Posted: 04/2010 Pitfalls of Madrid Protocol exposed by US requirements

**UPDATED**

As more trademark owners use the Madrid Protocol to extend their rights into foreign jurisdictions, the Protocol’s advantages and shortcomings are coming to light. One pitfall of particular consequence for holders of International Registrations who own registered extensions of protection to the United States is about to surprise the unprepared.

UPDATE, March 17, 2010

 

U.S. Trademark Law Amendments – Madrid Protocol

President Obama has rendered my previous post on Section 71 moot. This is a good thing. Effective March 17, 2010, Madrid Protocol registrants now have the same periods within which to file Declarations of Use (or Excusable Nonuse) as other U.S. trademark registrants. Holders of international registrations with an extension of protection to the U.S. under the Madrid Protocol must file Declarations of Use (or Excusable Nonuse) as follows:

Requirements in the First Ten Years after Registration

1) Declaration of Use (or Excusable Nonuse) between the 5^th and 6^th years after U.S. registration date.

2) Declaration of Use (or Excusable Nonuse) between 9^th and 10^th years after the U.S. registration date.

Requirements in Successive Ten-Year Periods

1) Declaration of Use (or Excusable Nonuse) between every 9^th and 10^th-year period, calculated from the U.S. registration date.

Grace Period Filings

The above declarations may be filed within six months after the deadlines listed above with the payment of an additional fee.

Renewals

Renewal of an underlying international registration must still be made at the International Bureau of the World International Intellectual Property Organization (WIPO), prior to the expiration of each ten-year term of protection. A notice regarding these changes is now being included with newly issued certificates of registrations. A copy of the notice can be seen here.

The United States imposes strict use requirements in connection with the maintenance and renewal of trademark registrations and extensions of protection. These requirements differ greatly between registrations resulting from applications under §1 and §44 of the Trademark Act, and those resulting from extensions of protection under the Madrid Protocol (§66A).

An owner of a U.S. trademark registration must file a §8 affidavit or declaration of continued use or excusable nonuse on or after the fifth anniversary and no later than the sixth anniversary of the date of registration, and within the year before the end of every ten-year period after the date of registration. The registrant may also file the §8 affidavit within a grace period of six-months after the expiration of the deadline, provided a surcharge is paid.

However, the §8 use requirements do not apply to registered extensions of protection pursuant to the Madrid Protocol. The use requirements for extensions of Protection are distinct from the requirements for registrations under §1 and §44, and merit close attention.

Under §71 of the Trademark Act, a registered extension of protection to the United States will be cancelled, unless the holder of the international registration that is the basis of the extension of protection periodically files §71 affidavits of use in commerce or excusable nonuse with the USPTO. 37 C.F.R. §7.37 sets forth the requirements for a §71 affidavit. These affidavits must be filed:

1. Between the fifth and sixth year after the date on which the USPTO issues the certificate of extension of protection; and
2. Within the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a three-month grace period with an additional surcharge.

§71 provides a three-month grace period for filing the ten-year §71 affidavit with an additional surcharge, but there is no grace period for filing the six-year §71 affidavit.

Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period.

§71 affidavits cannot be filed until five years after the USPTO registers an extension of protection. The first §66A extension of protection to the United States was registered on February 1, 2005, consequently, the earliest date that a filing of a six-year §71 affidavit can occur is February 1, 2010.

A Plan of Action

• Be vigilant. Owners of extensions of protection to the United States under the Madrid Protocol are not only required to renew their International Registrations with the International Bureau, but they must also file §71 affidavits with the USPTO at specified times.
• File a six-year §71 affidavit between the fifth and sixth year after the registration of the extension of protection issued (Remember: No grace period).
• File a ten-year §71 affidavit during the six-months preceding the end of every ten-year period following the date of issuance of the extension of protection, or within the three-month grace period.
• Be aware of fraud issues related to affidavits of use. The mark must be in use with all of the goods or services identified in the extension of protection at the time the §71 affidavit is signed or there must be excusable nonuse. The §71 affidavit must specify the goods or services being deleted from the registration, if the affidavit covers less than all the goods or services or less than all the classes in the registration.
• And please, don’t forget that substantive trademark rights arise in the United States through actual use of a mark. Failure to use a mark can easily result in the loss of rights and the cancellation of registrations.

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