Trademarks are “territorial.” Be proactive in protecting trademarks!
Have you considered registering your mark in countries in which:
Your goods or services are marketed;
Products or parts for your products are manufactured;
Research and development facilities are located;
Your products are trans-shipped;
You might expand your business in the future; or
Counterfeiting is likely to be a problem.
Protecting Trademarks Abroad
What is the Madrid Protocol? It is an international trademark filing treaty administered by the World Intellectual Property Organization, WIPO.
Currently 84 member countries. (Jan. 13, 2012)
The United States became a party to the Madrid Protocol effective November 2, 2003.
Protecting Your Trademarks
Abroad: The Madrid Protocol
Under the Madrid Protocol, the owner of a
“basic application” or a “basic registration”
issued by, the USPTO can -
File a single international application, in English, at
the USPTO Web site, pay in US dollars, and seek
registration in any or all of the countries who are
members, as the applicant designates.
FILINGS UNDER THE
MADRID PROTOCOL
FILINGS UNDER THE
MADRID PROTOCOL What happens after the international application is
transmitted to the USPTO?
If the minimum requirements are met, the USPTO certifies the application, and
forwards it to WIPO. (If not, applicant is notified of the deficiencies in the
application.)
The application must identify an application or registration from the country of origin –
the basic application/registration;
The mark in the international application must be the same as that in the basic
application/registration;
The identification of goods and services must be identical or narrower than that in the
basic application/registration;
The applicant must be identical to the owner or applicant of the basic
registration/application;
The applicant must provide a statement that it is entitled to file an international
application in the USPTO;
List of contracting countries for REPs;
And, of course, a non-refundable certification fee.
FILINGS UNDER THE
MADRID PROTOCOL
If WIPO finds that its requirements were met, it issues an “international registration.”
WIPO then sends the international registration to each of the countries that the applicant
identified in the international application.
Each of those countries then determines whether, under its trademark laws, the U.S.
trademark owner is entitled to an extension of protection, i.e., whether the international
registration will be in force in its country.
A country must issue any refusals within either one year, or eighteen months, from the
day the REP was forwarded to the Office by WIPO (depending on whether the country
opted for the one year or eighteen month limit).
If the country decides to issue a refusal, it sends a refusal letter to WIPO, which then
mails the letter to the applicant.
The Madrid Protocol in the United States
The USPTO provides two sets of services under the Madrid
Protocol
The USPTO is responsible for certifying and forwarding
international applications to the International Bureau (IB) for
registration;
The USPTO is also responsible for examining requests for
extension of protection (REPs) to the United States.
Since November, 2003 more than 21,000 international
applications have been received in the United States.
More than 92,000 REPs have been received in the United
States since November 2003. This has resulted in over 60,000
registrations.
Madrid Application - outgoing USPTO
“Basic” TM
Application
USPTO
“Basic” TM
Registration
International
Application &
Madrid Member
Designations
USPTO Certifies Int App
Collects fees
Forwards to WIPO
$ Int App fee +
country fees
International
Registration
National
Office
National
Office
National
Office ROMARIN – Database of
International Registrations
WIPO Formalities &
Classification Review Requests for
Extension of
Protection
Incoming Madrid REPs
USPTO examines requests for extension
of protection (REP) under the same laws,
regulations and procedures as any other
application for registration.
Madrid Application - Incoming
Request for
Extension of
Protection
2 months
to retain
IA date
Formalities
Classification
Design Coding
Examining
Attorney
Review
Approve for
Pub
Refuse
Request
Amendment
Publication
WIPO
Notification
At 12 or 18
months
®
TTAB
National
Office
12 or 18
Months
?
? ?
MPU
Applicant
Equal (or Better) Opportunity for Madrid Filings
In the USPTO, REPs examined substantively the same and
with the same time frame as regularly filed U.S. applications.
The USPTO issues “Certificate of Extension of Protection”
which has the same rights and limitations as a registration on
the U.S. Principal Register.
