Wednesday, July 07, 2021

Trademarks and the “Target” Market of U.S. Territories

By Whitney Morgan

 
On a recent trip to Puerto Rico, I noticed two things related to trademark law. The first: there are no Target stores in Puerto Rico. The second: there are several moving trucks with the word “Target” and a big red bullseye on the side. So where were all the Target stores and how did those trucks use that same name and logo?
As it turns out, and not much to my surprise, there is a trademark issue at hand. That big red bullseye that we all recognize and associate with Target stores is used by a completely different company in Puerto Rico, a rental car company. And due to trademark law, Target stores are not allowed to operate on the beautiful island of Puerto Rico, without paying a hefty licensing fee to Target the Puerto Rican rental car company.
 
This made me question how trademark law works between a U.S. territory and the mainland. Apparently, Puerto Rico’s trademark laws are separate from the United States. In other words, if you want to obtain a trademark in both the United States and Puerto Rico, you must register the mark in both places.
 
As we know, Puerto Rico is a commonwealth territory governed by the United States. If a trademark applicant plans to do business in Puerto Rico, the safest bet is to register the mark with both the United States Patent and Trademark Office (USPTO) and the State Department of Puerto Rico.
 
It is important to note that U.S. trademark registrations can be enforced against infringers in Puerto Rico. Although Puerto Rico has a local registration that operates independently of the U.S. trademark system, Puerto Rican registrations are enforceable like the USPTO registrations.
 
However, authority on the issue of whether U.S. trademark registration will protect against a local infringement in Puerto Rico is conflicting. For instance, prior U.S. trademark registration is not considered evidence in the prosecution of a trademark application in Puerto Rico. Therefore, the safest and most sensible course of action for ensuring your company’s rights are protected is to secure a trademark in both Puerto Rico and the U.S. 
 

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