Eight Reasons Not to Extend Protection to the United States via The Madrid Protocol

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:

  1. 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).
  2. 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.
  3. 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.
  4. 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).
  5. 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).
  6. 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.
  7. 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).
  8. 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.

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USPTO Decides Not To Change Deadlines for Sections 8 and 71 Declarations

Further to my posting of August 17, 2012, the USPTO has now decided that it will not, at this time at least, pursue the issue of changing the filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act.  The USPTO’s notice in this regard reads as follows:

“On August 16, 2012, the USPTO published a notice inviting the public to submit written comments on a potential legislative change to amend the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act from between the fifth and sixth years after the registration date, or the six-month grace period that follows, to between the third and fourth years after the registration date, or the six-month grace period that follows (77 FR 49425 (August 16, 2012)).  A review of the comments submitted reveals that although many commenters expressed concern regarding registrations that are no longer in use in connection with some or all of the goods/services listed, the predominant sentiment was that the deadline should not be shortened.  Several commenters also noted that further research and data were necessary to support a legislative change to the deadline.  To that end, the USPTO notes that it is currently conducting a post-registration pilot program to gather information regarding the accuracy of identifications of goods/services for registered marks.  (77 FR 30197 (May 22, 2012)).”  See also here.

I’m not sure whether this kills the initiative or just postpones it, but I’m glad to note that the USPTO’s pilot program (previous blog post here) to assess the accuracy of the register will continue.  Under the pilot program, the USPTO may, upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark.

USPTO Proposes Changes to Section 8 and 71 Filing Deadlines

On August 16, 2012, The USPTO published a notice in the Federal Register, requesting comments on a proposal to change the statutory filing period for the initial Section 8 and 71 affidavits.  The deadline for comments is October 15, 2012.

Under the proposed revised rule, owners of U.S. trademark registrations or Extensions of Protection under the Madrid Protocol would have to submit evidence of use of a mark in commerce (for Paris Convention or Madrid Protocol registrations, this would be the very first evidence of use) between the third and fourth anniversary of the U.S. registration date.  Currently these affidavits are due between the fifth and sixth anniversary date of the registration.  The proposal, therefore, moves the filing deadlines forward by two years.

The proposed amended deadlines will require owners of registrations to provide evidence of use and to limit their registrations to only those goods on which the mark is actually in use at an earlier point in time than is currently required.  One of the stated goals of the USPTO being the removal of “deadwood” registrations from the Register, this proposal would accelerate the process of removing trademark registrations of marks which are no longer in use.

The current filing situation is of particular concern with respect to registrations issued under Sections 44 and 66 of the Trademark Act, which are owned by registrants located in countries other then the U.S.  These trademark owners have the distinct advantage of being able to obtain registrations in the U.S. without having to prove use of their marks in commerce.  Currently, registrants do not need to prove use in commerce until the Section 8 or 71 affidavit is due (six years after the registration issues).  The lack of a requirement to prove use has led to the common practice of obtaining registrations covering sometimes extremely long lists of goods and services (because the U.S. registration is based on foreign registrations for which no use is required).  The proposed amendments would ameliorate the problem of having a large number of registrations with extremely long descriptions of goods and services (which makes searching trademarks that much more difficult) by requiring all registrants to limit the scope of their registrations to only those goods on which the mark is actually in use at an earlier point in time.

The proposal also has the effect of bringing the procedural requirements in line with Trademark Act Section 45, which creates a presumption that a mark has been abandoned when there has been no use for three consecutive years.  What trademark owners often forget is that registrations under Section 44 and 66 are already vulnerable to cancellation after three years of nonuse.  It is also likely that the proposal, if it becomes law, would have the effect of decreasing the number of cancellation actions based on abandonment.

One of the disadvantages of the proposal is that the Section 8 and 71 affidavits would no longer be filed at the same time as the Section 15 affidavit of incontestability, thus adding another filing deadline to the docketing systems of most trademark lawyers and owners, along with burdening trademark owners with additional costs.  It has been pointed out to this blogger that creating an additional filing deadline might lead to inadvertent failures to file Section 15 affidavits.  The proposal will also have to be carefully analyzed to assure that there are no adverse effects on treaty obligations of the United States, especially the Madrid Protocol and GATT/TRIPS.

The USPTO has asked for comments regarding the proposal to address  four specific questions:

(1) Is “deadwood” on the trademark register a concern of yours, and what impact do you believe it has?

(2) Do you favor or oppose an amendment to shorten the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 as a means of ensuring the accuracy of the trademark register? (Please explain why.)

(3) If you favor shortening the deadline, what time period do you believe would be most appropriate for the first filing deadline?

(4) Are you concerned that an amendment to the first Section 8 and 71 affidavit deadline would foreclose the ability to combine the filing with the filing of an Affidavit or Declaration of Incontestability under Section 15? What impact do you believe separating these filings would have?