The USPTO publishes Madrid Extensions of Protection in the
USOG for opposition.
Section 8 (post registration) affidavit(s) of use is required in
order to maintain a certificate of extension of protection.
Fraud in the Identification of Goods and Services
Applicants are required to swear under penalty of U.S. law to their “use” in U.S. commerce or “intent to use” in U.S. commerce of all goods/services in the application.
USPTO rules impose a duty of candor and a reasonable inquiry to confirm: allegations and other factual contentions have evidentiary support (37 C.F.R. § 11.18(b)(2)(iii); legal contentions are warranted by existing law; (37 C.F.R. §11.18(b)(2)(ii)). Signature rule 37 CFR § 2.193, references Rule 11.18.
Applicants or registrants that swear they are using a mark on goods or services that they know they have not actually provided risk voiding the entire class (or entire single class registration) in which the fraud occurred. See, e.g., First Int’l Services Corp. v. Chuckles, Inc., 5 USPQ2d 1628 (TTAB 1988); G&W Labs v. GW Pharma Ltd., 89 U.S.P.Q.2d 1571 (TTAB 2009).
Fraud requires proof by clear and convincing evidence that applicant or registrant knowingly made a false, material representation with the intent to deceive the USPTO. See In re Bose Corporation, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).
Fraud in the Identification – cont’d
Even if fraud is not proved: goods and services not in use in commerce, or for which there is no bona fide intent to use in commerce may be cancelled from the registration or application.
This is very different from the practices in other jurisdictions where broad identifications or class headings are allowed.
This can cause problems for Madrid applicants filing into the United States!
Fraud in the Identification – cont’d
USPTO requires an “extra” form for Requests for Extension of Protection into the US – MM18 “Declaration of Intent to Use.”
The declaration must be signed by a person with legal authority to bind the holder/applicant or a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant/holder or a U.S. attorney.
TIP: Be careful to ensure that the Declaration of Bona Fide Intention to use the mark (form MM18) accurately reflects “intent to use.”
Identifications – Avoid Problems
Identifications should be narrow.
Identifications must be accurate.
Identifications should be consistent with the US Acceptable
Identification of Goods and Services Manual (“ID Manual”).
Available online at: http://tess2.uspto.gov/netahtml/tidm.html
Contains notations of those identifications and classifications that are
accepted by the three Trilateral Offices (USPTO, JPO, OHIM). We hope
that this Trilateral list will eventually be expanded, allowing additional
countries to participate and add to the list.
Identifications – cont’d
The ID Manual sets forth thousands of goods and services that an applicant could offer, and provides acceptable wording and proper classification.
Examining attorneys will require that ALL identifications be consistent with the principals of Nice classification and existing entries in the ID Manual.
Identifications can only be amended within the scope of the original wording. Applicant may not expand the identification, can only narrow it.
The IB controls classification. Therefore, the USPTO cannot amend the classification in a Madrid-based application and will require the applicant to specify only goods/services that actually fall into the class assigned by the IB. Any proposed amendment that falls into another class will be refused.
Madrid Classification:
Incoming REP to the U.S. REP
IC 25 Clothing,
namely gowns
But not:
IC 10 Clothing,
namely surgical
gowns
IC 25 headgear,
namely caps
But not:
IC 9 protective
headgear for
boxing
IC 3 Skin Lotion
But not:
IC 5 Pharmaceutical
Skin lotions
IR Covering
IC 25 Clothing
IC 25 Headgear
IC 3 Lotions
“Basic” Covering
IC 25 Clothing
IC 25 Headgear
IC 3 Lotions
WIPO Determines Nice Classification – Once
REP is sent to National Offices, applicant cannot
add any classes to cover goods that may fall into
other classes upon examination.
Only goods
in Classes 3
and 25 will
be allowed
in U.S.
