President Barack Obama’s recent announcement of sweeping new rules directed toward normalizing relations between Cuba and the United States, followed by a call to Congress to lift the embargo against Cuba, raises some important considerations for trademark owners in the United States. At the forefront of these considerations is whether trademark holders should register their marks in Cuba.
Implementation of the President’s recommendation may be slow to manifest due to the 1992 Cuban Democracy Act (the “Torricelli Law”) and the 1996 Cuban Liberty and Solidarity Act (“Helms-Burton Act”), which limit the authority of the executive branch to dismantle or end the embargo. However, this does not prevent trademark holders from beginning the process of trademark registration in Cuba, and it is advisable for businesses currently making use of the marks in the Caribbean and Latin America, or businesses who wish to extend use of their marks to Cuba consider doing so for the following reasons.
First, persuasive business reasons exist for filing a registration in Cuba, including existing economic opportunities and the substantial increase in U.S. tourism that will result from the embargo lift. One study by the Peterson Institute for Economics predicts “merchandise exports to Cuba could reach $4.3 billion annually” if the embargo is lifted.
Second, the nature of trademark law in Cuba incentivizes registration as soon as possible. Cuba has a first-to-file trademark system, meaning that unlike the United States where rights arise from use of the mark in commerce, the first party to register will be the party with rights, with an exception made for famous marks. Accordingly, early registration will prevent the risk of having to deal with trademark squatters, who may register well-known marks in bad faith in attempt to sell them to the true trademark holder at a profit or worse, register the marks and to use them, unfairly benefiting from the investment and goodwill built in the mark by the true trademark holder.
Third, it has recently become less costly to register trademarks directly in Cuba. Among the changes to U.S. restrictions, President Obama has loosened banking and credit restrictions so that U.S. applicants may pay directly for registration without having to use third party agents, thereby reducing cost.
On the flip side, there is a risk that if the embargo does not lift within the next few years, marks registered now may go abandoned or even be cancelled by third parties through trademark litigation procedures. As in the United States, non-use of a mark after three years can result in abandonment, and applications can also be lost if another party files a petition to formally oppose the application for the mark. There are some who report that it has been rare for marks to be challenged by third parties in Cuba on this basis, however, this may not be predictive if there is an incentive to do so in light of an impending embargo lift.
Another consideration for U.S. trademark holders before filing in Cuba is whether their rights are sufficiently protected in the U.S. Trademark holders making interstate use of a mark should consider the benefits of U.S. federal registration, which include the ability to record U.S. registrations with U.S. Customs and Border Protection and prevent the import of infringing products into the U.S. if and when the embargo is lifted.
Before proceeding, these and other issues need to be carefully weighed and considered in light of the most recent political developments as well as any licensing, distribution, enforcement, and risk factors individual to each would-be applicant.
In my recent interview with Daniel Sheehan of GRC Professional Magazine, I discuss the growing trend of the SEC holding compliance officers personally liable for those they supervise, and what actions they can take to protect themselves.
The SEC is increasingly targeting compliance officers who take missteps in their job, holding them liable for not doing their job properly. There are cases where a compliance officer doesn’t focus as intently on a problem as they should, so in addition to prosecuting the person who did the misdeed, the SEC is also prosecuting the compliance officer and holding them liable.
Following the criticism directed at the SEC for failing to notice problems, they started to take a much harder look at companies than they had in the past. They started to take another look at who in the companies were responsible for these breaches, and the compliance officers were in that category. There are more investigations, more actions and higher penalties. As a consequence, the chances of a compliance officer who does not notify of a problem being caught up in a case is high.
What compliance officers must do to protect themselves:
- When a problem, or potential problem, is identified, get out in front of it. Investigate problems aggressively and thoroughly. Ask questions and follow up on those questions.
- Document every step of the investigation. The government will look for evidence that the problem has been thoroughly investigated. For the sake of all involved, evidence is absolutely necessary. It will need to be proven that the matter has been thoroughly and properly investigated.
If you have any questions about compliance issues, please feel free to contact me.
Canadian citizens already benefit from some of the least bureaucratic processes for admission to the U.S., whether as pleasure or business visitors, or for U.S. employment. Things may get even better, as announced by the Department of Homeland Security (“DHS”) in January.
