The Madrid Protocol international trademark registration system provides a cost-effective and streamlined way for United States trademark applicants and owners to ensure protections of their applied-for and registered trademarks in multiple international countries through the filing of one application with the United States Patent & Trademark Office (USPTO), in one language, with one set of fees, in one currency.
The Madrid Protocol also simplifies the management and maintenance of the international trademark registration, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all Madrid Protocol country members.
International Trademark Registration System – Madrid Protocol
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) is an international treaty that allows a trademark applicant or trademark owner to seek trademark registration in any of the international countries that have joined the Madrid Protocol system. The Madrid Protocol became effective in the United States on November 2, 2003. The international trademark registration system is administered by the International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”), in Geneva, Switzerland.
The Madrid Protocol provides that: (1) the owner of a USPTO trademark application and/or registration may seek protection of its mark in any of the countries that are a party to the Madrid Protocol system by submitting a single international application to the IB through the USPTO trademark registration system; and (2) the holder of an international trademark registration may request an extension of protection of the international trademark registration to the United States. The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee.
A trademark owner may renew its international trademark registration under eMadrid at the earliest of six months before the ten-year term of protection expires, or within the six-month grace period following its expiry.
Madrid Protocol International Trademark Application Procedures
To apply for an international trademark registration under the Madrid Protocol system, a trademark applicant must be a national of, be domiciled in, or have a real and effective industrial or commercial establishment in one of the countries or intergovernmental organizations that are members of the Madrid Protocol – see below list of Madrid Protocol member countries. The trademark application must be based on one or more trademark application(s) filed in, or registration(s) issued by, the trademark office of one of the Madrid Protocol member countries. The international trademark application must be for the same trademark (e.g., word mark, design mark, word plus design mark) and include a description of goods and/or services that are identical to the description of goods and/or services in the trademark application or trademark application filed in the applicant’s or registrant’s home country. The international trademark application must designate one or more Madrid Protocol member countries in which an extension of protection of the international trademark registration is sought. For United States trademark applicants and registrants, the international trademark application must be submitted through the USPTO Madrid Processing Unit (MPU).
The Madrid Protocol system may involve the USPTO in three ways:
Outbound From the United States. The office of origin is the USPTO. A federal trademark applicant’s pending or registered trademark with the USPTO is the basis of the foreign trademark application or registration;
Inbound To The United States. The USPTO is the designated office (or Designated Contracting Party) if a foreign trademark applicant or registrant makes a request for “extension of protection” (see definition below) of its foreign trademark in the United States;
Office of Contracting Party of the Owner. If the owner of a foreign trademark registration is a national of, is domiciled in, or has real and effective industrial or commercial establishment in the United States, the owner of the international trademark registration can file certain requests with the International Bureau (IB) via the USPTO.
Foreign Based Applicants for US Trademark Registration
An applicant located outside of the United States may file for a United States trademark registration on the same basis as a US citizen or US business. As of August 3, 2019, all foreign-domiciled applicants must be represented by an attorney who is licensed to practice law in the United States. This requirement ensures proper communication and compliance with US law.
If the person or business located outside of the United States is a Madrid Protocol member country, and the person or business holds, or has applied for, a trademark registration in its foreign country, it is entitled to special trademark registration benefits.
Section 44 trademark applications fall into two categories: (1) US trademark applications relying on foreign applications to secure a priority filing date in the United States under Section 44(d); and (2) US trademark applications relying on ownership of foreign registrations as a basis for registration with the USPTO under Section 44(e).
Section 44(d) filing basis is elected for US trademark applications where the individual or business has filed a foreign trademark application for the same trademark (on the same goods or services) in another Madrid Protocol member country, and the foreign trademark application was filed no more than six months before the date that the US trademark application is filed. By using the Section 44(d) filing basis, the person or business applying for a US trademark benefits from the filing date of the earlier filed foreign trademark application. The Section 44(d) filing basis is also called a “foreign priority basis” because the trademark applicant is requesting a “priority” filing date for its USPTO application that is the same date as that of the foreign application filing date. Trademark priority is critical for individuals and businesses that provide goods and/or services in highly competitive markets because they can prevent later-filed similar or identical trademarks from being registered.
Section 44(d) only gives an individual or business a priority filing date, so a trademark owner based outside the US would still need to use a Section 44(d) filing basis in combination with either Section 1(a), Section 1(b), or Section 44(e) registration basis. Most people who apply for a trademark based on a foreign application will also claim the Section 44(e) basis for registration. Section 44(d) isn’t used with a Section 66(a) filing basis – described below.
Section 44(e) filing basis is used for with a USPTO trademark application where the individual or business filing the application already owns a trademark registration in a foreign country. The benefit of using Section 44(e) is that the trademark applicant does not need to use its trademark on the covered goods and/or services in the US before the trademark can be registered. This is distinct from trademark applications filed under a 1(a) (Actual Use) or 1(b) (Intent to Use) basis, where specimens or evidence of use must be established before the trademark will register. However, under Section 44(e), the trademark applicant must attest to having a “bona fide intent” to use its trademark in the US with the goods and/or services applied-for. The major difference under a 44(e) trademark filing is that the trademark applicant is not required to establish “actual use” in the US marketplace as a condition to registration.
If a trademark applicant uses the Section 44(e) filing basis, the USPTO will require a copy of the foreign trademark registration before the applied-for trademark will officially register.
Section 66(a) Filing Basis – Extension of Protection to the United States
A foreign individual or business who wishes to use the Madrid Protocol system must first obtain a trademark registration (or file an trademark application) in its home nation’s trademark office. That individual or business may then file in its home trademark office a request for extension of protection in the US. This request must contain:
A declaration of a bona fide intention to use the trademark in the United States in connection with the goods and/or services identified in the trademark application or registration;
A declaration that the individual or business believes he/she/it is entitled to use the trademark in the United States;
A declaration that no other individual or business has the right to use a confusingly similar trademark in the United States.
A foreign individual or business’ trademark application requesting an extension of protection in the US under Section 66(a) will be examined by the USPTO exactly the same way as any other trademark application. Thus, the request for an extension of protection may be refused registration on the same grounds as any other trademark application filed with the USPTO. Note, an extension of protection in the US cannot be sought for the Supplemental Register, only for the Principal Register.
A Section 66(a) trademark registration differs from a registration under Section 44(e) because it always remains part of and dependent on the international registration. A Section 44(e) trademark registration is independent of the underlying international registration. Like a 44(e) trademark registration, a Madrid Protocol trademark under Section 66(a) does not have to show use in the United States prior to registration. However, both 44(e) and 66(a) trademark registrations in the US are subject to cancellation if the trademark is not used with the goods and/or services within a reasonable time after registration. In other words, a Section 66(a) registration of a trademark that has never been used in the US, or for which use has been discontinued or abandoned, is vulnerable to cancellation even if the international registration remains active and valid.
A request for extension of protection to the US under the Madrid Protocol with a Section 66(a) filing basis is subject to being opposed in an trademark opposition proceeding. As noted above, if the trademark is not used in commerce with the goods and/or services identified in the trademark registration within a reasonable time after registration, it is vulnerable to cancellation. Like all other trademark registrations issued by the USPTO, a holder of an extension of protection (EOP) is required to make periodic maintenance and renewal filings showing use of the protected trademark. If a periodic maintenance or renewal filing is not timely filed, the extension of protection is automatically cancelled by the USPTO. Madrid Protocol extensions of protection in the US are also eligible for incontestable status (with a showing of at least five years of use in commerce).
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