International

Trademark Registration

with Madrid

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 PROTOCOL APPLICATION

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.