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.

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.