Con muchísimo gusto les presentamos este artículo que trata de los puntos importantes a tomar en cuenta antes de designar a Estados Unidos en una solicitud de marca vía el Protocolo de Madrid.

Apreciamos muchísimo la colaboración de nuestro colega Louis J. Levy de la firma legal Belles Katz, LLC. 

CONSIDERATIONS BEFORE DESIGNATING THE UNITED STATES IN A MADRID PROTOCOL APPLICATION

By

Louis J. Levy*
Belles Katz, LLC

U.S. Patent and Trademark Office statistics for the last fiscal year show that applications in the U.S. filed by foreign applicant’s using the Madrid Protocol account for roughly nine percent of all applications filed in the U.S. https://www.uspto.gov/dashboards/trademarks/main.dashxml, last viewed September 17, 2018). These statistics confirm how useful the Madrid Protocol has become for non-U.S. rights holders as a relatively simple, cost effective way to obtain trademark protection in the United States. Nonetheless, given the nature of trademark prosecution in the United States, entities seeking to extend trademark protection in to the U.S. under Madrid should remain mindful of certain pre- and post-registration issues that can have an effect on how they prosecute and maintain their U.S. applications.

            First, although obtaining a Madrid-based trademark registration in the United States has benefits, it is important to bear in mind that, without actual use of the mark in the United States, it may be vulnerable to cancellation, which limits the ability of the owner of such a registration to defend or enforce its rights. Indeed, even though a Madrid application can register without evidence of use, such evidence must be provided with a Declaration of Use between the 5th and 6th anniversaries of the registration and for every renewal thereafter under Section 8 of the U.S. Trademark Act. If such use cannot be demonstrated the registration will be cancelled or, if in the renewal term, expire. Please note also that the USPTO randomly but not infrequently audits trademark maintenance declarations to require proof of use for each good or service identified in the application. Failure to provide such evidence can result in the deletion of the non-used goods or services from the registration, or in the worst case, the cancellation of the registration.

            Second, it is important to understand that, while marks filed on other bases in the U.S. can be registered on the Principal Register (for inherently distinctive marks) or Supplemental Register (for descriptive marks capable of acquiring distinctiveness through exclusive and continuous use), applications filed under the Madrid Protocol may only be registered on the Principal Register. The Supplemental Register is not available for Madrid applications. Accordingly, the marks they identify must be inherently distinctive or they cannot be registered at all. Rather, if unable to overcome a descriptiveness refusal, the owner of the application will have no choice but to file a new, non-Madrid application based on use, an intent-to-use or, somewhat inconsistently, under the Paris Convention.

Non-U.S. trademark owners seeking to extend protection to the U.S. under the Madrid Protocol should therefore carefully evaluate their marks to confirm that their marks are inherently distinctive rather than descriptive and therefore registrable in the U.S. on the Principal Register prior to designating the U.S. for an extension of protection. If a mark is arguably descriptive, Applicant’s should consider filing the application directly with the U.S. PTO rather than through the Madrid Protocol so that, in the worst case, registration may still be obtained on the Supplemental Register, which gives the owner the right to use the “®” symbol and provides notice to third parties of the owner’s claimed rights in its mark. Marks registered on the Supplemental Register may also be cited against later-filed applications for identical or confusingly similar marks.

Finally, in some cases, the USPTO may require that goods and/or services in Madrid application be re-classified. U.S. law does not allow the owner of a Madrid application to add a new class. This means that if the PTO determines that a good or services belongs in a class not included in the original application, that good or service will have to be deleted from the application. U.S. law does not allow new classes to be added to a Madrid application.

            In sum, before designating the U.S. in an application filed under the Madrid Protocol, non-U.S. trademark owners should carefully evaluate the inherent distinctiveness of their marks to determine if Madrid is really the appropriate basis on which to seek registration in the United States. Once registered, owners of Madrid registrations should also be sure to start using the mark identified in the registration in the United States to ensure their ability to enforce their rights and maintain their registrations.

*Belles Katz LLC is an intellectual property law firm with offices in Philadelphia and Maryland. Mr. Levy can be reached via email at llevy@belleskatz.com and by phone at (240) 453-9211.     

Las opiniones expresadas en este artículo son responsabilidad exclusiva del autor y no representan necesariamente los puntos de vista de la AMPPI.

Todos los Derechos Reservados. La reproducción, copia y utilización total o parcial del contenido está expresamente prohibida sin autorización. Asociación Mexicana para la Protección de la Propiedad Intelectual, A.C.