Laws Ann., supra, § 223a. In other words, trademark rights may be created by use of a mark in Puerto Rico or through its registration under Puerto Rico law.

In Arribas & Associates v. American Home Products, 165 D.P.R. 598 (2005), 2005 WL 2290286 (P.R.), the Puerto Rico Supreme Court held that under the Puerto Rico trademark law, trademark ownership rights may be acquired through the registration of a mark without use in commerce, but that such rights are subordinate to the rights of a prior user of the mark, including a federal registrant whose priority is based on the “constructive use” of its mark under the Lanham Act. See also Federation Des Ind. at 626.

For each mark registered in Puerto Rico based on intent to use, a Declaration of First Use within three years after the filing date is required to maintain such registration in addition to a Declaration of Continued Use between the fifth and sixth years after the filing date. See Id., §§ 223b, 223o.

Weighing the Options
A federal trademark registration provides constructive notice to subsequent filers or junior users of that mark anywhere in the United States, including Puerto Rico, regardless of whether the mark is used in a geographic area. See 15 U.S.C.A. § 1072. However, a federal registrant that is the senior user of the mark may be able to enjoin a junior user from using the mark only if the marks in question are actually being used concurrently in the same trade area or if the federal registrant’s expansion into the junior user’s trade area is likely in the normal course of the federal registrant’s business. See Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959); see also Kimberly A. Eckhart and Tom J. Kearney, “Is the Dawn Donut Rule Still Viable in the Internet Age?” INTA Bulletin, vol. 67, no. 7 (Apr. 1, 2012).

In other words, since there is generally no likelihood of confusion from the concurrent use of a mark in separate and distinct markets or trade areas, a court could deny a federal registrant’s claim for injunctive relief. Nevertheless, to uphold a claim for injunctive relief, “the plaintiff (federal registrant) only needs to show that an expansion into the defendant’s market is likely in the normal course of its business.” Davidoff Extension S.A. v. Davidoff Comercio E Industria Ltda., 747 F. Supp. 122, 129 (D.P.R. 1990); see also John R. Thompson Co. v. Holloway, 366 F.2d 108, 114 (5th Cir. 1966) (“Where the unauthorized use of a conflicting mark is confined to a distinct and geographically separate market by the junior user, there may be no present likelihood of public confusion.”). Further, under the multiple-factor test adopted by other courts for determining likelihood of confusion between conflicting marks, the likelihood of entry into the junior user’s trade area is also a factor for determining whether the senior user is entitled to an injunction. See U.S. Structures, Inc. v. J.P. Structures, Inc., 130 F.3d 1185 (6th Cir. 1997).

In this light, the local registration of a federally registered mark would offer a federal registrant additional protection for its trademark rights. Under the Puerto Rico Trademark Act, any such local registration constitutes prima facie evidence of ownership and may deter others contemplating infringement as it gives public notice that the registrant is willing to protect its trademark rights in Puerto Rico.

In addition, the Puerto Rico Trademark Act provides that the registrant of a mark in Puerto Rico may obtain an ex parte temporary restraining order, as a matter of right, when it files a verified complaint alleging specific facts regarding the infringement of the mark. It may also obtain a court order for the seizure of the infringer’s goods without having to post a bond. Further, a Puerto Rico registration provides additional rights to the federal registrant by allowing it to seek injunctive relief and damages (including statutory or treble damages in certain cases as determined by the court), among other remedies, under Puerto Rico law.

Finally, because of geographic and language barriers (Puerto Rico is located more than 1,000 miles from the continental United States, and while officially bilingual, Spanish is its main language), a Puerto Rico registration may provide an effective way for a federal registrant to give notice of its trademark rights in Puerto Rico.

The More Protection, the Better
In summary, a Puerto Rico registration is an effective tool to help avoid potentially costly extrajudicial or judicial efforts to stop infringement by local junior users.

Although federal trademark rights extend to the Commonwealth of Puerto Rico, the most effective way to protect such a mark in Puerto Rico, without litigation, is by also registering it with the Puerto Rico Trademark Office.

Sometimes federal registrants that have not registered their marks in Puerto Rico find themselves opposing a junior user’s application or requesting the cancellation of a junior user’s registration and incurring significant legal expenses, which could have been easily avoided by registering their marks in Puerto Rico.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association