Limitation of Goods and Services
International Application contains a mechanism for
providing a specific identification of goods/services
that complies with U.S. requirements while
retaining a broader list of goods/services in the
international registration and for all other
designated parties.
Item 10(b) is the LIMITATION of goods and
services with respect to one or more designated
parties and entry of a limitation in the original
international application is free of charge. A
subsequently filed limitation requires a fee.
Madrid Pitfalls
Classification – Not So “NICE” REP
IC 25 Clothing
IC 25 Belts
IC 3 Lotions
REP IC 25 Clothing,
namely shirts, shoes
IC 9 Support Belts
For workers
IC 10 Abdominal
Belts For Medical
purposes IC 3 Skin Lotion
IC 5 Pharmaceutical
Skin lotions
IR Covering IC 25 Clothing,
namely shirts, shoes
IC 9 Support Belts
For workers
IC 10 Abdominal
Belts For Medical
purposes IC 3 Skin Lotion
IC 5 Pharmaceutical
Skin lotions
USPTO
“Basic” Covering IC 25 Clothing,
namely shirts, shoes
IC 9 Support Belts
For workers
IC 10 Abdominal
Belts For Medical
purposes IC 3 Skin Lotion
IC 5 Pharmaceutical
Skin lotions
Narrow US Identification practice seen
as “limitation” on use by US owners.
Common Issues With Madrid
Applications
The presence of any one of these issues will
result in a full provisional refusal:
Citizenship and entity
Translation of mark
Color claim and color description
Consent to register name or likeness of a living
individual (could handle as a preliminary amendment)
See WIPO Information Notice No. 4/2009
Addressing these Issues Prior to Examination
When possible, include this information in the application.
As soon as you know the Serial Number of your application,
you can file a Preliminary Amendment to add or correct
information.
USPTO sends immediate filing receipts for REPs upon notification by
IB with US Serial Number. Check for errors and correct them
immediately with the IB.
Alternatively, search USPTO’s TARR database by International
Registration No. to find the US Serial Number, and then file a
preliminary amendment via USPTO’s TEAS system.
Representation Before the Office
When responding to Office actions, or filing any
amendments, a signature of an authorized individual is
required. This can be the applicant, a corporate
officer, or a duly authorized attorney.
Holder’s IB representative is not considered the attorney of
record by the USPTO.
• Holder’s representative address is treated as the correspondence
address of record.
Foreign attorneys may not practice before the
USPTO. VERY few exceptions
See TMEP Section 602.06 et. seq.
Madrid Considerations
Madrid Protocol leaves trademark owner with a bundle of national rights.
Those rights are tied to basic application or registration for 5 years – “Dependency” (transformation of REPs into national applications possible)
The International Registration is not a single registration.
Madrid Dependency – Central Attack
Extensions
Of
Protection
Extensions
Of
Protection
Extensions
Of
Protection
Basic
App/Reg 5 year
dependency
National
Application
National
Application
National
Application
Basic
Cancelled
International
Registration Transformation
(Can keep original priority date)
International
Registration
Cancelled
Within
5 years
Madrid Maintenance – the Real Benefit
Extensions
Of
Protection
Extensions
Of
Protection
Extensions
Of
Protection
International
Registration
WIPO $
Request for:
Renewal
&
Change of
Address
Change of
ownership
(single request
for change to
multiple
registrations)
One request at WIPO will effect the
renewal/change in all designated Contracting
Parties.
International
Registration
International
Registration
Madrid “Pitfalls” – Closed System
U.S. Madrid applicant must be a national of of the U.S., be domiciled here, or have a real and effective industrial or commercial establishment in the U.S.
The owner of an international registration must also be domiciled in, be a national of, or have a real and effective industrial or commercial establishment in a Contracting party.
This means that assignments outside the system – to non-Madrid nationals - is problematic. Once assigned outside a Madrid Member, the national right is outside of the Madrid system and can’t use Madrid maintenance features.