USPTO Seeks User Comment on Proposed Madrid Protocol Revision

The Office is seeking comments by June 30, 2010 on the proposal described below. The Office prefers that comments be submitted by e-mail to Comments may also be submitted by mail to Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, attention Amy Cotton. Please direct any questions to Amy Cotton at (571) 272-9300.

United States Patent and Trademark Office

Madrid Protocol Revision

In 2007, the Madrid Assembly of the World Intellectual Property Organization (WIPO) agreed to an ongoing mandate to the Madrid Working Group to analyze issues relating to the further legal development of the Madrid System. The Madrid Working Group, as part of the discussions on the Legal Development of the Madrid System, is evaluating whether further improvements to the Madrid System could and should be made. One particular concept has arisen in these discussions: eliminating the requirement for an application or registration in the trademark owner's Office of origin ("basic mark"). This revision of the Madrid Protocol, which would entail a Diplomatic Conference, could possibly serve to provide benefits for U.S. stakeholders and increase U.S. use of the System. The United States Patent and Trademark Office (USPTO) would like to hear the views of U.S. stakeholders regarding this proposal.

With this revision, three main features of the system would be impacted:

1) Limitations on the international application by virtue of the scope of the basic application/registration would be eliminated;

2) "Ceasing of effect" (cancellation of the basic application/registration) or "dependency" would no longer be a factor; and

3) The level of services provided by national trademark offices would likely change for Madrid files.

Limitations on the International Application

Currently under the Madrid System, a mark may be the subject of an international application only if it has already been registered with the Trademark Office (referred to as the Office of origin) of the Contracting Party with which the applicant has the necessary connections (i.e., a natural person or legal entity having a connection, through establishment, domicile, or nationality, with a Contracting Party to the Agreement or the Protocol). However, where all the designations are effected under the Protocol, the international application may be based on a mere application for registration filed with the Office of origin. An international application must be presented to the International Bureau of WIPO through the intermediary of the Office of origin.

From a U.S. perspective, the requirement that an international application must match the basic mark means that U.S. nationals are subject to the U.S. identification practice throughout the Madrid System. In other words, whatever identification of goods/services the applicant must adopt to satisfy U.S. law and practice requirements in the basic mark is the identification of goods/services that the U.S. national is subject to in all other Madrid Contracting Parties, regardless of whether those national offices require the same specificity of identifications as the United States.

Eliminating the requirement of a basic mark means that U.S. nationals could file an international application with a broader identification of goods/services than would be accepted in the United States. Ultimately, the identifications in the various extensions of protections would be narrowed, or not, depending on the domestic law and practice of each Madrid Contracting Party.

Another factor to consider is that the requirement for a basic mark places constraints on applicants from countries with different languages and character sets. Because the basic mark and the international application must "match," applicants cannot use their basic mark to file an international application for the same mark in a different language. Applicants are unable to modify the marks registered in their country of origin to fit the language of the country to which they are applying through the Madrid System. Moreover, if an applicant files an international application for a mark in the language to be used in export markets but the applicant does not use the mark in that language in the applicant's own country, the applicant may risk rejection of the basic application or cancellation of the basic registration based on non-use, resulting in cancellation of the international registration as well.

Eliminating the basic mark requirement would, presumably, make it easier for applicants to file for protection for export marks, that is, marks in languages other than their own, and to take advantage of the Madrid filing efficiencies and registration maintenance features (e.g., consolidated renewal and change of address) for those marks. As a result, more trademark owners might use the Madrid system, and additional countries might determine that the Madrid System is useful for their industries and join the Madrid System.

Impact of Ceasing of Effect/ Dependency

Under the Madrid System, the international registration is "dependent" on the status of the basic application or registration ("dependency"). If the basic mark "dies" within the first five years of the international registration, then the international registration and all of the extensions of protection in the designated Madrid Contracting Parties also "die." Under the Madrid Protocol, the owner has the option of "transforming" the designated extensions of protection into national applications, but the owner must pay additional fees, independent of the Madrid System, and any resulting registration is a national registration that cannot use the Madrid maintenance features such as centralized renewal and assignment recordation.

The dependency principle means that an opposer can prevent the effects of a registrant's international registration by challenging the basic mark within the first 5 years of the international registration rather than having to challenge each individual national extension of protection. This "central attack" feature can be either a blessing or a curse, depending on whether the trademark owner is the plaintiff or the defendant. And while transformation is an option, it is a relatively expensive and time-consuming option.

If the requirement for a basic mark is eliminated, both dependency and the current "central attack" feature of Madrid System would also be eliminated. The international registration would no longer be "dependent" on the basic mark, and therefore the "central attack" feature whereby canceling the basic mark voids the extensions to all designated Madrid countries, would also be eliminated.

Another result of eliminating the basic mark requirement would be that the "gatekeeper" function performed by the national offices in examining the application on which the international registration is based would be eliminated. For example, currently, if the Office of origin refuses to register a mark because it is the generic name for the applicant's goods, the basic application dies, and as a result the international registration and any Madrid requests for extension of protection to other countries die as well. This would no longer happen if the requirement for a basic application or registration were eliminated.

