2023 Laws of Puerto Rico › TITLE TEN - Commerce (§§ 1 — 4196) › Subtitle 1 - Regulation of Business Generally (§§ 1 — 998q) › Chapter 11 - Trademarks; Identification of Products (§§ 171-171h — 224b) › § 223 - Definitions

(a) U.S. Deposit.— Any deposit of Certificates of Registration of Trademarks issued by the United States Patent and Trademark Office (Federal Register), also known as “Deposit U.S.,” that registers in the Trademark Registry of the Department of State of the Commonwealth of Puerto Rico and whose purpose is to advertise the existence of such Federal Register to third parties.
(b) Dilution of the distinctive nature of a mark.— Dilution of the distinctive nature of a famous mark by blurring or tarnishment, regardless of the presence or absence of:
(1) Competition between the owner of the famous mark and other parties, or
(2) actual or likely confusion, mistake, or deception, or
(3) actual economic injury.
(c) Dilution of the distinctive nature of a mark by blurring.— Association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.
(d) Dilution of the distinctive nature of a mark by tarnishment.— Association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.
(e) Trade dress.— All the elements, the total image or appearance of goods or services which serves to identify and present such goods or services to consumers. Trade dress may include factors such as size, shape, color or color schemes, textures, graphics, designs, words, numbers or other visual factors on the container, package or wrapping of the product, the facade or decoration (whether interior or exterior) of a business, including marketing techniques and advertising material used to promote the sale of the goods or services.
(f) Mark.— Any sign or medium that serves to distinguish in the market the goods and services of a person, as well as the goods or services of another person. The term includes any trademark or service mark, certification mark and collective mark.
(g) Trademark.— Any word, name, symbol, trade dress, medium, logo, design, color, sound, scent, shape, object, or any combination thereof that:
(1) Is used by a natural or juridical person in commerce, or
(2) Any natural or juridical person has a bona fide intention to use in commerce and applies for registration thereof; and serves to distinguish his/her business, commercial organization, or goods from the goods manufactured or sold by another and to indicate the source of the goods regardless of whether the source is unknown.
(h) Service mark.— Any word, name, symbol, trade dress, medium, logo, design, color, sound, scent, shape, object or any combination thereof that:
(1) Is used by a person in commerce, or
(2) a person has a bona fide intention to use in commerce and applies for registration thereof; and serves to identify and distinguish the services of one person from the services of others and to indicate the source of the services even if that source is unknown.
(i) Certification mark.— Any word, name, symbol, trade dress, medium, logo, design, color, sound, scent, shape, object or any combination thereof that is used to certify the origin, material, mode of manufacture, quality, accuracy, or other common characteristics of such goods or services marketed under the same and that:
(1) Is used in commerce by a person other than its owner or holder, or
(2) which its owner or holder has a bona fide intention to permit a person other than the owner or holder to use in commerce and files an application to register the same.
(j) Collective mark.— A trademark or service mark that:
(1) Is used by the members of a cooperative, an association, or other collective group or organization, or
(2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies for registration thereof. It further includes marks indicating membership in a union, an association, or other organization.
(k) Abandoned mark.— Refers to a mark whose use in commerce in Puerto Rico has been discontinued with the intent to not resume such use or whose significance as a distinctive of the goods and services from the same source has been lost.
A mark is deemed to be abandoned when:
(1) Its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for three (3) consecutive years shall constitute prima facie evidence of the intent to abandon the mark, or
(2) the course of conduct of the owner or holder, including acts of omission, as well as commission, cause the mark to become generic or to otherwise lose its significance or its referential nature as a mark.
(l) Registered mark.— Mark registered in the Trademark Registry of the Department of State of the Government of Puerto Rico.
(m) Trade name.— Any name used by a person to identify his/her business or vocation.
(n) Person.— Any other word or term used to designate or identify the applicant or any party entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes any natural or juridical person. The term “juridical person” includes a firm, partnership, corporation, union, association, or any other organization capable of suing and being sued.
(o) Secretary.— The Secretary of State of the Government of Puerto Rico or his/her designee charged with the administration of this chapter.
(p) Secondary meaning.— Distinctive feature or new meaning that an originally non distinctive mark acquires when the consumer associates a mark with a particular source of goods or services, even if unknown, as a consequence of the use of such mark in commerce. The Secretary may accept as evidence that the mark has acquired a secondary meaning for the goods or services in question, proof of the continuous use of the mark in commerce during five (5) years preceding the date on which an allegation as to the fact that the mark has achieved secondary meaning is made.
(q) Applicant.— The person who files an application for registration of a mark under this chapter, his/her legal representatives, successors and assignees.
(r) Principal registrant.— The person to whom the registration of a mark under this chapter is issued and the legal representatives, successors, and assignees.
(s) Use in commerce.— The bona fide use of a mark in trade in Puerto Rico. For purposes of this chapter, a mark shall be deemed to be in use in commerce:
(1) On goods, when it is placed in any manner on the goods or their packaging or containers or the shelves or displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in Puerto Rico, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in Puerto Rico.
History —Dec. 16, 2009, No. 169, § 2; July 12, 2011, No. 124, § 1.