Coming to America: a guide to extending registrations via the Madrid Protocol

It has been over a decade since the Madrid Protocol came into force in the United States, yet many rights holders looking to extend protection still find the US use-based system confusing. Taking care over the initial application can be a wise investment

On November 2 2003 the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, otherwise known as the Madrid Protocol, came into effect in the United States. Under this treaty, a trademark owner may seek registration in any countries that have joined the Madrid Protocol by filing an international application through the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. The resulting international registration then serves as a means for seeking registration in member jurisdictions, each of which applies its own rules and laws to determine whether the mark may be registered in its jurisdiction (see www.uspto.gov/trademarks/law/madrid/madridfaqs.jsp#q1). Any trademark owner that is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the US Patent and Trademark Office (USPTO). Further, non-US trademark owners in other Madrid Protocol countries can seek to extend an international registration to the United States.

The Madrid Protocol has been in effect in the United States for over 10 years and practitioners in both the United States and other members of the Madrid Protocol have had an opportunity to experience the system. A search of a commercial database for all active and inactive Madrid extensions to the United States with a 2004 filing date showed just over 10,000 filings. In 2013 more than 18,000 filings were made. In spite of this significant increase, many filers outside the United States continue to find extending protection to the United States a frustrating, unpredictable and sometimes mysterious process, which incurs extra costs.

US practitioners who interface with the USPTO on a daily basis through direct (national application) filings, as well as responding to objections to incoming Madrid Protocol extensions, are less perplexed, as there are routine issues that arise in both Madrid Protocol extensions and US direct filings. It is also clear that most incoming Madrid Protocol filings encounter more formidable obstacles than direct filings, due to overly broad identifications of goods and services. These broad filings do not fit well within the US system, which is ultimately a use-based system designed to reflect a mark’s expected or actual commercial use, as opposed to a registration-based system. In some instances Madrid Protocol extensions – especially from owners in jurisdictions that allow the registration of class headings – can resemble a land grab rather than a genuine effort to protect a mark for an owner’s use or planned use in the United States.

Classification issues also often arise. In some instances the USPTO’s own classification of goods and services wanders off in a different direction from the classification of broadly worded goods and services under an international registration. Further, the classification for older international registrations being extended to the United States can differ from the current classification for the same goods and services. There are relatively easy solutions to this if the owner of an incoming application is forewarned. However, the uninitiated can be forced to compromise their coverage or delete goods or services due to classification issues.

Finally, some ongoing technical and miscellaneous issues continue to arise due to different fundamental approaches. These generally increase costs and are another source of frustration.

This article first addresses a variety of issues that arise in the USPTO, due to overly broad Madrid filings, with some proposed better practices. It goes on to review some of the oddities and practical solutions that classification issues present before considering a few miscellaneous issues that arise, along with some proposed solutions.

Identification issues

Most office actions for incoming international registration applications contain objections to identifications of goods and services. The USPTO requires specificity as to coverage and objects when identifications are vaguely worded. The US trademark system is designed to protect against consumer confusion and is driven by the use of trademarks for specific goods and services in defined commercial contexts. It is not intended to reward brand owners for coining new marks without use. Thus, US registrations reflect commercial realities or, in some instances, planned commercial endeavours. US registrations are not intended to provide the owner with extra protection to surround a brand or a reservoir of potential rights which an owner can dip into whenever it wishes. A related goods doctrine provides ample space around protected marks to help avoid confusion. For famous marks, the anti-dilution laws have been adopted not to reward owners, but rather to avoid a respected household name from being tarnished or blurred, and consumers and owners thus being deprived.

It is not entirely surprising that incoming filings often contain broadly worded or vague lists of goods and services in an effort to obtain strong rights. The irony is that such filers not only encounter lengthy office actions with numerous objections to the identifications, but also expose the entire application to charges of fraud or invalidity due to lack of bona fide intent to use the mark in the United States for many of the goods and services.

Section 66(a) of the US Trademark Act requires an applicant for an international registration to declare that it has a bona fide intent to use the mark in the United States on each of the goods and services recited in an incoming application for an international registration. This is a mandatory statutory requirement. WIPO Form MM18 – which must be signed by an authorised official of an international registration applicant – must accompany all extensions to the United States. The person signing must declare that the applicant has a bona fide intention to use the mark in US commerce in connection with the goods and services identified in the extension. Section 10(b) of WIPO Forms MM2(E) and MM3(E) enables the applicant to limit its list of goods and services in one or more designated jurisdictions. If the US extension is not restricted in this way, the US application is vulnerable to opposition or even cancellation after issuance on the basis of fraud and/or a lack of a bona fide intent. It is not uncommon for a Madrid Protocol extension to be opposed, especially by a US rights holder with an interest in a similar mark for overlapping goods and services, because the US rights holder knows that the foreign rights holder could not possibly have plans to brand the whole claimed broad list of goods and services.

