How to Avoid a Madrid Protocol Trademark Registration Refusal in the United States

By Eric Perrott, Esq.

The Madrid Protocol is an international filing system that allows members of the Protocol to file in multiple jurisdictions using the same, streamlined system. Although this system is often cheaper and easier than filing in each country individually, there are a number of common issues that a Madrid Protocol applicant can run into when it files to extend its protection into the United States. While some of these obstacles occur during the application process, such as ownership issues, identification issues, or likelihood of confusion issues, others occur AFTER the registration is granted, such as abandonment and renewal deadlines.

Effective use of the Madrid Protocol and a proper understanding of United States trademark law can help foreign trademark owners establish their brands in the US. Below are tips to avoid a refusal of your U.S. trademark application filed through the Madrid Protocol.

1. Properly identify the owner of your trademark in a Madrid Protocol application

Many Madrid Protocol applications do not have all of the ownership information entered on the record.  When completing the Madrid Protocol filing the attorney completing the form should be careful to properly insert all the ownership information.  Our firm sees a significant amount of refusals of Madrid Protocol filings simply because the ownership information was not completed correctly. The U.S. Patent and Trademark Office (USPTO) requires an applicant to include the owner’s name, state/country of entity formation or citizenship, entity type (if the owner is an organization), and mailing address in the trademark application.

An example of a USPTO ownership refusal would be the following section within an Office Action:

“INDEFINITE ENTITY INFORMATION – CLARIFICATION REQUIRED”

2. Ensure the goods and services listed in a Madrid Protocol application are not overly broad

Many Madrid Protocol applications are overly broad when it comes to the identification of the goods or services being offered under the mark.

One of the most common reasons a Madrid Protocol trademark application is refused in the United States is because the description of products/services used by the applicant is overly broad.  The United States requires that the identification of services be clear and narrow (to a point).  The standard applied by the USPTO is stricter than most other countries around the world.  Therefore, while a particular identification of goods/services may be acceptable in your home country, it very likely needs to be narrowed for the U.S. application.

Furthermore, an applicant must either currently use or have a “bona fide intent to use” the mark in commerce in the U.S. for each item identified in the application. This means, the applicant must have evidence of steps taken towards commercial use of each item within the application’s identification of goods/services in the U.S. If they don’t, the application (or even resulting registration) can be challenged on the grounds of “lack of bona fide intent to use the mark in U.S. commerce.”

3. Assess the chances of a similar US trademark causing a refusal or conflict

The Madrid Protocol is a basis for registering a trademark in the U.S. but it does not guarantee a registration. Once filed, Madrid Protocol applications are given the same scrutiny as regular applications and will be denied if there are prior registrations for trademarks that are confusingly similar to the applied-for trademark.

Trademark owners should know the general risk involved with the use and registration of their trademark in the U.S. This is true for both regular applications AND Madrid Protocol applications. By knowing this risk, trademark owners (with their attorneys) can carefully craft an application to avoid potential overlap with similar marks, or employ other strategies to reduce the risk of receiving a refusal based on the registration of another mark.

Conducting a comprehensive trademark search in the United States prior to filing a Madrid Protocol application can be immensely helpful in crafting a proper US trademark filing strategy. Although the USPTO’s Trademark Electronic Search System (TESS) is available to search for trademark applications and registrations, this is not a comprehensive list of potentially conflicting marks.  An experienced US trademark attorney can conduct a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before filing an application. This type of search is important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered (US law grants rights in state-based registrations and “common law” use of a mark) and therefore would not show up in a search of the US federal trademark register. Also, the USPTO considers sight, sound, meaning and overall commercial impression when analyzing an application for a “likelihood of confusion” between marks, so an exact search of the database will not show the entire picture.

An assessment of the “likelihood of confusion” between two marks is based not only on whether the names are similar, but also on whether the goods or services are similar. It’s possible for an applicant to receive a registration refusal based on the likelihood of confusion between an applied-for mark and an already registered mark, if the goods and services within the two applications overlap.

When crafting an identification of goods/services,  an applicant should consider whether the identification truly reflects only the goods or services used or intended to be used in commerce in the U.S. Drafting a narrow identification of goods/services may prevent a USPTO examiner from flagging an application for likelihood of confusion based on a Madrid Protocol applicant’s inadvertent overlap with a registered mark’s goods or services.

4. Ensure continued “use” of a trademark in the United States to avoid an abandonment claim

The Madrid Protocol allows the applicant to register a mark in the U.S. with a bona-fide intent to use the mark. However, the mark runs the risk of being “abandoned” and the registration cancelled if the applicant is unable to prove that the mark is being used in commerce in the U.S., or does not file the appropriate renewal documents (see below on renewal deadlines.)

Under U.S. law, a trademark registration is presumed to be abandoned if the mark is not in use in commerce for three consecutive years after the registration issues. If three years have passed, the registrant must have an excusable reason for not using the trademark in the U.S., such as a major factory overhaul, trade embargo, or something similar. Decreased demand, however, is not a reason for excusable non-use.

Of utmost importance is to ensure the mark is “continually” used in commerce, and such use is not interrupted for an extended period of time without a clear intent to resume use.

5. Be aware of renewal deadlines for US trademarks registered through a Madrid Protocol application

Applications filed under the Madrid Protocol must adhere to certain renewal deadlines to maintain the trademark registration. If these renewal documents are not filed, the registration will be abandoned.

The first renewal under a Madrid Protocol registration, known as a “Declaration of Use and Excuseable Non-use under Section 71” filing, is due between the fifth to sixth year following the initial registration date. Alternatively, a Madrid Registrant may file a “Combined Declaration of Use and Incontestability under Sections 71 and 15 if it has continuously used a mark registered on the Principal Register in commerce for five consecutive years after the date of registration. Marks registered on the Supplemental Register do not qualify for a Section 15 incontestability filing.

The second renewal filing is due ten years from the anniversary of the initial registration date. Subsequent renewal filings are due every ten years thereafter. The U.S. government will not remind a Registrant of upcoming renewals and does not grant extensions (aside from a six-month grace period which requires additional fees). The responsibility is on the Registrant, and if a renewal is missed, the registration will automatically be cancelled.

Conclusion

Importantly, only U.S. attorneys can respond to Office Actions on behalf of international clients. Even if an applicant’s local attorney may have filed the original registration in the home country, a foreign attorney cannot make filings in the U.S. and cannot provide legal advice on U.S. applications. Madrid Protocol applicants must either file themselves, without advice from a foreign attorney or agent, or must hire a U.S. attorney.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.