MADRID SYSTEM VS. DIRECT INTERNATIONAL FILINGS BY U.S. PARTIES

1. MADRID SYSTEM VS. DIRECT INTERNATIONAL FILINGS BY U.S. PARTIES JPO/AIPLA Joint Meeting April 8, 2013 GEORGE W. LEWIS JACOBSON HOLMAN PLLC

2. Universally Accepted Advantages • Single application for registration in all member countries. • No requirement for legalization or translation of application. • No need to hire local associates if/until objection or refusal in a particular designated country or countries. • May be less costly. • May be obtain registration more quickly. • Can be renewed for additional ten-year terms by paying a single renewal fee to the World Intellectual Property Organization (WIPO). • Assignments of the trademark rights can be recorded for all or some of the countries covered at WIPO instead of on a country-by-country basis.

3. Universally Accepted Disadvantages • Subject to central attack, resulting in loss in all countries. • Goods & services description cannot exceed scope of home registration • Complications because of different national examination rules for acceptable types of marks. • Cannot be assigned to non-Madrid country parties, e.g., Canadian & Mexican. • Mark must be identical to mark in international registration. • Correction of errors can be complicated. • If the applicant has to resort to the National Application, the costs will likely exceed the cost had the application been originally directly filed.

4. MAJORS CONCERNS AND DISADVANTAGES FOR THE US APPLICANT WISHING TO EMPLOY THE MADRID PROTOCOL SYSTEM CENTRAL ATTACK IDENTIFICATION OF GOODS AND SERVICES

5. CENTRAL ATTACK Madrid registration rights are up dependent upon the sustainability of the home country registration. A “Central Attack” via opposition or cancellation proceeding can threaten pending applications that were extended extended under Madrid. ( In the case of a successful Central Attack, a registrant/applicant generally can transform the foreign national extensions to national applications; however, this option must be exercised within three months of a successful attack.

6. Problems Related to Use A US Registrant/Applicant is particularly susceptible because: Opposition is permitted under U.S. practice; since use is a requirement, even issued registrations are at risk of being cancelled on the ground of abandonment due to the non use of the mark; An application can be opposed or the subject to a Cancellation if the the mark is not used for all of the goods/or services of the application at the time of filing or at the time that a Section Statement of Use is filed or when a Section 8 Declaration of Use is filed or when renewed. Since the US recognizes common law rights, an unregistered party claiming superior rights can cancel a registration based on prior use. Unlike most foreign jurisdictions a US registration can be cancelled for nonuse.

7. IDENTIFICATION OF GOODS AND SERVICES • An International application must include a list of goods/services that is identical to or narrower than the goods/services in the basic application and/or registration. • US registration is limited to the goods and or services of actual use. • Use of the Madrid Protocol for U.S. parties can lead to a narrower scope of protection and leave registrants vulnerable to Central Attack, and can limit options during examination of the national extensions.

8. PROBLEMS UNIQUE TO US PARTIES • In the United States the wording “house mark for…” in certain limited circumstances provided that the goods are all in a single service. If an international application includes the wording “house mark for” or “house mark for a full line of,” the IB will generally issue a notice of irregularity requiring the applicant to clarify or remove this wording

9. What happens if the registration of the mark in other countries is limited to only the U.S. product line? Different Countries Different standards of Examination • Can it be asserted against the registration of the same mark for goods or services in a different class? US examination allows for cross class citations whereas in many countries citations limited to class. • Suppose two parties are engaged in a world-wide dispute and the national extension for the US party are based on the limited US identification? The other party relying on the broad identification of its home registration/application can carve out a protected zone for future expansion that cannot be achieved based on a U.S. home registration. • What happens if the proposed mark is intended for use only outside of the US?

10. OPTIONS AND ALTERNATIVES • US Registration and Madrid Protocol Extensions • US Registration – Community Registration (Community Registration using broad identifications is first filed and the base for priority claims) • US Registration – Individual National registrations (direct filing) • US Registration – Community Registration – Madrid Protocol Extensions • US Registration – Community Registration - Individual National registrations (direct filing) - Madrid Protocol Extensions

11. THANK YOU - QUESTIONS GEORGE W. LEWIS JACOBSON HOLMAN PLLC glewis@jhip.com