INTA Daily News

More than 300 people received expert guidance from the U.S. Patent and Trademark Office (USPTO) on May 2, 2004, in a session dedicated to international filing strategies for the Madrid Protocol. 

Senior office staffer Sharon Marsh spoke to the session audience in the Marriott Imperial Ballroom B about ways to ensure Protocol applications are approved at every stage.

“Review your applications very, very carefully,” warned Marsh, “because they will be examined by many authorities – the USPTO, the International Bureau at the World Intellectual Property Office and each of the national offices in the application.”

According to Marsh, there are a number of reasons why applications can be rejected; most of them due to human error. 

In particular, applicants should ensure that the trademark owner’s name on their international application is identical to the name on the U.S. application or registration. Even leaving out “Inc,” for instance, would lead to rejection. And trademark illustrations on international applications must be in color, regardless of how they appear in the U.S. application. If the U.S. application features a black and white image, then both the black and white and the color versions should appear on the international application. 

Despite the dangers, the majority of international applications have been successful. Using the latest available figures, taken just before the Annual Meeting began, Marsh revealed that the USPTO had received 761 applications from U.S. owners seeking international registrations. Of these, 634 had been certified and sent to the International Bureau, while 119 were denied. 

Also in the session, P. Jay Hines of Washington, DC law firm Oblon Spivak McClelland Maier & Neustadt provided statistics of international applications that the USPTO had received by March 1. 

The figures showed that the top three countries where U.S. owners were seeking protection during this period were Australia, China and Japan. Of U.S. companies seeking international protection, Caterpillar, Gillette and Playgirl featured prominently. 


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