This blogger will be fascinated to see how this one plays out.

A big “thank you” and hat tip to colleague and friend Alina S. Morris, who first alerted the Transatlantic Trademark Lawyer to this issue.

More on IP Translator, Class Headings and US Practice

What you will get from the USPTO if you file an Application with Class Headings

I am slowly becoming convinced that the IP Translator decision may turn out to mean full employment and lucrative business opportunities for US trademark lawyers.

Right after I published yesterday’s posting, I had an office action to review. The office action deals with an application filed under the Madrid Protocol and the owner is a German company. The office action (which includes a large number of classes) has a number of fine examples of what will happen if an application filed with class headings in the goods and services description is examined by the USPTO.

With respect to each class heading, you will get something like this:

“The wording “Hand tools and implements (hand-operated); cutlery; side arms; razors” in the identification of goods is indefinite and must be clarified because it consists primarily of the class heading for International Class 008. See TMEP §§1401.08, 1402.01 et seq., 1402.07(a). Applicant must amend this language to identify goods that fall within the ordinary meaning of the words specified in the class heading and fall within International Class 008. See TMEP §§1402.06(a), (b), 1402.07(a).”

The only acceptable response is to amend the application by inserting, after the class heading, a list of all of the goods or services the applicant intends to use the mark on in the US, starting with the word “namely” (the USPTO will also make you remove all of the parentheses in a description). Applicants should not be tempted, however, to amend the description with the entire alphabetical list of goods for that class. Remember, the rules regarding declarations made before the USPTO, which are given under penalty of perjury, apply! The applicant must have a bona-fide intent to use the mark on ALL of the goods or services listed in the application, including the list of goods that is amended to the class heading description in response to the office action.

I believe that the temptation to now use class headings in Europe will just be too great for many applicants to ignore. As for extending those applications and/or registrations to the US, please do. It only means more work for my colleagues and me here in the US.

The IP Translator Decision – My 2 Cents…

On June 19, 2012, the European Court of Justice (“ECOJ”) handed down a decision in what has been christened the IP Translator Case (decision here).  The case concerns a dispute between The Chartered Institute of Patent Attorneys and the Registrar of Trade Marks (of OHIM, the registrar of community trademarks) concerning the latter’s refusal to register the mark IP TRANSLATOR.

It seems everyone is writing about this decision, so obviously I couldn’t resist adding my 2 cents, though I seem to be a bit late to the party (I simply have not had time to write this post until now).  However, I have had the benefit of looking at what other commentators have had to say.

Because I have not seen any postings addressing the issue, I want to look at it from the angle of what this means for European trademark owners intending to register their marks in the United States (assuming they avail themselves of the opportunities made available to them by this ruling).

The facts and background are really not of great importance to this posting, but the decision certainly is.  The important rulings can be found in paragraph 64 of the decision:

–        Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;

–        Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;

–        an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

So, what does this mean in the context of U.S. applications?  Short answer: absolutely nothing, but there are some important issues to keep in mind.

As most practitioners know, the USPTO has very stringent rules for specificity in a description of goods or recitation of services.  As anyone who has filed a U.S. application under Sections 44 or 66 of the Lanham Act knows, you usually can’t get away with the broad descriptions common in European trademark registrations.  As a matter of fact, an office action issued by the USPTO requiring greater specificity is an almost unavoidable by-product of an application filed in the U.S., be it based on a home registration (Section 44) or as an extension of an International Registration (Section 66).

Let’s be clear about this: NOTHING in the IP TRANSLATOR decision affects the USPTO’s specificity requirements.  If an owner uses the mechanisms available under Sections 44 or 66 of the Lanham Act and the application or registration that is the basis of the US application includes class headings, the applicant will still have to comply with the USPTO’s specificity requirements.

Here is where I see the potential for major problems, arising out of another policy of the USPTO, namely Trademark Rules of Practice 2.85, which provides in pertinent parts:

(d) Section 66(a) applications and registered extensions of protection. In an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization, unless the International Bureau corrects the classification. Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.

(f) Classification schedules shall not limit or extend the applicant’s rights, except that in a section 66(a) application, the scope of the identification of goods or services for purposes of permissible amendments (see § 2.71(a)) is limited by the class, pursuant to § 2.85(d).

The effect of this rule is that, if an application includes a non-specific description of goods/services in a particular class and, upon submission by the applicant (in response to an office action) of a description that satisfies the specificity requirements of the USPTO, the USPTO finds that any of the goods/services have, in the view of the USPTO, been misclassified, said goods/services must be deleted from the application.  This may not be much of an issue if the deleted goods or services are not at the core of the applicant’s business.  But, if they are, the applicant is left with what is essentially a worthless registration (at least in the United States).

