United States Sanctions on Iran and Trademark Rights

23 Jul 2018

By: Paul Kilmer

On May 8, 2018 U.S. President Donald Trump announced his decision to cease the United States’ participation in the Joint Comprehensive Plan of Action (JCPOA) in relation to Iran’s nuclear program. He further indicated that the United States would begin to reimpose certain sanctions on Iran that were lifted in order to put the JCPOA into effect.

After reviewing information released by the U.S. Treasury Department’s Office of Foreign Assets Control (OFAC) regarding re-imposed sanctions on Iran, INTA contacted sources at OFAC, the U.S. Department of State, the Office of the U.S. Trade Representative, and the U.S. Patent and Trademark Office to determine whether U.S. persons and entities could continue to protect their trademarks and other intellectual property (IP) rights in Iran. 

Upon review, the consensus of those agencies and offices is that the sanctions waiver allowing for protection of IP rights in Iran remains in effect. That provision may be found at Title 31 of the U.S. Code of Federal Regulations, Section 560.509, which reads as follows:

Certain transactions related to patents, trademarks, and copyrights authorized.

(a) All of the following transactions in connection with patent, trademark, copyright or other intellectual property protection in the United States or Iran are authorized, including importation of or dealing in Iranian-origin services, payment for such services, and payment to persons in Iran directly connected to such intellectual property protection:

(1) The filing and prosecution of any application to obtain a patent, trademark, copyright or other form of intellectual property protection;

(2) The receipt of a patent, trademark, copyright or other form of intellectual property protection;

(3) The renewal or maintenance of patent, trademark, copyright or other form of intellectual property protection; and 

(4) The filing and prosecution of opposition or infringement proceedings with respect to a patent, trademark, copyright or other form of intellectual property protection, or the entrance of a defense to any such proceedings.

(b) This section authorizes the payment of fees currently due to the United States Government or the Government of Iran, or of the reasonable and customary fees and charges currently due to attorneys or representatives within the United States or Iran, in connection with the transactions authorized in paragraph (a) of this section, except that payment effected pursuant to the terms of this paragraph may not be made from a blocked account.

(c) This section does not authorize any transaction by an entity owned or controlled by a United States person and established or maintained outside the United States otherwise prohibited by § 560.215 if the transaction would be prohibited by any other part of this chapter V if engaged in by a U.S. person or in the United States.

Source: https://www.inta.org/INTABulletin/Pages/USSanctionsonIranandTrademarkRights7309.aspx 

This article was originally published in the INTA Bulletin, and is reprinted with permission from the International Trademark Association. For more information about the INTA Bulletin, please visit www.inta.org.


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