Prosecution Of A Trademark Application In Puerto Rico
FILING
FORMAL AND SUBSTANTIVE EXAMINATION
PUBLICATION
OPPOSITION PERIOD
GRANTING AND CERTIFICATE OF REGISTRATION
FILING
The filing date of a Puerto Rican trademark is the one assigned when filing the application.
Under the applicable law, if a trademark does not fulfil the minimum requirements for a filing date to be issued, the TMO will request the Applicant to amend it within the next 90 days, nevertheless, the filing date will be considered as the day the amended application is received as the filing day.
Please bear in mind that under Puerto Rican law, priority rights cannot be requested through the Paris Convention.
FORMAL AND SUBSTANTIVE EXAMINATION
Within 12 to 24 months from the filing date
The Trademark Office will determine if the application meets the formal requirements and analyze the application on both absolute and relative grounds of refusal. This includes a search to determine potential legal obstacles.
If it does, the Trademark Office will proceed to order the publication of the trademark.
PUBLICATION
Within 90 days form the order of publication
After the Trademark Office finds that the trademark fulfills the formal requirements, the trademark will be published in a “Journal of national circulation”, only once.
OPPOSITION PERIOD
30 working days after the publication
The opposition period starts the next working day after the last publication and ends 30 working days later. This period can be extended by a further 20 days upon payment of the official fees and a valid justification.
GRANTING AND CERTIFICATE OF REGISTRATION
Within 12 to 24 months from the filing date
If no oppositions were filed, the Trademark Office will proceed to issue an electronic certificate of registration.
The mark will be protected for a period of 10 years, counting from the application date.
Useful Information
According to the applicable law, a trademark has a period of 5 years after its registration in which it cannot be cancelled. After that, any third party can apply for a cancelation action due to non-use.
A Declaration of Use must to be filed for all trademarks. The first Declaration of Use has to be filed 5 years from the registration date. A second declaration of use must be filed along with each renewal application.
It is also noteworthy mentioning that the trademark system in Puerto Rico is primarily focused on use, and as such, declarations of use or intended use must be filed with any trademark application, among other legal consequences of this legal focus.