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The Basics

The following are answers to frequently asked questions regarding trademarks. And about applying for Puerto Rico Trademark Registration.

What is a trademark?

A trademark (mark) is any word, name, symbol, slogan, trade dress, medium, logo, design, color, sound, scent, shape, object or any combination thereof that is used or intended to be used in commerce.

What should a trademark do?

Trademarks identify and distinguish goods and/or services from those manufactured, offered or sold by others. Also, trademarks indicate the source of said goods and/or services even if that source is unknown.

What is the Act and Code of Regulation of the Puerto Rico Trademark Registry?

The Trademark Act is Act No. 169-2009, as amended, and its Code of Regulation is No. 8075. Both are available in the Online Trademark and Trade Name Registry System.

Things to Know Before Filing the Trademark Application

What is the difference between a trademark filed as “in use” or as “intent to use”?

A trademark filed as “in use” has to have been used in commerce by the owner on or before the filing date of the application. In this case, the date of first use and a specimen of the mark must be included.

A trademark filed as “intent to use”, refers to a mark whose owner has a bona fide intention to use it in commerce in the near future. As such, the applicant will need to file an additional transaction (the Statement of First Use) to maintain the registration.

What is a specimen?

A specimen is an example of how the trademark is actually used in commerce in relation to its goods and/or services. In other words, the specimen is proof of use and should show the mark just as the consumers see it in the marketplace.

What is a disclaimer?

The owner of a trademark cannot claim unregistrable elements as part of the trademark. Therefore, components of a trademark that are generic or descriptive of the product and/or service need to be disclaimed. A trademark disclaimer represents an applicant’s awareness and acquiescence to the legal reality that he or she holds no exclusive rights to the disclaimed portions of mark.

What is an Office Action?

An Office Action is an official letter sent by the Puerto Rico Trademark Office. In it, an examining attorney lists any legal problems with the chosen trademark, as well as with the application itself.

The trademark applicant must resolve all legal problems so that the Puerto Rico Trademark Office can register the trademark. A trademark applicant has 90 days to respond to an Office Action.

Benefits of Owning a Registered Trademark in Puerto Rico

What are the benefits of a Puerto Rico trademark registration?

  • The certificate of registration is the prima facie evidence of:
    • The validity of the registration of the trademark.
    • The use of said trademark in commerce in this jurisdiction.
    • The registrant’s ownership of the trademark, and
    • Exclusive right to use the trademark in commerce.
  • The trademark registrant can claim statutory rights.
  • Ability to request an automatic preliminary injunction in court.
  • It will prevent the Registry from certifying another identical or similar trademark in Puerto Rico, among others.

Maintaining a Puerto Rico Trademark Registration Active

How long does a registration of a trademark in Puerto Rico last?

Puerto Rico trademark registrations remain in effect for ten (10) years, subject to the compliance with the applicable statute and regulation. In other words, it is the registrant’s responsibility to maintain the registration active by filing the following:

Statement of First Use– filed within three (3) years following the filing date of the application of a mark not used in commerce. However, prior to the expiration of the three (3) year period, the registrant may apply for an extension of one (1) year.

Statement of Continuous Use– filed between the fifth (5th) and sixth (6th) year from the filing date. If the term has lapsed, it may be filed within six (6) months following the expiration date and subject to the payment of an additional fee.

Renewal and Statement of Use– filed within the ninth (9th) and tenth (10th) year following the filing date. The applicant may renew the registration of the mark within the year prior to the date on which it expires. Applicant must also file a Statement of Use.

Related transactions – these transactions must be filed promptly and are subject to the compliance of the applicable legislation and regulation.

Does the Puerto Rico Trademark Registry also provide international protection?

No. The Puerto Rico Trademark Registry is a local registry. If you’re using or intent to use your trademark in interstate commerce, you may qualify for federal trademark registration. You can file a federal trademark application at the United States Patent and Trademark Office (USPTO).

Trademarks that Can’t be Registered

Article 5 of the Puerto Rico Trademark Act states that marks that consist of the following can’t be registered:

  • Material contrary to the law, morality or public order.
  • The flag, coat-of-arms or other insignia, sign or symbol of Puerto Rico or the United States or the states, municipalities, territories, cities, (including foreign ones) or any simulation thereof.
  • The flag, coat-of-arms or other insignia, sign or symbol of Puerto Rico or the United States or the states, municipalities, territories, cities, (including foreign ones) or any simulation thereof.
  • Names, portraits, or signatures identifying a particular living individual (without written consent). This does not apply to surnames, except in the case that a particular individual is only known by his or her surname. Likewise, no trademark shall be registered which is primarily a surname, unless it has acquired distinctiveness by secondary meaning.
  • Descriptive words of goods or services in which the trademark is used, unless they have acquired secondary meaning.
  • Words to indicate the genre of the goods or services in which the trademark is used.
  • Shape or packaging when the nature, shape or packaging is essential to its function.
  • Geographic names or terms indicating the source or origin of the goods or services or deceptive geographic terms. Geographic terms may be registered if they acquire secondary meaning or if there is no relation between the product and the geographic area in question.
  • A trademark that is likely to cause confusion as to the source of the goods or services with another mark registered or used in commerce in Puerto Rico for goods or services similar to those of a trademark already registered or previously used in commerce in Puerto Rico.
  • A mark equal or substantially similar to a famous or notable trademark of any country known to the relevant market in Puerto Rico.

If you need assistance with an active Puerto Rico trademark registration or if you want our attorneys to file a trademark application for you, feel free to contact us.