Trade Marks

Basis for Registration:

Independent and US-based

It should be noted that US-based applications are merely considered as “deposits” and whilst they are subject
to the same registration process, they do not offer the same protection as independent applications.

International Arrangements:

None

Categories of Trade Marks:

There are provisions for the registration of COLLECTIVE and SERVICE MARKS.

There are no provisions for the registration of SERIES or DEFENSIVE MARKS.

Applications are filed on the basis of actual use or “intention to use”, and the relevant category must be stated
at the time of filing.

Classification:

The International Classification of goods and services applies.

A separate application is required for each class of goods or services.

Documents required:

A. New Applications:

If US-based:

  • Certified copy of the corresponding US registration.
  • 10 prints, except for word marks in ordinary type.

If filed on the basis of actual use:

  • The date of first use of the mark in Puerto Rico.
  • Specimens in the form of either the packaging for the products, such as cartons or containers, or labels attached to the goods showing the mark. If the specimens are too unwieldy, then two clear photographs may be submitted instead.

If filed on the basis of ‘intention to use’:

  • Confirmation that the mark has not been used in Puerto Rico.
  • A clear electronic representation of the mark e.g. in JPEG format.

B. Renewals:

  • Certified copy of the corresponding US registration (if US-based).

For all applications filed on the basis of “intention to use”, a Declaration of Use must be filed within three years of the filing date. If this cannot be supplied, then the registration will be deemed abandoned.

C. Assignments/Mergers:

  • Certified copy of the corresponding US registration (if US-based).
  • Deed of Assignment (if not in English, a verified Spanish translation is required).

D. Change of Name:

  • Certified copy of the corresponding US registration (if US-based).
  • Certificate of Change of Name (if not in English, a verified Spanish translation is required).

E. Change of Address:

  • Certified copy of the corresponding US registration (if US-based).
  • Certificate of Change of Address (if not in English, a verified Spanish translation is required).

F. Licences/Registered Users:

  • Simple copy of the Licence Agreement (if not in English, a verified Spanish translation is required).

Printable Version

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