International Trademark Registration with Madrid

Transcription

1 International Trademark Registration with Madrid

2 Protecting Trademarks Abroad Trademarks are territorial. Be proactive in protecting trademarks! Have you considered registering your mark in countries in which: Your goods or services are marketed; Products or parts for your products are manufactured; Research and development facilities are located; Your products are trans-shipped; You might expand your business in the future; or Counterfeiting is likely to be a problem.

3 Protecting Your Trademarks Abroad: The Madrid Protocol What is the Madrid Protocol? It is an international trademark filing treaty administered by the World Intellectual Property Organization, WIPO. Currently 84 member countries. (Jan. 13, 2012) The United States became a party to the Madrid Protocol effective November 2, 2003.

4 FILINGS UNDER THE MADRID PROTOCOL Under the Madrid Protocol, the owner of a basic application or a basic registration issued by, the USPTO can - File a single international application, in English, at the USPTO Web site, pay in US dollars, and seek registration in any or all of the countries who are members, as the applicant designates.

5 FILINGS UNDER THE MADRID PROTOCOL What happens after the international application is transmitted to the USPTO? If the minimum requirements are met, the USPTO certifies the application, and forwards it to WIPO. (If not, applicant is notified of the deficiencies in the application.) The application must identify an application or registration from the country of origin the basic application/registration; The mark in the international application must be the same as that in the basic application/registration; The identification of goods and services must be identical or narrower than that in the basic application/registration; The applicant must be identical to the owner or applicant of the basic registration/application; The applicant must provide a statement that it is entitled to file an international application in the USPTO; List of contracting countries for REPs; And, of course, a non-refundable certification fee.

6 FILINGS UNDER THE MADRID PROTOCOL If WIPO finds that its requirements were met, it issues an international registration. WIPO then sends the international registration to each of the countries that the applicant identified in the international application. Each of those countries then determines whether, under its trademark laws, the U.S. trademark owner is entitled to an extension of protection, i.e., whether the international registration will be in force in its country. A country must issue any refusals within either one year, or eighteen months, from the day the REP was forwarded to the Office by WIPO (depending on whether the country opted for the one year or eighteen month limit). If the country decides to issue a refusal, it sends a refusal letter to WIPO, which then mails the letter to the applicant.

7 The Madrid Protocol in the United States The USPTO provides two sets of services under the Madrid Protocol The USPTO is responsible for certifying and forwarding international applications to the International Bureau (IB) for registration; The USPTO is also responsible for examining requests for extension of protection (REPs) to the United States. Since November, 2003 more than 21,000 international applications have been received in the United States. More than 92,000 REPs have been received in the United States since November This has resulted in over 60,000 registrations.

8 MADRID PROTOCOL APPLICATION

9 Madrid Application - outgoing USPTO Basic TM Application USPTO Basic TM Registration National Office National Office Requests for Extension of Protection International Application & Madrid Member Designations WIPO Formalities & Classification Review International Registration $ Int App fee + country fees USPTO Certifies Int App Collects fees Forwards to WIPO National Office ROMARIN Database of International Registrations

10 Incoming Madrid REPs USPTO examines requests for extension of protection (REP) under the same laws, regulations and procedures as any other application for registration.

11 Madrid Application - Incoming Request for Extension of Protection 2 months to retain IA date National Office 12 or 18 Months Formalities Classification Design Coding? MPU? Publication? Approve for Pub Examining Attorney Review TTAB Applicant WIPO Notification At 12 or 18 months Refuse Request Amendment

12 Equal (or Better) Opportunity for Madrid Filings In the USPTO, REPs examined substantively the same and with the same time frame as regularly filed U.S. applications. The USPTO issues Certificate of Extension of Protection which has the same rights and limitations as a registration on the U.S. Principal Register. The USPTO publishes Madrid Extensions of Protection in the USOG for opposition. Section 8 (post registration) affidavit(s) of use is required in order to maintain a certificate of extension of protection.

13 Fraud in the Identification of Goods and Services Applicants are required to swear under penalty of U.S. law to their use in U.S. commerce or intent to use in U.S. commerce of all goods/services in the application. USPTO rules impose a duty of candor and a reasonable inquiry to confirm: allegations and other factual contentions have evidentiary support (37 C.F.R (b)(2)(iii); legal contentions are warranted by existing law; (37 C.F.R (b)(2)(ii)). Signature rule 37 CFR 2.193, references Rule Applicants or registrants that swear they are using a mark on goods or services that they know they have not actually provided risk voiding the entire class (or entire single class registration) in which the fraud occurred. See, e.g., First Int l Services Corp. v. Chuckles, Inc., 5 USPQ2d 1628 (TTAB 1988); G&W Labs v. GW Pharma Ltd., 89 U.S.P.Q.2d 1571 (TTAB 2009). Fraud requires proof by clear and convincing evidence that applicant or registrant knowingly made a false, material representation with the intent to deceive the USPTO. See In re Bose Corporation, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).

14 Fraud in the Identification cont d Even if fraud is not proved: goods and services not in use in commerce, or for which there is no bona fide intent to use in commerce may be cancelled from the registration or application. This is very different from the practices in other jurisdictions where broad identifications or class headings are allowed. This can cause problems for Madrid applicants filing into the United States!

