There have been many discussions over the years about the utility of the Madrid Protocol. One of the questions most often repeated, at least in my experience, is whether it makes sense for non-US owners of trademarks to use the Madrid Protocol to extend protection of their internationally registered marks into the United States. As can be easily imagined, this is a hotbed of debate. Recently, in the context of a discussion on LinkedIn, I came across a list of reasons NOT to use Madrid in the US, authored by my colleague Nicholas Wells of Wells IP Law in Salt Lake City, Utah (http://www.wellsiplaw.com/). Because I am in total agreement with the reasons set forth, I asked and received permission to replicate the list here. I’ve added some remarks and thoughts that are mine, but in essence this is Nicholas’ list:
- Inability to use the Supplemental Register (i.e., to move a mark to the Supplemental Register to save it from abandonment when the mark is descriptive and acquired distinctiveness can’t be shown).
- Inability to change class numbers to place goods in the class that USPTO requires. WIPO’s classification of goods and/or services cannot be modified by the USPTO. If WIPO misclassifies goods or services, the applicant’s only recourse is to prevail on WIPO to correct the misclassification, which correction will then be transmitted to the USPTO and adopted. This is onerous, takes time and there is no guarantee that WIPO will agree to reclassify.
- Inability to move goods between classes, even when the class that the goods belong to per USPTO is already part of the application. This is not a problem in a national application.
- Inability to add classes (e.g., goods are listed as “blankets and clothing” in the original app.: a direct filed national application lets you split into classes 24 and 25 by paying another per-class official fee but under Madrid the USPTO requires you to drop whichever one is in the wrong class. If the application lists class 25, the blankets must be deleted. If the application was filed in class 24, the clothing must be deleted – this can lead to the deletion of core goods or services from an application, potentially rendering it practically worthless to the applicant).
- Inability to add other statutory filing bases (specifically, inability to add Section 44(d) priority claim to a non-US application outside of the normal Madrid priority process).
- Weakness of Madrid registrations in a dispute (because use has not been shown during the registration process, the registration can be used defensively but not offensively unless use is first shown, which places the burden on the owner of the registration and catches many mark owners off guard). My advice to my clients is usually to not use a registration in an opposition, infringement or cancellation proceeding unless the mark actually in use in commerce in the United States.
- Inability to modify marks (WIPO permits no modifications; USPTO permits non-material modifications either during prosecution or post-registration; this is very helpful for minor updates of design marks, but is impossible for Madrid-based US registrations).
- Dangers of missed maintenance deadlines; because mark owners track the renewal of the International Registration and are often more accustomed to measuring from the filing date, they are at risk of missing (a) the 5-6 year post-registration filing deadline for the affidavit of use (pursuant to Section 8 of the US Trademark Act) and the fact that these affidavits of use must also be filed every ten years, measured by the US-registration date, not the WIPO renewal date.
I will add one more reason to Nicholas’ already comprehensive list: There is actually not much of an administrative advantage to obtaining an extension of protection in the US. As mentioned in point no. 8 above, separate affidavits of use must be filed in the USPTO, independent of the renewal applications that are filed through WIPO. Therefore, in most cases a foreign owner will still have to retain US trademark counsel to file these affidavits for the owner, especially since the affidavits must be accompanied by specimens showing how a mark is actually used. The selection of such specimens is crucial, as the USPTO will reject inappropriate specimens which, if the proper steps are not taken in a timely manner, could lead to the cancellation of the registration.
Do I think that foreign trademark owners should shy away from extensions of protection to the US? No, but I do believe that the matter needs to be carefully considered on a case-by-case basis. There are obvious advantages to using the Madrid Protocol to obtain extensions of protection in the US and it would be unfair to dwell only on the negative. In a future posting, I will provide a list of positives that come with going the Madrid route to obtain a trademark registration in the United States.