Another issue to be considered is that, when an applicant files an application for extension of protection of an international registration to the United States, the applicant is required to make a declaration that there is a “bona-fide intent to use” the mark on all of the goods and services listed in the application.  Accordingly, even though recent decisions have significantly eroded the ability to successfully prosecute oppositions or cancellation actions on the basis of fraud, unless the applicant has a bona-fide intent to use the mark on every single one of the potentially thousands of goods or services covered by a class heading, by filing an application with just class headings in the US, that applicant is proffering a false declaration, with all of the various consequences that entails under the USPTO’s rules and regulations, applicable case law and, yes, even criminal law.

Therefore, the following is my advice to European applicants tempted to avail themselves of this apparent new advantage: DON’T DO IT if the intent is to use the Community Trademark either as a basis of filing in the US under Section 44 (because of the false declaration issue) or Section 66 (because of both the potential of having core goods deleted from the application and the false declaration issue).

Now, to some readers the possibility of getting into trouble in the US over these issues might seem remote, and with respect to criminal liability for giving a false declaration they certainly are (I’ve never heard of a prosecution in such a case).  But why tempt fate?  The fact is that it might be easier and safer just to file a national application in the US, where reclassification is possible and where a qualified US attorney can advise beforehand regarding the requirement of having a bona-fide intent to use the mark on all of the goods/services listed in the application.

Finally, I can’t say that I can welcome the decision in this case.  While I believe that the USPTO’s specificity requirements sometimes, maybe even often, go too far, I also think that a requirement for some specificity is a good thing.  It is my belief that opening up the possibility of using class headings in CTM applications invites applicants to file overly broad applications and invites unnecessary disputes between owners, because it will not be possible to ascertain from the registry what a mark is actually intended to be used on.  Therefore, it is my view that the ECOJ’s decision in this matter was ill advised.

Is the Jig up? USPTO Revises Rules Regarding Specimens of Use and Initiates Pilot Project

Many European owners base their U.S. trademark applications either on §44 (home registration) or §66 (Madrid Protocol Extension of Protection) of the Lanham Act.  By doing this, they gain the useful advantage of not having to prove use in commerce before obtaining their registration.  Unfortunately, in doing so they often disregard the requirement of having to have a “bona-fide intent to use” and consequently stuff their applications with all manner of goods and services, many of which have exactly nothing to do with what the applicant will actually use the mark on in the U.S.  I call this the “everything including the kitchen sink” approach.  Now, it appears, the USPTO is about to crack down on this practice.

Effective June 22, 2012, The U.S. Patent and Trademark Office (“USPTO”) has changed the rules and, depending on how Examiner’s use their new powers, these rules changes could have a dramatic effect.  Here is my slightly edited version of the USPTO’s summary of the new rules:

“In order to help assess and ensure the accuracy of the trademark register, the USPTO is revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to allow the USPTO to: Upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark. These revisions aim to ensure the ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration, and thereby reduce costs and burdens on the public.” (Emphasis mine)

The entire notice can be found in the May 22, 2012, Federal Register.

In summary, for owner’s of registrations obtained pursuant to §44 or §66, the post-registration examiners at the USPTO can make the owner prove that they are actually using the mark on all of the goods and services listed in the registration, if they have doubts about the actual extent of the use of the mark being maintained or renewed.  For those filing use-based or intent-to-use applications, that requirement may come during the initial application process.

The issue of overly broad descriptions is not new, of course.  I have been preaching, cajoling, whining and arguing for years with my (mostly European) clients regarding what it means to have to prove use of a mark in the United States.  There have been endless conversations and arguments concerning the requirements for the submission of a declaration of use and how those requirements, rules and regulations are to be interpreted.  I have felt strongly about this subject for a long time and even co-authored an article outlining the consequences of filing incorrect affidavits of use (GRUR Int, Issue 3/2011, p. 225), Well, after many years of fruitless arguments it seems my clients are about to be faced with situations where they are going to have to really, I mean REALLY, prove that the are using the mark on all of the goods and services named in the registration, when it comes time to file an affidavit of use.

As my esteemed fellow blogger and colleague John Welch points out here, Examining Attorneys have had the power to request additional information all along under Rule 2.61(b).  It can be expected, however, that this new rule will embolden Examiners to aggressively seek additional information and specimens and I suspect (as it seems John does) that they have been told to use their power liberally.  This does not bode well for my clients, but I’m not at all upset about it.  After all, what the USPTO is doing here is really nothing other than enforcement of the already existing principle that governs trademark registration ownership in the US: use it or lose it!

Let me be clear about this: I’m behind the USPTO’s initiative.  I believe that the final results will be better for everyone. It will help clean the registry of deadwood and it will make applicants, especially those who initially adopt the “everything including the kitchen sink” approach, reconsider their description of goods and services, at the very latest when the time comes to file the affidavit of use required by §8 or §71 of Lanham Act, depending on the original filing basis.

The only negative is that I may have to explain to my clients how it came about that they suddenly have to submit additional specimens or get out a really big red pen and start deleting all of the chaff.   But they’ll get used to it…  I hope.