Even after registration, a mark can be subject to cancellation in the event of an overly broad recitation. This leaves such a US registration vulnerable indefinitely, at least as to excess goods. Currently, under the ruling in Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v Pasquier DesVignes (107 USPQ2d 1930 (TTAB 2013)), absent evidence of fraud only those goods and services for which there was not such a bona fide intent to make use in the United States will be deleted.

In recent years the standard for a finding of fraud has relaxed and the chances of losing a registration altogether or losing coverage in a class entirely, where use was intended for at least some of the goods and services, has diminished (see In Re Bose Corp, 91 USPQ2d 1938 (Fed Cir 2009)). Because the pendulum has swung back and forth with respect to fraud cases over the years, a rights holder should not rule out the possibility of fraud standards tightening again. Whether such an attack will succeed under the prevailing standard is usually a moot point. This is because most cases settle in the early stages, due in part to the extensive discovery allowed and the expense of such proceedings.

A non-US rights holder which applies to extend its mark to the United States and ultimately receives a US registration encompassing goods and services for which it has no bona fide intent to use must understand that its registration provides a false sense of security. Disclosure that a US registration is vulnerable to attack can antagonise distributors, licensees and wholesale customers. It can also become a PR issue, prompting questions from investors, stockholders and other stakeholders. All of this can be avoided by limiting the coverage in the United States at the time that the extension is applied for. If done correctly, this can eliminate vulnerability. It will also reduce the number of identifications that an examiner requests to be specified or clarified further. In addition, it may often avoid blocking citations of marks which cover excess goods and services encompassed by a broader international registration filing. A broad filing might also prompt a third party to send a demand letter or oppose an application that it would have tolerated if coverage were narrower.

Specificity issues

Even if the applicant limits the coverage in a US extension to satisfy the bona fide intent-to-use requirement, language that is vague or too broad for the USPTO may still linger. Therefore, an application covering simply ‘software’ will prompt a requirement for more specificity. While an applicant might genuinely plan to use its mark on software and therefore survive a charge that it lacks a bona fide intent to use the mark for such items, providing sufficient specificity is key in a use-based system. What is the function of the software? Who are the intended users? In what field is it used?

For a first-time filer, not knowing exactly how much specificity the USPTO will require can be daunting. For example, ‘clothing’ is considered too broad, but ‘shirts’ are acceptable; so it is not necessary to further specify ‘knitted shirts’ or ‘cotton shirts’. Satisfying USPTO standards without becoming unnecessarily specific can be a balancing act, especially with respect to new technologies. To assist filers, the USPTO has a searchable online manual of acceptable identifications, which is useful (though not exhaustive). A particular item that is not in the online manual could still be considered sufficiently specific (see http://tess2.uspto.gov/netahtml/tidm.html). Further, by typing the class number (eg, 025) the user can review an entire class. This helps users to understand the level of specificity that is required.

Inconsistent treatment

Any frequent user of the US system has likely encountered inconsistent treatment between two applications. One examiner may be satisfied with an identification, while another might require further specificity or take an entirely different approach to a particular wording of the same identification. This is maddening to US practitioners and frustrating, wasteful, time consuming and very expensive for all concerned.

The USPTO has responded to this with a consistency initiative under which applicants can formally request consistent treatment (www.uspto.gov/trademarks/notices/consistency_permanent.jsp) – although this is not available to Madrid applicants with respect to identification issues. Despite this, some examiners of international registration extensions will accept identifications of the same owner’s approved applications if the inconsistency is politely pointed out. The consistency initiative can be relied on for other purposes – for example, if a blocking citation is not made for a mark covering certain goods and services, and is then made in a subsequent case encompassing the same items.

Filing for headings of the international trademark classes pursuant to the Nice Agreement in the United States is an invitation for third-party attack and will certainly prompt office actions requiring further specificity in the USPTO. However, an additional complication can be an unpleasant surprise for those that believe they are thereby locking up a class.

In particular, the USPTO does not consider a class heading to cover all goods and services which fall into that class. If, in response to an office action requesting more specificity, an international registration filer which has covered a class heading then tries to specify goods and services that do not fall within the ‘ordinary meaning’ of the actual words in the class heading, it will not be permitted to add those goods and services to the US application (In re Fiat Group Marketing & Corporate Communications SpA, 109 USPQ2d 1593 (TTAB 2014)). Again, in an effort to be overly broad, an international registration filer can be penalised and not rewarded. Therefore, goods and services of interest (not included in a class heading list) should be named specifically in the original national application. Those goods and services will then be included in the international registration and in the extension to the United States.

Classification issues

The USPTO and WIPO both adhere to the Nice Classification System; but because WIPO’s International Bureau determines classifications and the USPTO determines the standards for identifications, scenarios that defy logic and common sense can sometimes arise.

If goods and services are misclassified in US direct-filed applications, the applicant can simply move them to the correct class in a response to office action. An additional class can be added (if necessary to put the item in its correct class) if the applicant is willing to pay a fee for that new class. The original priority date is maintained. The only prohibition is that a US applicant cannot broaden the scope of the goods and services after making its application.

