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introduction
Puerto Rico, as a free state in the United States, has a unique legal system. Many companies mistakenly believe that US federal trademark registration can directly cover Puerto Rico, but they lose their rights by ignoring the local "trademark oath" requirement! This article provides a detailed explanation of Puerto Rico's trademark maintenance rules to help businesses avoid risks.
1、 The uniqueness of Puerto Rico's trademark system
1. Dual protection system
Federal trademarks in the United States: automatically valid in Puerto Rico, but relying solely on federal registration may not fully protect local market interests.
Puerto Rico Local Trademark: It needs to be registered separately with the Puerto Rico Department of Economic Development and Commerce (DDEC), subject to local laws (Ley de Marcas de Puerto Rico), and requires a stricter oath taking procedure.
2. Legal Basis
According to the Puerto Rico Trademark Law (revised in 2020), registrants are required to regularly submit a trademark use declaration (Declaraci ó n Jurada de Uso) to prove the true use of the trademark in the local market.
Only applicable to trademarks registered locally in Puerto Rico (through DDEC application).
A trademark registered through the United States federal government is valid in Puerto Rico, but there is no need to submit a separate Puerto Rican affidavit.
2. Key time nodes
First submission: Between the 5th and 6th year after registration.
Subsequent submission: Submit synchronously every 10 years when renewing.
Deadline calculation: Starting from the date of trademark registration announcement, if the trademark is not submitted within the deadline, it will automatically become invalid.
3. Document requirements
Used trademark
Notarized affidavit (in Spanish or English)
Use evidence such as Puerto Rico local sales invoices, advertising placement records, physical store photos, etc.
Unused trademark
Written explanation of reasons (such as policy restrictions, natural disasters)
Plan to restore usage in Puerto Rico within the next 2 years (specific to each quarter).
General requirements
The document must be signed by the trademark owner or authorized agent, and non resident businesses must submit it through a local lawyer in Puerto Rico.
After the expiration date, DDEC will directly delete the trademark from the registration book, losing legal protection.
High risk of being hijacked for registration
The Puerto Rican market is fiercely competitive, and expired trademarks may be quickly seized by local companies.
Difficulty in re registering
The new applicant may object to re registration on the grounds that the original trademark has been revoked due to non use.
If sold only in Puerto Rico, it is recommended to register a local trademark; If covering the entire United States, Puerto Rico, priority should be given to federal registration.
Strictly manage the use of evidence
Localization evidence requirement: It is necessary to reflect the actual use of the trademark in Puerto Rico (such as product labels listed in San Juan supermarkets, local social media advertisements).
Unused trademarks can be pre positioned: signing local distribution agreements, leasing warehouses, etc., as proof of "planned use".
Entrust local lawyers to act as agents
Puerto Rico requires non resident businesses to submit documents through local practicing lawyers, and it is recommended to choose a law firm familiar with Chinese enterprise business.
Answer: No need! Federal trademarks in the United States automatically take effect in Puerto Rico, and maintenance requirements are consistent with those of the federal government (such as filing a Section 8 declaration in the 5th to 6th year).
2. Does the trademark only sell to Puerto Rico through the Amazon US site meet local usage requirements?
Answer: Not suitable! DDEC requires evidence to be directly linked to the Puerto Rican market (e.g. local independent site sales records, targeted advertising to Puerto Rican users).
3. Do I need Spanish for the oath document?
Answer: It is recommended to submit a Spanish version, otherwise a certified English translation (stamped by a Puerto Rico notary public) is required.
4. Can missing the deadline for taking the oath be remedied?
Answer: There is no official grace period! After the expiration date, a new registration application is required and the original priority cannot be restored.
5. Can trademark renewal and declaration be combined for processing?
Answer: Sure! At the time of renewal, both the renewal application (Solicitud de Renovaci ó n) and the sworn document must be submitted, and the fees must be paid together.
