Just got back from a family vacation in Puerto Rico. While there, I saw a rental car company called “Target.” This company had the same logo as the Target stores so common on the U.S. mainland. Well of course that got me to thinking. Is this rental car company infringing on Target (the store’s) trade-name and trademark (the logo)?  Or is it the case that even though Puerto Rico is a U.S. territory, its trademark regime is separate from the United States?

My research quickly determined that Puerto Rico’s trademark regime is actually separate from that of the United States. In other words, if you want your name or mark trademarked in both the United States and Puerto Rico, you should register it in both places. Presumably, Target rental car beat Target stores to the name and logo in Puerto Rico and is now able to use both legally there. 

Hong Kong and China are the same way. And Taiwan and Macau too. I am constantly having to explain this to our clients, at least half of whom just assume that a trademark registration in the PRC operates as a trademark registration in Hong Kong and vice-versa. And who can blame them, since Hong Kong is one with the mainland, right? Same with Macau, right? Many have this same view regarding China and Taiwan as well. None of this is true.

If you want your brand or mark registered and thus protected in China, Hong Kong, Macau and Taiwan, you must register them in China, Hong Kong, Macau and Taiwan. If you thought you were protected in more than one of these places simply because you had registered in one, you had better get moving and start registering in one, two, or three more. 

What do you think?

  • John Chan

    You forgot Macau.

  • Adi

    here in Constanta, Romania there’s a pet shop (also operating as veterinary, farmacy and pet care center) called “Animal Planet” that uses ALMOST the same logo as the TV channel with the same name, in the same colors (white+green).
    NORC street view link: http://www.norc.ro/pano/T0e93geJ/
    (rotate the image in the direction of the green arrow to see the actual store, it’s between the restaurant and the gas station)
    I think that i first saw that sign at the entrance (which is on one of the main boulevards of the city) around 10..15 years ago and it’s still around.
    I think that the TV channel company (Discovery) didn’t register their trademark here until well after the store started to use it and they couldn’t do anything about them (i might be wrong on this one though)

  • Dan

    @ John Chan,
    You are absolutely right. I did forget Macau. Thanks for reminding me. I’ve gone ahead and added it to the post.

  • John Chan

    Macau can also be a great place to hold trademarks for tax purposes.

  • hanmeng

    I’m surprised that someone doing business in Asia believes that China and Taiwan are a single legal entity.

  • Looking forward to visiting Puerto Rico and visiting the Harrods corner shop, Macy’s chip shop and the Walmart brewery!

  • ANIBAL

    That’s right, the car rental has been a lot of years before the retail store. So the rights of name belong to them in PR. I live here in PR.

  • A

    Target in Puerto Rico was first, the USA target has to pay them a lot of money to buy their company and then come to the island of PR.

  • AsianIP

    IP Dragon has a recent post on the Hong Kong patent system and its on-going reform. Check http://ipdragon.blogspot.com/2011/12/hong-kongs-original-grant-patent-should.html

  • Target Car rental, according to their website, was founded in 1964. Target Corporation, according to Wikipedia: “The company was founded in 1902 as the Dayton Dry Goods Company, though its first Target store was opened in 1962 in nearby Roseville, Minnesota”
    It seems to me that Target retail stores beat the clock on this one. Regardless, PR has a trademark registry, but we abide by federal trademark law for monetary purposes. The local registry is only required to claim IP, whereas the USPTO regulates pecuniary claims.
    Puerto Rico IP attorneys out there, please correct me.