However, if an initial identification of goods and services is not definite in an incoming international registration application and the amended, more specific goods and services fall within a different class, then the applicant will be forced to delete those goods and services (see the US Trademark Manual of Examining Procedure, 1904.02(c)(iii)). While this is rare, it does arise, for example, with the extension of an older international registration which encompasses goods and services that were classified under an earlier version of the Nice Agreement.

In those instances where the identification of goods and services in the initial international registration application is sufficiently definite to satisfy the USPTO standards, but the International Bureau’s classification is different from the classification currently used by the USPTO, the applicant will not be forced to drop those items. The application can move forward with the acceptable identification of goods and services, but in the wrong classification.

Finally, in those cases where an international registration extension includes broadly worded goods and services in a class that might partially fall within the same class in the United States, after being amended, the applicant can amend its identification insofar as the goods and services fall within that class. Any other goods and services that might be encompassed by the broadly worded identification, but which fall into different classes, cannot be added either to that class or to additional classes, even if those classes were also included in the original extension.

In view of the above, the savvy applicant can use a list of specific goods or services (under USPTO standards) when it extends to the United States in the class controlled by the International Bureau. Then, even if the USPTO classifies such goods and services differently, it is bound to accept that identification in the class determined by the International Bureau. However, if the applicant files with insufficient specificity, the USPTO can force it to drop those goods and services and compromise the coverage.

Other issues that arise

Issues regarding entity type

The USPTO requires each applicant to specify its legal entity type and national citizenship or country of organisation or incorporation. This information can be provided at Section 2(f) of WIPO Forms MM2(E) and MM3(E), which note this requirement of the USPTO. Section 803.03(i) of the US Trademark Manual of Examining Procedure provides guidance on how to designate the entity of foreign applicants. This section also references a useful Appendix D with acceptable common foreign designations and their abbreviations (http://tmep.uspto.gov/RDMS/mashup/html/page/manual/TMEP/Apr2013/TMEP-800d1e349.xml).

This is sometimes the only question that comes up in an official action and is a source of unnecessary expense in US extensions.

Small errors in address or applicant’s identity

Direct applicants in the USPTO can readily correct errors or changes in an address and can even revise the name of the owner if it is simply a correction, as opposed to a change of entity (eg, inadvertently identifying an applicant by its former name or using ‘LLC’ instead of ‘Inc’, provided that the actual entity that is filing is not different). However, with the international registration system, such changes cannot be entered through the USPTO database. All of this must be dealt with through the International Bureau, which then transmits the changes to the USPTO, which can be extremely time consuming.

Supplemental register

A more serious issue pertains to marks that are not inherently distinctive, such as surnames and descriptive marks. US direct filers have two options when encountering a refusal on this basis. If they have a registration basis, such as use in US commerce or a home country registration, it is permissible to amend the application to the supplemental register. The other option is to establish acquired distinctiveness by submitting evidence of this. Madrid applicants do not have the option of amending the supplemental register. Their only option is to try to establish acquired distinctiveness. If that is not adequate, they will be forced to abandon the application, losing priority.

Amendments to drawings and marks

If a direct filer in the United States wants to make a minor amendment to its mark (eg, dropping a generic word, collapsing two words into one word or changing design details or colours), such changes are readily permitted as long as there is no “material alteration” of the mark. However, such amendments to the mark are not available under any circumstance to international registration filers. The USPTO will permit an international registration filer to amend a design mark only to add dotted lines (to disclaim rights in a design element) or otherwise to conform design mark drawings to US practice.

Further, while the Madrid system permits the filing of multiple design drawings in a single application, the US system does not, except in special situations with the filing of a petition to the director of the USPTO for an international registration applicant to request a registration with multiple views. Otherwise, an applicant must select one view in the group of trademark drawings from an international registration if the examiner agrees that it reflects the mark being registered.

Disclaimers and other formal and informal issues

Both direct filers and Madrid filers will encounter disclaimer requests as well as requests to:

  • claim colour;
  • provide transliterations and translations; and
  • describe designs in words.

These issues can be addressed by carefully completing Sections 8 and 9 of the WIPO forms in an application for an international registration extension to the United States. If the applicant chooses to bypass the disclaimer line, it will encounter an office action in the USPTO for any elements that require a disclaimer. Likewise, claims of ownership of prior US registrations of the same or similar marks owned by the same filer can be added only during US prosecution. So even with great care, the filer might still encounter official actions.

Conclusion

The Madrid Protocol has proven relatively efficient for extending the protection of most foreign-owned marks to the United States. Using the protocol can be more cost effective than filing national applications in the United States and elsewhere in the long run, due to the centralised nature of the system. However, Madrid filers that ignore or misunderstand the basis of the US system and treat a US extension like another check mark on a form can end up with a false sense of security, incur unnecessary expense or lose protection altogether. Further, in some instances (with surnames and descriptive marks where there is no acquired distinctiveness), Madrid is a wasted effort. However, a Madrid filer that understands the US system and spends some extra time on the initial paperwork will have made a wise choice.

Lawrence E Apolzon is partner at Fross Zelnick Lehrman & Zissu.David Ehrlich and Allison Ricketts assisted in the preparation of this article [email protected]

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