Level of Services

History tells us that the Madrid Agreement was developed as a European-based reciprocal rights treaty: registration in the country of origin was accepted--no questions asked--by other European trademark offices. Of course, the development of the Madrid Protocol was designed to allow non-European countries to join the system that did not necessarily subscribe to the reciprocal rights concept. For example, the United States implemented the Protocol by not treating the Madrid System as a reciprocal rights system, but instead by treating the Protocol as an alternative basis for registration. This means that in the United States, except for the difference in basis, Madrid files are examined just like national or Paris Convention applications. Madrid applicants receive the same services as nationally-filed applications and pay the same fees.

In Madrid Working Group discussions, users have indicated that in some Madrid Contracting Parties the national office continues to rely on the examination and formalities review of the basic mark in the applicant's Office of origin. Madrid filings are granted protection with little or no examination by the national office, and, as a result, the processing cost to the national office is less than national or Paris Convention filings, which require full examination.

Eliminating the basic mark requirement would eliminate, for purposes of subsequent examination, any efficiencies gained from the initial examination of the Office of origin. Presumably, then, Madrid files would be in much the same position as directly-filed national applications, and theoretically should receive the same level of services (whatever that may be) as national applications, reducing or eliminating any disparate treatment for applicants.

However, eliminating the basic mark requirement could also result in eliminating the assistance (whatever that may be) provided by the Office of origin regarding the filing and/or translation of international applications. This result could be addressed if the national law provided for filing the Madrid international application via the Office of origin, rather than directly to WIPO.

Request for Comments

The USPTO would like to hear the views of U.S. trademark owners and practitioners by receiving your responses to the following questions:

  1. Have you ever been unable to use the Madrid Protocol because you were refused registration at the USPTO but likely would not have faced the same refusal in other countries (e.g., blocking registration, surname refusal, etc)?
  1. Since your Madrid registration is based on your U.S. registration - and you are limited to the identification of goods and services in your U.S. registration - have you had to file direct applications in some other countries in order to apply for registration with a "broader" identification of goods and services than what was in your U.S. basic registration?
    1. How often does this happen?
    2. Has this kept you from using the Madrid System in general? Sometimes?
    3. If the scope of the extensions of protection in other Madrid members were not limited by the U.S. basic application/registration identification of goods/services, would you be more likely to use the Madrid system?
  1. Do you find that you more often file an international application based on a U.S. application or a U.S. registration?
    1. If you file more international applications based on U.S. registrations, is it because you are concerned about the impacts of the dependency period (i.e., that the extensions of protection will be cancelled if the basic application is ultimately refused)?
    2. Are there any other reasons?
    3. If you file more international applications based on U.S. applications, have you ever "lost" goods or services[1] in designated Contracting Parties due to the USPTO examination requirements for specific IDs in your basic application at the USPTO?
  1. Do you use (or threaten) central attack against others' basic marks?
    1. How often?
    2. Have you raised the possibility and impact of central attack in settlement talks?
  1. Has central attack been used (or threatened) against your basic mark?
    1. How often?
    2. Has the possibility and impact of central attack been raised in settlement talks?
  1. How important is the central attack feature of the Madrid System to you or your clients?
  1. If you own a Madrid registration based on a U.S. basic mark application or registration, but the U.S. basic mark dies during the dependency period, have you used the transformation procedure available under the Madrid Protocol to transform your extensions of protection in other Madrid Members into national applications?
    1. How many times have you used it?
    2. Was it difficult?
    3. Was it expensive?
    4. Was there a procedure in place to use?
  1. Do you have a significant number of marks that you do not use in the United States but you do use in other countries (e.g. because they are in different languages)?
    1. Currently, the basic mark requirement means that the Madrid System is unavailable for obtaining protection for marks used in other countries but not used in the United States (e.g., export marks). If the basic mark requirement were eliminated, would you be likely to use the Madrid System for export marks?
  1. Have you ever relied on the replacement feature[2] of the Madrid System?
    1. If not, did you maintain two registrations - one national registration and one extension of protection?
    2. Why did you maintain both? Were you concerned that the extension of protection would be cancelled during the dependency period if the basic mark were cancelled?
    3. Would loss of the replacement feature be acceptable to you? Note that eliminating the basic mark and the dependency period would make the extension of protection less vulnerable to cancellation if the basic mark is attacked.
  1. If your home country is the United States and the basic mark requirement were eliminated, would you be more likely to use the Madrid System to file for protection in the United States (i.e., "self designation")? Note that this would permit centralized maintenance (including renewal, name changes, assignment recordation) of all trademarks in your portfolio, not just extensions of protection in other countries.
  1. If you don't currently use the Madrid System, would eliminating the basic mark requirement get you to use the Madrid System? If not, what other changes to the Madrid System would it take to get you to use it?
  1. If you use the Madrid System, would you use it more than you do currently if the basic mark requirement were eliminated? If so, how much more (e.g., would it likely replace your reliance on Paris Convention and other foreign filing mechanisms, or would it not significantly change your practice)? If not, what other changes to the Madrid system would it take to get you to use it?
  1. If not the Madrid System, what other type of international trademark filing system would you be interested in? What features or functionality would you like to see it have?

[1] When goods or services are divided into multiple or different classes in your U.S. basic application, you may add classes to your U.S. application, classes that are not in your international registration because you filed the international application before your U.S. application was examined. In this situation the Madrid System does not permit you to add any new classes to the request for Extension of Protection in designated Contracting Parties.

[2] Replacement: If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States are: (1) owned by the same person; (2) identify the same mark; and (3) list the same goods/services, then the extension of protection shall have the same rights as those accrued to the United States national registration at the time the certificate of extension of protection issues.