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Tuesday Dec 15, 2009

Madrid Protocol: Challenges Facing Trademark Filers

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Switching gears this week to the “T” in USPTO, one issue trademark practitioners will be dealing with soon is the filing of affidavits for a registered extension of protection under the Madrid Protocol. The first affidavit will come due between February 1, 2010, and February 1, 2011.  Absent a legislative change to treat these affidavits the same as those for other trademark registrations (more on this below), owners and practitioners will need to take extra special care to adjust their docketing procedures and systems and verify all filing deadlines in these Madrid Protocol cases.

As trademark practitioners know, the requirement of submission of affidavits of use in commerce or excusable nonuse is needed to maintain all trademark registrations and to help clear the register of inactive marks. The requirements for these affidavits, however, differ for registered extensions of protection filed under the Madrid Protocol.

The current statutory scheme neither affords them the same “grace periods” for late filing, nor does it provide the ability to correct deficiencies after the due date for registered extensions of protection under the Madrid Protocol. For all other U.S. trademark registrations, the statute provides a six-month grace period and the ability to correct deficiencies.  For registered extensions of protection, however, the statute provides no grace period for the first affidavit, and a shorter three-month grace period for subsequent affidavits.

The USPTO is well-aware of the challenges facing trademark owners and practitioners in adjustments to docketing procedures and systems, as well as costly adjustments to the USPTO workflow and systems if this disparity is not amended. The USPTO supports legislative changes to rectify these discrepancies and treat registered extensions of protection consistently with other U.S. trademark registrations.

While looking forward to legislative changes, practitioners and trademark owners need to start thinking now about how to effectively manage the registered extensions of protection, and how to avoid inadvertent cancellation while the legislation remains pending. A good starting point would be reviewing registration portfolios and flagging registered extensions of protection issued in 2005. I also strongly encourage filers to confirm the accuracy of all filing deadlines for registered extensions of protection, and to file as early as possible during the statutory period. An early filing minimizes the impact of oversights and errors that may occur in last-minute filings.

I look forward to working together with trademark owners and practitioners to address these important issues.


I would like to draw to your attention the challenges USPTO has not addressed in the age of instant information; That is the number of anomalies in recent USPTO decisions where (I will not state specific cases) USPTO attorneys have allowed marks to be approved and other marks that are identical in circumstance are refused (nothing I am personally involved in, part of my masters course) I have looked at innumerable cases and even in the last three months there is a case where the exact same trademark application was approved by two independent USPTO attorneys and refused by another. It is my opinion that USPTO should know that clarity and consistency of treatment should be imperative ?

Posted by Jonathan on March 04, 2010 at 03:01 AM EST #

Ref: Posted by Jonathan on March 04, 2010 at 08:01 AM EST I agree. Case law cannot be denied in 2010 when technological communications have ensured all the facts are clear and available to examining attorneys. Precedents set by past cases are the very foundation stone of the law and used as references relevant to trade mark law as laid down in Acts of Congress and previously decided court cases. It would have been historically acceptable for the attorneys decision to be correct without recourse to a tribunal on the basis that two wrongs do not make a right. That cannot be justifiable argued over the last five years with information accessible to all.

Posted by Graham on March 12, 2010 at 08:15 AM EST #

Where can I get USPTO statistics on the number of inbound Madrid applications from foreign applicants applying to extend protection into the US; the number of Madrid international applications filed by US applicants; and the number of outbound Madrid applications filed by US applicants for extension of protection outside the US?

Posted by Tony Venturino on March 16, 2010 at 08:15 AM EDT #

I would interested in the Director's Response to Posted by Graham on March 12, 2010 at 01:15 PM EST # As I believe the USPTO must answer this type of anomaly before moving on to questioning other outside commercial aspects. The USPTO has a duty of care and dam built by individual responsibility within an institution is not acceptable in today's information highway, The appeal decision costs will be challenged time and again in the future .

Posted by Christine Adene on March 18, 2010 at 12:29 PM EDT #

Hello, I am also interested to reading the reply to the above comments. I picked the thread up on Google and with the this dating back to; Tuesday Dec 15, 2009. Will David reply ? I think the comment re: Posted by Graham on March 12, 2010 is quite incisive and relevant to today.

Posted by Nick Betts on March 28, 2010 at 05:03 AM EDT #

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