15 Fraud in the Identification cont d USPTO requires an extra form for Requests for Extension of Protection into the US MM18 Declaration of Intent to Use. The declaration must be signed by a person with legal authority to bind the holder/applicant or a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant/holder or a U.S. attorney. TIP: Be careful to ensure that the Declaration of Bona Fide Intention to use the mark (form MM18) accurately reflects intent to use.

16 Identifications Avoid Problems Identifications should be narrow. Identifications must be accurate. Identifications should be consistent with the US Acceptable Identification of Goods and Services Manual ( ID Manual ). Available online at: Contains notations of those identifications and classifications that are accepted by the three Trilateral Offices (USPTO, JPO, OHIM). We hope that this Trilateral list will eventually be expanded, allowing additional countries to participate and add to the list.

17 Identifications cont d The ID Manual sets forth thousands of goods and services that an applicant could offer, and provides acceptable wording and proper classification. Examining attorneys will require that ALL identifications be consistent with the principals of Nice classification and existing entries in the ID Manual. Identifications can only be amended within the scope of the original wording. Applicant may not expand the identification, can only narrow it. The IB controls classification. Therefore, the USPTO cannot amend the classification in a Madrid-based application and will require the applicant to specify only goods/services that actually fall into the class assigned by the IB. Any proposed amendment that falls into another class will be refused.

18 Madrid Classification: Incoming REP to the U.S. Basic Covering IC 25 Clothing IC 25 Headgear IC 3 Lotions IR Covering IC 25 Clothing IC 25 Headgear IC 3 Lotions Only goods in Classes 3 and 25 will be allowed in U.S. WIPO Determines Nice Classification Once REP is sent to National Offices, applicant cannot add any classes to cover goods that may fall into other classes upon examination. REP IC 25 Clothing, namely gowns But not: IC 10 Clothing, namely surgical gowns IC 25 headgear, namely caps But not: IC 9 protective headgear for boxing IC 3 Skin Lotion But not: IC 5 Pharmaceutical Skin lotions

19 Limitation of Goods and Services International Application contains a mechanism for providing a specific identification of goods/services that complies with U.S. requirements while retaining a broader list of goods/services in the international registration and for all other designated parties. Item 10(b) is the LIMITATION of goods and services with respect to one or more designated parties and entry of a limitation in the original international application is free of charge. A subsequently filed limitation requires a fee.

20 Madrid Pitfalls Classification Not So NICE USPTO Basic Covering IC 25 Clothing, namely shirts, shoes IC 9 Support Belts For workers IC 10 Abdominal Belts For Medical purposes IC 3 Skin Lotion IC 5 Pharmaceutical Skin lotions IR Covering IC 25 Clothing, namely shirts, shoes IC 9 Support Belts For workers IC 10 Abdominal Belts For Medical purposes IC 3 Skin Lotion IC 5 Pharmaceutical Skin lotions Narrow US Identification practice seen as limitation on use by US owners. REP IC 25 Clothing IC 25 Belts IC 3 Lotions REP IC 25 Clothing, namely shirts, shoes IC 9 Support Belts For workers IC 10 Abdominal Belts For Medical purposes IC 3 Skin Lotion IC 5 Pharmaceutical Skin lotions

21 Common Issues With Madrid Applications The presence of any one of these issues will result in a full provisional refusal: Citizenship and entity Translation of mark Color claim and color description Consent to register name or likeness of a living individual (could handle as a preliminary amendment) See WIPO Information Notice No. 4/2009

22 Addressing these Issues Prior to Examination When possible, include this information in the application. As soon as you know the Serial Number of your application, you can file a Preliminary Amendment to add or correct information. USPTO sends immediate filing receipts for REPs upon notification by IB with US Serial Number. Check for errors and correct them immediately with the IB. Alternatively, search USPTO s TARR database by International Registration No. to find the US Serial Number, and then file a preliminary amendment via USPTO s TEAS system.

23 Representation Before the Office When responding to Office actions, or filing any amendments, a signature of an authorized individual is required. This can be the applicant, a corporate officer, or a duly authorized attorney. Holder s IB representative is not considered the attorney of record by the USPTO. Holder s representative address is treated as the correspondence address of record. Foreign attorneys may not practice before the USPTO. VERY few exceptions See TMEP Section et. seq.

24 Madrid Considerations Madrid Protocol leaves trademark owner with a bundle of national rights. Those rights are tied to basic application or registration for 5 years Dependency (transformation of REPs into national applications possible) The International Registration is not a single registration.

25 Madrid Dependency Central Attack Basic App/Reg 5 year dependency International Registration Transformation (Can keep original priority date) Extensions Of Protection National Application Basic Cancelled Within 5 years International Registration Cancelled Extensions Of Protection National Application Extensions Of Protection National Application

26 Madrid Maintenance the Real Benefit Request for: Renewal & Change of Address Change of ownership (single request for change to multiple registrations) One request at WIPO will effect the renewal/change in all designated Contracting Parties. International Registration International Registration International Registration $ WIPO Extensions Of Protection Extensions Of Protection Extensions Of Protection

27 Madrid Pitfalls Closed System U.S. Madrid applicant must be a national of of the U.S., be domiciled here, or have a real and effective industrial or commercial establishment in the U.S. The owner of an international registration must also be domiciled in, be a national of, or have a real and effective industrial or commercial establishment in a Contracting party. This means that assignments outside the system to non-madrid nationals - is problematic. Once assigned outside a Madrid Member, the national right is outside of the Madrid system and can t use Madrid maintenance features.

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