Before November 2, 2003, applicants domiciled outside the United States had only one option for seeking registration of a trademark in the United States: a national trademark application filing with the U.S. Patent and Trademark Office (USPTO). As of that date, however, when the United States implemented the Madrid Protocol, applicants domiciled outside the United States gained an alternative filing option for seeking registration of a trademark in the United States. Most practitioners recognize that a Madrid Protocol filing is tied to the basic application or registration for five years. This is a significant difference from a national U.S. filing, which is not tied to any prior filing; this difference is usually considered when a trademark holder is choosing between a Madrid Protocol filing and a national filing. This article explores the question who qualifies for Madrid Protocol filings and discusses multiple factors that influence the decision whether to file a national or a Madrid Protocol application, including some unique requirements of U.S. trademark law.
Who Qualifies for Madrid Protocol Filings?
To be entitled to seek registration of a trademark in the United States through a Madrid Protocol filing, the applicant must be eligible to apply for an International Registration by way of a national trademark office in a non-U.S. country or jurisdiction that is a contracting party to the Madrid Protocol. (Visit this link for additional information.) The United States may be designated for protection in the initial filing of the international application or in a separate later filing after the International Registration has issued. (USPTO Trademark Manual of Examining Procedure (TMEP) § 819.01(f).)
Costs of Madrid Protocol Filings Versus National Filings
One of the well-recognized differences between a Madrid Protocol filing and a national U.S. filing is that a trademark holder seeking a U.S. trademark registration does not have to hire U.S. counsel to file a U.S. trademark application. This results in lower initial costs with respect to attorneys’ fees than for a national U.S. filing. However, practitioners who are familiar with Madrid Protocol filings know that they rarely pass initial examination by the USPTO. Instead, the USPTO examiner frequently issues an Office Action, refusing registration because the identification of goods and services is indefinite. U.S. trademark law requires the identification of goods and services to specify common commercial names. TMEP § 1402.01.
Although U.S. counsel was not needed for the initial filing, once such an Office Action is issued it is almost always necessary to retain U.S. counsel to assist in overcoming a refusal. This is because the USPTO rules require that the trademark holder respond directly to the USPTO, and a legal response must be grounded in U.S. law, otherwise the U.S. application may not mature to registration. A trademark holder may respond directly to the USPTO, but this is not recommended unless the trademark holder is intimately familiar with U.S. trademark law. If the trademark holder is represented by an attorney, such as a non-U.S. attorney who filed the application for the International Registration, it is likely that the non-U.S. attorney is not even allowed under U.S. law to respond directly to the USPTO because of the requirements to be fulfilled in order to act as a representative in responding to a refusal under 37 C.F.R. § 11.14. If an attorney wishes to represent the trademark holder in filing a response, he or she must be a member in good standing of the bar in a state of the United States, or, in some limited circumstances, a Canadian attorney or patent agent. A non-U.S. or non-Canadian attorney can represent the trademark holder before the USPTO for the refusal only after seeking and obtaining reciprocal recognition (see 37 C.F.R. § 11.14(c)).
With regard to government filing fees, a trademark holder making a Madrid Protocol filing has to pay both (1) the basic fee of 653 Swiss Francs (approximately U.S. $730) for the International Registration and (2) 301 Swiss Francs (approximately U.S. $340) per class. The government filing fee per class for a Madrid Protocol filing is relatively comparable to the per-class filing fee of U.S. $325 for a standard national filing through the USPTO. However, the basic fee for the International Registration of a color mark (903 Swiss Francs) is higher than the basic fee for a non-color mark (653 Swiss Francs), and that represents an added cost of 250 Swiss Francs (approximately U.S. $280) in comparison with a national U.S. filing for a color mark.
In addition, as many U.S. practitioners know, the USPTO offers a lower-cost filing option, which provides an applicant with lower filing fees ($275 per class rather than $325 per class for a standard national filing). To be able to file a lower-cost application, the applicant must use standard identification of goods and services language taken directly from the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual). TMEP § 819.01. This option can result not only in large initial cost savings for applications that designate numerous classes but also in further cost savings at the examination stage, as this type of filing typically is not refused registration on the basis that the identification of goods and services is indefinite. However, a lower-cost filing is available only to trademark holders making national trademark filings with the USPTO; it not available to an applicant making a Madrid Protocol filing. TMEP § 819.01(a).
International Classification of Goods and Services (Nice Classification)
In advising a client whether to make a Madrid Protocol or a national filing, a practitioner should weigh the fact that the international classification of goods and/or services in Madrid Protocol filings cannot be changed from the classification assigned to the goods/services by the WIPO International Bureau in the corresponding International Registration against the fact that a national filing is not limited in the same manner. (37 C.F.R. § 2.85(d); TMEP §§ 1401.03(d), 1904.02(b).) In a majority of Madrid Protocol filings, this is not a problem, but in a few cases this may limit the applicant’s ability to cover the goods/services of interest. As an example, the phrase “services for providing food” is part of the class heading of Class 43 of the Nice Classification. An argument can be made that “bakery services” are “services for providing food,” as baked goods are food products. However, in the United States, “bakery services” does not fall within Class 43, but it may fall in Class 35 or 40 depending upon the nature of the services: “retail bakery shops and online retail bakery shops” fall within Class 35 in the United States. and “bakery services, namely, the manufacture of bakery products to order and/or specification of others” falls within Class 40. See USPTO ID Manual. As such, an applicant in a Madrid Protocol filing that includes the phrase “services for providing food” in Class 43 cannot amend that description to include the narrower phrase “retail bakery shops” or “bakery services, namely, the manufacture of bakery products to order and/or specification of others,” because these services are not classified in the United States in Class 43. On the other hand, the applicant in a national U.S. application could amend the national application to add another class to include the bakery services of interest, provided those services are deemed by the USPTO to fall under the broader phrase “services for providing food.”
