PTO Rule Changes Implementing the Madrid Protocol Could Affect All Trademark Applications

Date: Sep 15, 2003

What is the Madrid Protocol?
In November 2002, the United States decided to adopt the Madrid Protocol agreement for international trademark registrations. Just recently, on August 2, 2003, the U.S. finalized its official membership to the treaty by depositing its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization ("WIPO") in Geneva. The Madrid Protocol will take effect with full implementation in the U.S. on November 2, 2003. Once in effect, the Madrid Protocol will allow U.S. applicants to obtain trademark protection in any one of the 58 countries that has adopted the Madrid Protocol, by simply filing one trademark application in the United States Patent and Trademark Office ("PTO").

How do the proposed changes affect all trademark filings?
Recently, the PTO proposed new rules that seek to change and add to the existing U.S. trademark rules so as to conform to the Madrid Protocol system. Since the proposed rule changes are intended to implement the Madrid Protocol in the U.S., one might assume that they will only affect businesses seeking trademark protection in the Protocol member countries. Contrary to this assumption, however, some of the proposed rule changes will affect all trademark owners seeking to register trademarks with the PTO.

What are the proposed changes that affect all applicants?
Of note, the proposed rules seek to modify sections of 37 C.F.R. Part 2 and affect all U.S. trademark applicants, regardless of whether they intend to apply for international protection. The changes to this section mainly concern the mechanics of describing the physical mark on the application, such as additional color requirements, drawing formats and submissions through e-filings. Other changes are more substantive and will affect time lines and additional e-filing requirements, such as electronic signatures and electronic extensions of protection. Several of the key changes are set forth below.

    • A trademark applicant claiming color protection must identify the color(s) and describe where they appear on the mark, see § 2.37(b)

    • When seeking to extend protection of a U.S. trademark to another Madrid member country, the drawing of the mark and all colors claimed must be identical to the mark as it appears on the original U.S. registration, see § 2.51(d) and § 2.52(b)(1)

    • Drawings submitted by e-filings must be attached in .jpg format, see § 2.53

    • Paper drawings must be a particular quality so as to be scanned without losing clarity, see § 2.54

    • If a refusal or requirement is expressly limited to only certain goods or services and a response is not given, the application will be abandoned as to only those goods or services. Currently, if the applicant does not respond to an office action the entire application is abandoned even if the action was limited to some, but not all, of the goods and services. see § 2.65(d)

    • Oppositions to extensions of protection to other Madrid member countries must be submitted through e-filings. In contrast, oppositions to U.S. trademark applications may be submitted through paper filings or e-filings, see § 2.101

What are the rule changes affecting only Madrid filings?
The proposed rules also add an entirely new part (37 C.F.R. Part 7) concerning Madrid Protocol matters. Some of the new rules in this section will be particularly advantageous for U.S. applicants, because they provide applicants with the ease of submitting international applications in English, as well as paying fees in U.S. dollars. Several of the key benefits of the proposals are set forth below.

    • All correspondence relating to international application registrations will be in English, see § 7.3

    • PTO fees for international trademark processing will be in U.S. dollars, see § 7.6

    • The proposed fees for international registrations are less expensive than U.S. filing fees, but they are in addition to the original filing fee for the basic U.S. application, see § 7.6

    • Applicants may change the owner, the name, or the address of most national registrations through a single request and fee paid in one currency, see § 7.22

    • All international applications to the PTO based on existing U.S. applications must be submitted through e-filing, see § 7.11(a)

    • E-Filing is required when attempting to add additional countries and extend the geographic scope of protection to for an existing international registration (a subsequent designation), see § 7.21(a)

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The Madrid Protocol offers a vehicle for U.S. businesses to protect their trademarks throughout the world but the proposed rules affect domestic applications as well. As a result, all trademark applicants should have familiarity with the proposed rules.

For additional information about the Madrid Protocol and its implementation in the United States, please contact Sheila A. Millar at (202) 434-4143 or via e-mail at Millar@khlaw.com.