Caution for foreign mark owners seeking to register marks pursuant to Madrid Protocol

The US District Court for the Southern District of New York has recently provided guidance - and caution - to aspiring US trademark owners seeking registration of their marks pursuant to the Madrid Protocol.

In Sandro Andy SA v Light Inc (No 12 Civ 2392 (HB) (SDNY), December 12 2012), plaintiff Sandro Andy SA filed suit against defendants Light Inc and its current owner Alice Sim, alleging infringement of its SANDRO mark. The plaintiff, a thirty-year-old French clothing and accessories manufacturer, had first registered its SANDRO trademark in the United States on February 23 2010, pursuant to Section 66(a) of the Trademark Act (15 USC § 1141(f)), which permits US registration of existing international trademark registrations, without alleging use in the United States. Defendant Light Inc, an established US apparel designer, manufacturer and retailer, had first used its accused SANDRO mark in connection with its apparel in 1999. 

The defendants, in turn, filed a number of counterclaims, including one that sought a declaration that the plaintiff “lacked a bona fide intent to use the mark in connection with the goods listed in the application”, and an order directing the US Patent and Trademark Office to cancel the plaintiff’s asserted registration. The plaintiff moved for dismissal of this counterclaim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure.

In foreign 'registered-rights' jurisdictions, trademark applicants are permitted - in some cases even encouraged - to identify numerous goods and services, whether or not the applicant uses or intends to use its mark in connection with them. When such foreign registrations form the basis for US registrations under Sections 44 and 66 of the Lanham Act, a trademark owner may not be able to prove its bona fide intent to use its mark in connection with the long list of goods and services for which it is registered. 

Plaintiff Sandro Andy’s registration for SANDRO fell prey to this problem. While the court did not question the plaintiff’s use of its SANDRO mark in connection with apparel in the United States, its registration claimed over 250 other goods and services, many altogether unrelated to the plaintiff’s clothing and fashion accessories business. The defendants argued that the plaintiff’s registration was therefore invalid in view of its lack of bona fide intent with respect to many of the identified goods and services.

The court denied the plaintiff’s motion to dismiss, finding that the defendants had alleged adequate facts to support the claim that the plaintiff lacked bona fide intent to use the mark in commerce for some or all of the identified goods and services. However, although the court acknowledged that the registration was overbroad, it nevertheless declined to invalidate the whole registration, citing a Trademark Trial and Appeal Board decision for the proposition that “absent fraud or some other such infirmity that infects the process, a lack of bona fide intent for some but not all of the goods is not necessarily a reason to deem the entire registration void ab initio”. Instead, the court directed the plaintiff to “amend its international registration and to cull from the list the unused goods and classes” or, in the alternative, to “file a motion to amend its certificate of extension”.

This decision may serve as caution for international trademark owners seeking to register their marks within the United States pursuant to the Madrid Protocol. For a Section 44 or 66 trademark applicant from a 'registered-rights' jurisdiction, limiting the list of identified goods and services to those in connection with which the applicant has a bona fide intent to use its mark in the United States may prove beneficial when it seeks to enforce its US registration. At a minimum, a foreign applicant/registrant may avoid the time and expense incurred by Sandro Andy in having to litigate this issue.

Natasha Sardesai Grant and Howard Shire, Kenyon & Kenyon LLP, New York