Supplemental Register Not Available in Madrid Protocol Filings
When considering whether to make a Madrid Protocol filing, the applicant should consider the inherent distinctiveness of the mark to be registered. Specifically, trademarks that are not eligible for registration on the Principal Register can instead be registered on the Supplemental Register, provided the trademark was filed via a national U.S. filing. An amendment to convert the application to an application to register the mark on the Supplemental Registeris not available for a Madrid Protocol filing.
Most trademarks registered in the United States are registered on the Principal Register, which gives trademark owners the strongest trademark rights in the United States. Certain marks that are not eligible for registration on the Principal Register, but are nevertheless capable of distinguishing an applicant’s goods or services, such as merely descriptive marks, primarily geographically descriptive marks and marks that are primarily merely surnames, may be registered on the Supplemental Register. TMEP § 816.04. While trademarks registered on the Supplemental Register do not enjoy the same level of protection as trademarks on the Principal Register, a Supplemental registration does provide advantages that would not otherwise be available to owners of common law trademarks. For example, a trademark registered on the Supplemental Register allows for use of the ® symbol, and it may be cited by an examining attorney as the basis of a likelihood-of-confusion refusal under Section 2(d) of the U.S. Trademark Act, 15 U.S.C. § 1052(d), and thus may block the registration of the same or a similar mark for related goods and/or services.
A mark covered by a Madrid Protocol filing cannot be registered on the Supplemental Register. 15 U.S.C. § 1141h(a)(4); 37 C.F.R. §§ 2.47(c), 2.75(c). Furthermore, if a Madrid Protocol filing is rejected for registration on the Principal Register, and would otherwise be registrable on the Supplemental Register had it been a national U.S. filing, the Madrid Protocol filing cannot be transformed into a national U.S. application on the basis of the rejection. Transformation is allowed only in the event of an Article 6(4) cancellation of the International Registration—that is,cancellation at the request of the office of origin owing to the cancellation of the basic application and/or registration. Transformation is not available if the extension of protection is refused. (15 U.S.C. § 1141j(c); 37 C.F.R. § 7.31.) As such, if the applicant in a Madrid Protocol filing cannot register its mark because it is not registrable on the Principal Register, he or she would have to file a new national U.S. application to register the mark on the Supplemental Register.
Assignment of Madrid Protocol Filings Is Limited
There is no limitation regarding to whom a national U.S. filing may be transferred or assigned. However, a Madrid Protocol filing may be assigned only to a person who is a national of, is domiciled in or has a bona fide and effective industrial or commercial establishment in a country that is either (a) a contracting party to the Madrid Protocol or (b) a member of an intergovernmental organization that is a contracting party to the Madrid Protocol. TMEP § 1904.06.
Amendment of Mark Not Permitted in Madrid Protocol Filings
Another notable difference between a Madrid Protocol filing and a national U.S. filing is that in a national U.S. filing, the trademark owner may amend the mark as filed provided the amendment is not a material alteration. “The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.” TMEP § 807.14 (citations omitted); see 37 C.F.R. § 2.72. In contrast, U.S. trademark law prohibits any amendment of the mark in a Madrid Protocol filing, even at the time of a Declaration of Use under Section 71 of the U.S. Trademark Act, 15 U.S.C. § 1141k. TMEP § 1613.13(a).
Renewal of International Registration Required for Madrid Protocol Filings
Another thing practitioners should consider when advising a client which application to file is that two separate renewal filings in two different systems on two different dates must be made to maintain a Madrid Protocol registration, while one combined filing in the same system and on the same date may be made to maintain a U.S. national registration. While the renewal of an International Registration also renews the trademark registration rights in each country that is designated in the International Registration, including the United States, a Madrid Protocol filing still requires the filing of a Declaration of Use or Excusable Non-Use every ten years after the U.S. registration date in order to keep the U.S. registration in force. This results in the owner of an International Registration designating the United States having to not only make Declaration of Use or Excusable Non-Use filings with the USPTO every ten years after the U.S. registration date, but also calendar and file a renewal with WIPO to continue to protect its rights in the International Registration in which the extension of protection to the United States was made. On the other hand, the owner of a U.S. registration that was filed via a national U.S. application can make one combined renewal and Declaration of Use or Excusable Non-Use filing every ten years after the U.S. registration date.
In sum, while seeking trademark registration in the United States via a Madrid Protocol filing may be a cost-effective option for certain applicants domiciled outside the United States, it is not beneficial in all situations given the requirements of U.S. trademark law. For example, the owner of a mark likely to be refused registration in the European Union as descriptive might prefer a national filing over a Madrid Protocol filing. This way, if the application is refused as descriptive in the United States, it can be amended to an application to register the mark on the Supplemental Register. Such an amendment is not possible with a Madrid Protocol application. By understanding the requirements described above, a non-U.S. trademark holder can decide whether a national or a Madrid Protocol filing better fits its circumstances.
Need to understand more about the Madrid Protocol? Consult the INTA members-only resource Practitioner’s Guide to the Madrid Agreement and Madrid Protocol
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
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