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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.