Why and how to register a trademark in Puerto Rico

The exclusive right to a trademark in Puerto Rico is conferred to the person or company that first used and continues to use the trademark in Puerto Rico. However, registration is highly advisable in order to protect such rights and be recognized as the registered owner. This proves useful in order to prevent third parties from registering one’s trademark and in cases of trademark infringement in Puerto Rico.

Trademarks registered in the USA also have validity and recognition in Puerto Rico. However, in order to be effectively protected in Puerto Rico, trademarks should also be registered through the local trademarks office (PRIPO). Indeed, when examining local applications for prior similar trademarks, the trademarks office will not take into account trademarks registered in the USA, so a local trademark that is similar to one registered in the USA would still be accepted.

It is not necessary for the trademark to be in use in Puerto Rico at the time of application or registration. However, declarations of use will have to be filed during the lifespan of the registered trademark. For more information, please consult our FAQ section below.

If you register a combined trademark (which includes both word elements and figurative elements) in Puerto Rico, the exclusive right to use the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.

In Puerto Rico opposition actions may be filed during the period of 30 days that follows the publication of the trademark application. An extension of 20 days may be granted if requested before the deadline and if deemed justified by the trademarks office. The probabilities of success for an opposition will vary in each case depending on the circumstances.

A registered trademark in Puerto Rico has a validity of ten (10) years from the application date. It may then be renewed indefinitely for successive periods of ten years. The trademark renewal can be requested during the twelve (12) months preceding the expiration date. It can also be requested during the grace period of 6 months after the expiration date upon payment of additional fees.

If a registered trademark is not used in Puerto Rico for a period of 3 years, then it becomes vulnerable to cancellation actions for lack of use filed by third parties. 

If you would like for the figurative or design elements of your trademark to be considered when assessing your trademark for registration in Puerto Rico (Trademark Search Report), contact us directly in order to determine if we may be able to offer this in this jurisdiction. In such cases, prices for service and estimated delivery times may vary.

 

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