Re: Trademark Infringement under the Puerto Rico Trademark Act
This case examines the permissible uses of a third party’s trademark under the Puerto Rico Trademark Law. The dispute arose between Solar Now Puerto Rico LLC (“Solar Now”) and Power Solar, LLC (“Power Solar”), both Puerto Rico-based companies that sell and install solar panels.
On January 8, 2025, Power Solar filed a complaint and request for a permanent statutory injunction against Solar Now, alleging trademark infringement under the Puerto Rico Trademark Act (“PRTA”), P.R. Laws Ann. tit. 10, § 223a et seq., specifically Articles 26 and 28.
The claim stemmed from Solar Now’s advertising campaign, which included at least seven billboards and two social media posts. The billboards featured a mock ballot with three options: Solar Now, “Molinito,” and “Paquito Solar.” The social media posts showed a confused man with the caption “Undecided?” and two options: “Paquito Solar” and “Molinito.” Power Solar argued that the use of “Paquito Solar” infringed on its registered trademark, “Power Solar.”
According to the allegations, before the filing of the complaint, on August 30, 2024, Power Solar sent a cease-and-desist letter demanding that Solar Now remove the campaign. After a series of communications, Solar Now removed the social media posts and agreed to remove the billboards by October 10, 2024. The billboards were finally removed around December 20, 2024. Despite the removal, Power Solar filed its complaint on January 9, 2025.
The Court of First Instance (the “Court”) dismissed Power Solar’s request for a permanent injunction in response to Solar Now’s opposition. First, Power Solar failed to demonstrate that it would suffer real and imminent harm if Solar Now were to reinstate the campaign. Second, the alleged infringement no longer existed since Solar Now removed the billboards and social media posts in controversy and stated it would not use the campaign again.
Then, on March 21, 2025, Solar Now filed a motion to dismiss the complaint, alleging that the campaign fell within the permitted uses under the PRTA, specifically as a parody and a form of comparative advertising. On August 26, 2025, the Court agreed, holding that Power Solar had failed to state a plausible claim for trademark infringement under the PRTA.
In reaching its decision, the Court applied the factors from Bedrosian Heres v. Nestle Purina Petcare, 205 D.P.R. 1130 (2020) to assess the probability of confusion of the campaign. The Bedrosian factors are the following: 1) similarity of the trademarks; 2) similarity between the parties’ goods or services; 3) the strength or distinctiveness of the plaintiff’s trademark; 4) defendant’s intent in using the trademark; and 5) evidence of actual consumer confusion. Each factor carries different weight, and prevailing on most of them does not automatically establish a likelihood of confusion.
In this case, the Court determined the following as to each factor:
1. Similarity of the trademarks: Although “Power Solar” and “Paquito Solar” share certain elements, the Court found notable differences in letter arrangement, color scheme, and logo design. The Court also noted that a parody must be sufficiently similar to the original to make its humorous intent recognizable. This factor favored Solar Now.
2. Similarity between goods or services: Both parties operate in the same industry (sale and installation of solar panels), so this factor favored Power Solar.
3. The strength of the trademark: Power Solar demonstrated substantial investment in brand growth and marketing throughout Puerto Rico, establishing strength of its mark. This factor also favored Power Solar.
4. Intent of the second user: Citing Posadas de P.R. v. Sands Hotel, 131 DPR 21, 33 (1992), the Court emphasized that intent becomes less relevant when there is no evidence of confusion. Power Solar alleged that Solar Now used “Paquito Solar” to tarnish its reputation, but the Court found these claims had no substance. Instead, Solar Now’s intent was clearly parodic and comparative, not misleading. This factor favored Solar Now.
5. Evidence of actual confusion: Power Solar failed to include allegations of actual confusion. This factor favored Solar Now.
With three of the five factors favoring Solar Now, and given their relative weight, the Court held that there was no probability of confusion. The Court concluded that no reasonable consumer would confuse “Paquito Solar” for being associated with or endorsed by Power Solar.
Lastly, like its federal counterpart, the Lanham Act, the PRTA allows the use of another’s trademark without the owner’s consent in the following circumstances: 1) non-commercial uses, 2) comparative advertising, and 3) parody. The Court noted that the campaign in controversy was published during Puerto Rico’s election season, inviting consumers to “vote for Solar Now” in a humorous way. That is, the purpose of the campaign was to expressly distinguish itself from its competitors, not confuse the consumers with an association or endorsement with Power Solar.
This decision highlights the intricacies of the fair use doctrine in trademark law. Not every use of another’s trademark constitutes infringement. It is important to keep in mind the goal of trademark law: to prevent and avoid consumer confusion when it comes to the origin of products and services. The law allows for parody and comparative advertisement as long as they don’t result in a likelihood of confusion.
Author: Stella M. González-Pérez, Esq.
This article was originally published in From the Bar, Spring 2026, Issue No. 68 — a publication of the Federal Bar Association, Hon. Raymond L. Acosta Puerto Rico Chapter. Reproduced with attribution for informational purposes.
