Protection Issued Under Madrid Requires U.S. Maintenance Filings

  • All U.S. protection, namely U.S. registrations that issue under Madrid from International Registrations (IR) still require that separate maintenance filings be filed for those U.S. registrations in the U.S. Patent and Trademark Office (USPTO). A single renewal filing at WIPO will not be sufficient to maintain the U.S. protection.
  • The maintenance filing requirements and dates of filing are similar (but not identical) to those required in all other U.S. trademark registrations. At present, the final due dates for the maintenance filings for IR-based U.S. registrations are slightly different than the maintenance dates for regular U.S. registrations so care must be taken in the docketing of Madrid-based U.S. registrations. (The U.S. Congress may enact legislation that reconciles these maintenance dates, but such a law has not yet been passed.)
  • All U.S. registrations that issue from an IR must have an affidavit of use filed during the sixth year of registration (calculated from the U.S. registration date, not the Madrid International Registration date). The filing window is as follows: one (1) year total beginning on the fifth anniversary date of registration (there is no grace period). 15 U.S.C. §1141k(a). (By contrast, for regular U.S. registrations, the filing window is 18 months beginning on the fifth anniversary date of registration.)
  • All U.S. registrations that issue from an IR must also have an affidavit of use filed every 10 years after registration (calculated from the U.S. registration date).& The filing window is as follows: nine (9) months total beginning six months before each 10th anniversary date of registration. 15 U.S.C. §1141k(a). (By contrast, for regular U.S. registrations, the filing window is 18 months beginning one year before each 10th anniversary date of registration.)
  • Failure to file the above declarations of use within the respective filing windows will result in the irrevocable cancellation of the U.S. protection that issued under the Madrid Protocol.

The Madrid Classification of the Goods and Services Cannot Be Changed

  • The original classification of a good or service set in the initial Madrid application cannot be changed in the USPTO. However, the USPTO still applies to Madrid-based applications the same definiteness and specificity requirements as to how the goods/services are set forth that it applies to all U.S. applications. In some instances this may narrow the goods or services in the U.S. Madrid application in ways that the applicant did not anticipate.
  • For example, if the initial Madrid application is accepted at WIPO with the recitation of "building materials" in Class 19, in the resulting U.S. application the USPTO will likely find that phrase too general and require that the building materials be specified in more detail. In the instance of a Madrid-based application, in response the applicant can only identify specific building materials that fall in Class 19. The applicant cannot, for example, amend this statement to include building materials containing metal (Class 6), fiberglass or plastic building materials (Class 17), or glass building materials (Class 21) even though these amendments are allowed in other U.S. applications that do not rely on a Madrid filing. This restriction applies even if the application already contains goods in those other classes (unless those goods are specifically identified as "building materials").
  • Under Madrid practice in the United States, it is still possible to restrict the scope of the statement of goods from how it reads in the IR. For example, "alcoholic beverages including wines, fortified wines, and spirits" may be amended to "wines, fortified wines and distilled spirits" in the U.S. application (and indeed, the USPTO may require such restriction).

Signature Requirements for Requests for Extension of Protection to the United States

The persons eligible to sign a request for extension of protection under Madrid to the United States are:

  • Person with legal authority to bind the applicant;
  • Person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or;
  • Attorney authorized to practice before the USPTO who has an actual written or verbal power of attorney or an implied power of attorney from the applicant. TMEP § 1904.01(c)

Intended and Actual Use Must Pertain to Each of the Recited Goods and Services

In all trademark applications filed in the United States, the applicant must state that it has a bona fide or good faith intent to use the mark in U.S. commerce. That claim and statement must apply to all the goods/services recited in the application. This is a strict requirement; thus, any goods or services for which there is not such a good faith intent to use the mark in U.S. commerce must be deleted from the application prior to its filing.

This requirement also applies at each instance when the statement of goods and services is amended during prosecution of the application.

Further, the requirement also applies to all instances where actual use of the mark in U.S. commerce is being proved, namely, upon the filing of a Statement of Use to secure registration (for intent-to-use based applications), at the filing of the Declaration of Use in the sixth year of registration, and at the filing of the renewal application every 10 years after registration. In all such filings, the applicant/registrant must make a statement to the USPTO as to which goods/services are actually being used in U.S. commerce under the mark. That statement must be accurate and it must delete from the application or registration any goods/services that have not been put into use or are no longer in use.

This requirement is strictly observed in the USPTO and before the Trademark Trial and Appeal Board (TTAB). The involvement of any trademark application or registration in inter partes proceedings, either before the TTAB or a federal court, will likely subject that application or registration to close scrutiny from the opposing party regarding the above requirements. The TTAB has held invalid registrations where the recited goods/services were broader than the actual use and where the mark owner knew that the document it filed with the USPTO attesting to such use was not accurate in that respect.

In order to file valid U.S. applications and secure valid U.S. registrations, it is essential that the intent to use and actual use information are accurate and that any goods/services that are not in use or no longer intended to be used are deleted from the registration or application.

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