IP Fridays - your intellectual property podcast about trademarks, patents, designs and much more

We interview Reg Levy all about gTLDs. She is VP at Minds + Machines, the third largest applicant of gTLDs. Another topic are Facebook Beacons, a new tool by Facebook to push location based messages to users. Also, trademarks in Cuba are becoming now more important now.
 
 
 
 
 
IP FRIDAYS
 
Co-Presenters:
Rolf Claessen and Kenneth Suzan
 
Episode 33 – July 24, 2015
 
RC =   Rolf Claessen
KS =    Kenneth Suzan
RL =    Reg Levy
 
This is Reg Levy, Vice President of Compliance and Policy for Minds + Machines and you are listening to IP Fridays.
 
KS:      Hello and welcome to this episode of IP Fridays.  Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property.  It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.
 
RC:      Welcome to Episode 33.  Today we have a very special treat for you.  I am interviewing a loyal listener of IP Fridays, Reg Levy, who is also Vice President of Minds + Machines, the third largest applicant of generic top-level domains.
 
Before we jump into the interview, we will tell you about Facebook beacons, a new technology to push messages to Facebook users and we will also tell you about how to register trademarks in Cuba and why that might be important.  So Ken, tell us more about the trademarks in Cuba.
 
KS:      Rolf, as tensions between Cuba and the United States ease, and international relations begin to solidify, it is likely that companies will seek to tap into the Cuban market to sell their merchandise and provide needed services.  Companies looking to expand their marketing and sales efforts into Cuba will likely want to protect their valuable patents, trademarks and copyrights.  Recently, the Carnival Corporation announced that it has received the green light from the United States Department of the Treasury and the United States Department of Commerce to offer cruises to Cuba as early as next May.  The cruise line is in the process of working out the logistics with the Cuban government.  This is clear evidence that relations are opening and businesses need to keep this growing market on their radar for IP protection.
 
Historically and since 1995, there has been an exception to the embargo on trade restrictions with Cuba which allowed US businesses to obtain trademark protection for their marks in Cuba.  While this exception was on the books, many businesses were not motivated to obtain the protection.  Now, with diplomatic relations on the mend, this is about to change.  Companies need to be aware that Cuba is a “first to file” country.  This means that the first entity to file for the trademark in Cuba is entitled to register that mark.  Use of a trademark in Cuba is not required to obtain the registration.  As a result, there will likely be trademark squatters that file for trademarks in Cuba which may make it difficult for brand owners to establish their rights in Cuba.  Reports have already indicated trademark squatting on popular brands such as NASCAR, Denny’s, Nordstrom, Sam’s Club, Chase, Quiznos, Dillard’s, Kohl’s and Chipotle.
 
Companies that are planning to do business in Cuba in the next five years should place trademark registration activities at the top of their to-do lists.  It is also a good idea to register US trademarks with the United States Customs and Border Protection to prevent fake goods from entering into the United States from Cuba.
 
Companies should consider filing an international application using the Madrid Protocol to obtain protection in Cuba,