Before November 2, 2003, foreign trademark owners only had one option for seeking registration of a trademark in the United States: a national trademark application filing with the U.S. Patent and Trademark Office (USPTO). As of that date, foreign trademark owners gained an alternative filing option when the Madrid Protocol went into effect. This enabled foreign trademark owners to seek extension of protection of an international registration of a mark to the United States.
While seeking trademark registration in the United States via a Madrid Protocol filing may be a cost-effective option for certain applicants, our experience has shown that it is not beneficial in all situations. We have identified 10 disadvantages of using the Madrid Protocol to obtain trademark protection in the United States:
(1) Madrid Protocol filings are subject to central attack
“Central attack” means that if the original application used to initiate a Madrid Protocol filing is successfully disputed or denied, then all other trademark protections granted by the Madrid Protocol are cancelled as well. This is a potentially catastrophic outcome for the applicant. The applicant can try converting each Madrid Protocol filing to a national application in each jurisdiction, but this will lead to substantial additional costs since a transformation application must start anew with local counsel and another set of filing fees. Thus, in the event of central attack, the Madrid Protocol filing is a waste of time and money.
(2) Supplemental Register cannot be used
Most trademarks registered in the United States are registered on the Principal Register, which gives trademark owners the strongest trademark rights in the United States. Certain marks that are not eligible for registration on the Principal Register, but are nevertheless capable of distinguishing an applicant’s goods or services, such as merely descriptive marks, primarily geographically descriptive marks and marks that are primarily merely surnames, may be registered on the Supplemental Register. While trademarks registered on the Supplemental Register do not enjoy the same level of protection as trademarks on the Principal Register, a Supplemental registration does provide advantages that would not otherwise be available to owners of common law trademarks. For example, a registration on the Supplemental Register gives its owner the right to use the registered ® symbol. A registration on the Supplemental Register will also block later-filed applications for confusingly similar marks for related goods and/or services.
Madrid Protocol filings are not eligible for the Supplemental Register. If a Madrid Protocol filing is deemed primarily merely a surname, for example, then there is no possibility of moving it to the Supplemental Register as would be done with a national U.S. application. Instead, it must be abandoned and a new national application filed, incurring additional fees and losing the priority date of the Madrid Protocol filing.
(3) Class numbers cannot be changed
The next three disadvantages involve descriptions of goods and services in an application. For national U.S. applications, the USPTO allows adjustments to ensure that descriptions within the scope of the original language of the application can proceed to registration. Because Madrid Protocol filings are tied to an International Registration, however, the USPTO imposes several restrictions in how a description of goods and services can be amended. The first restriction is that the class numbers used within a Madrid Protocol filing cannot be changed.