Why the Madrid Protocol may be a good way to obtain a US Trademark Registration:

Yes, I haven’t blogged for a while.  The truth is, things have been hectic, both personally and professionally and other matters demanded my attention.  Well, I’m back.

In February of 2013, I posted a list of eight reasons why there are disadvantages to using the Madrid system to obtain a US trademark registration.  At the time I promised to post a similar list of positives.

Therefore, much later than anticipated, here is a non-comprehensive list of some of the advantages of using the Madrid system over the filing of a national application in the US:

  1. No need to show use in commerce before receiving a registration.  As you may know, national applications in the US require a showing that the mark is in use in commerce before the USPTO will issue a registration.  This is actually a double-edged sword, as explained in my previous post.  However, the advantage of obtaining a registration, which could then be cited against later filed trademarks by the USPTO, should not be underestimated.  Note, however, that the same effect can be obtained by using Section 44 of the Lanham Act, which permits foreign filers to obtain registrations (based solely on their bona-fide intent-to-use) without having to show use in commerce.
  2. Ease of filing and no need to involve US-counsel unless an office action is issued by the USPTO.  While most extensions of protections will eventually require retaining US-counsel, the initial filing is accomplished via WIPO.  This means a not insignificant cost savings at the outset.  In particular where the goods or services are simple (think “beer” in Class 32), i.e. where there is practically no likelihood of a rejection based on a lack of specificity in the description of goods, the cost savings could be significant.  Keep in mind, however, that the European penchant for throwing everything plus the kitchen sink into an application means that the likelihood of not receiving an office action is very remote.  It gets even worse if class headings are used.  In my view, the simpler the description of goods, the more likely it will be that going the Madrid route will result in a significant cost savings.  If, however, you choose to file an application for extension of protection with descriptions of goods and services in multiple classes and for hundreds of goods or services, the costs will escalate tremendously once it becomes time to answer the inevitable office action.
  3. Ease of filing of assignments is the final advantage I can think of.  If an international registration is assigned, WIPO will forward the new owner’s information to the USPTO and that new owner will be recorded as the holder of the US registration.  There is a very obvious administrative advantage here, one that should not be underestimated.  Remember, however, that the US requires that trademarks be assigned along with “the goodwill of the business symbolized by the mark.”  Non-US owners of international registrations should therefore take care that their assignment documents should include the necessary “magic language” in order to withstand challenge in the US, should there ever be a dispute over the validity of the registration.

I’m sure there are other advantages and I invite my esteemed readers to provide additional examples in the comments as their fancy might strike them.

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