The Lanham (Trademark) Act enacted July 5, 1946, (15 U.S.C. § 1051 et seq.) is the primary federal trademark law in the United States.
Now, if you register a trademark in the U.S. under the Lanham Act, does that trademark protection apply in Puerto Rico? We explain below.
Puerto Rico has a unique status in that it is not an independent country or part of the U.S. as a state. It is rather a “commonwealth.”Commonwealth literally means “common good” and does not have a precise legal or technical definition. As a “commonwealth” Puerto Rico has its own laws.
In the trademark context, it has the Puerto Rico Trademark Act which regulates registration and enforcement of trademark issues. But there’s another statute in Puerto Rico, the Puerto Rico Federal Relations Act, which states that the laws of the United States have full effect in Puerto Rico. Thus, the rights of a U.S. trademark holder have also extended to Puerto Rico. Now, what if there’s a conflict between Puerto Rico Trademark Law and the Lanham Trademark Act? The answer to this is no different than when there’s a conflict between the law of one of the 50 states and federal law. Federal law will “preempt”, which means it takes priority over the law of the state or in our discussion, Puerto Rico.
The bottom line is that at the end of the day, the fact that Puerto Rico has its own Trademark law is no different than the fact that each of the 50 states has trademark registration systems and statutes. The protection of a particular state will be limited to its bounds, and the federal protection will always be nationwide, preempting any potential conflict of laws.
For more information about trademarks call us at 305-570-2208 or email attorney Eduardo A. Maura at eduardo@ayalalawpa.com
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