Normal Procedures for Non-Canadians
For citizens of most countries, admission to the U.S. is usually the second part of a two-step, or even three-step process. For pleasure or business visitors, it includes (a) an application for a visa at a U.S. consulate and (b) admission at a port-of-entry, whether air, sea or land. Those people seeking U.S. employment authorization must endure an additional step in the process before the two noted above; government approval of that employment.
Citizens of 38 countries can eliminate the visa part of the process through the Visa Waiver Program (“VWP,”) but their admission is for 90 days only. (There have been some rumblings in Congress about the lack of security associated with the VWP after the recent terrorist attacks in France. Stay tuned for possible changes.) Admission with an actual, consulate-issued visitor visa is usually for up to six months at a time.
Current Processes for Canadian Citizen Visitors
Not only are visas are not required for Canadian citizen visitors, they can be admitted for six months instead of just 90 days, just like for those people with a visa. This special consideration for Canadian citizens eliminates the time and expense of the visa application process, speeds admission at the ports of entry, and increases the period of admission.
Current Processes for Canadian Citizens Seeking U.S. Employment
Canadian citizens also benefit from Canada-specific procedures involving seeking U.S. employment authorization. Perhaps the most notable is U.S. employment approved through the North America Free Trade Agreement (“NAFTA”). Certain professional employment in the U.S. can be applied for, adjudicated and approved at most U.S. ports of entry and U.S. international airports, as well as most Canadian international airports and even some in Europe, with no complicated application form, for only $50 USD. While mail-in applications are also an option, that format requires a form and increases both the filing fee (to $325) and review time (by at least 1 month unless an additional “premium processing” fee of $1,225 is paid for review within 15 calendar days). Approval of up to three years at a time can be issued repeatedly.
Like with NAFTA filings, Canadian citizens transferred to be employed in the U.S. under the Intracompany Transferee (L) process, never have to use the visa application step, and can eliminate the mail-in application process (by filing directly at many U.S.-Canada ports of entry or most Canadian international airports). Unlike NAFTA cases, the filing fee is the same, regardless of the filing location. A distinct benefit of not filing by mail is that approvals can be for as many as three-years at a time for each filing, whereas for citizens of other countries, approvals can be for as many as three years for the first filing only. The L process includes an option, called the “blanket petition” that can reduce the corporate documentation requirement for certain international businesses.
Most other U.S. employment classifications for Canadian citizens require the same mail-in process as for citizens of other countries, but still eliminate the need for a visa, thereby eliminating the time and expense of a consulate appointment. The January 14 announcement suggests we may soon see some additional benefits for Canadian citizens seeking U.S. employment if they seek admission along the northern border ports of entry.
“Known Employer” Pilot Program-Goal to Aid U.S.-Canada Business Travel
The Department of Homeland Security announced in mid-January that it is considering a “Known Employer” pilot program to streamline adjudication of certain, unspecified types of employment-based immigration benefit requests filed by eligible U.S. employers. This suggests that it may apply to TN, L, H, or other classifications. The department expects to launch the pilot by late 2015 to test a program designed to:
- Make adjudications more efficient and less costly.
- Reduce paperwork and delays for both the department and U.S. employers who seek to employ foreign workers.
A goal of the program would be to expedite or otherwise facilitate legitimate cross-border business travel along the northern border ports of entry. This pilot program is a binational commitment under the NAFTA and the U.S.-Canada Beyond the Border initiative. In particular, one specific commitment made by the U.S. and Canadian governments under the Beyond the Border initiative is to “explore the feasibility of incorporating a trusted employer concept in the processing of business travelers between Canada and the United States.”
We won’t know the specifics of the DHS “Known Employer” Pilot Program for some time, but we can hope that prospective U.S. employers of Canadian citizens may find that the process will become even faster and less burdensome in some ways than currently available by late 2015.
Foster Garvey’s International practice group comprises a cross-disciplinary group of attorneys practicing in areas ranging from business transactions, immigration, maritime, government regulatory work, transportation and logistics and estate planning. The group members include bilingual and multicultural attorneys who are well-versed in handling these subject matters in a cross-border context. A number of attorneys have been actively practicing in the international arena since the early 1970s.