Be aware of US trade mark protection via the Madrid Protocol

The Madrid Protocol is always an attractive alternative to obtaining registration of your trade mark in the US. The primary reason being that an international registration filed via the Madrid Protocol into the US does not require use of the trade mark before it is registered. Conversely, use is required for a national US trade mark before registration where you do not have a foreign registration claim.

However it is important to note that the USPTO does impose limitations on applications that are filed via the Madrid System that are not imposed on US national application or those that are filed based on a foreign registration.

Before filing a Madrid application designating the US, you should consider carefully the below limitations to ensure you obtain the protection you require.

Not possible to amend to the Supplemental Register

In the United States, if your application receives an objection on the basis that it is descriptive, the mark may be amended to a secondary register called the Supplemental Register.

However, applications filed via the Madrid Protocol are not eligible to be amended to the Supplemental Register. As a result, if you are unable to overcome a descriptiveness objection by submitting written arguments, the application will be refused registration by the USPTO.

Not possible to change class numbers or add classes

In the United States, goods and service descriptions must be described precisely and is generally narrower than in other jurisdictions. As a result, if there is a discrepancy in the classification in the US, for example if the home country classifies a service in class 36 but the US classifies the same service in class 35, it is not possible to transfer the service to the correct class for the purposes of the US nor add the new class. The service must be deleted.

No changes to the mark itself

Like Australia and many other jurisdictions, the United States allows for non-material alterations to marks. For marks filed via the Madrid Protocol, alterations are not permitted in any way. Therefore if you change your mark only slightly you may not qualify for renewal of the mark in the US as the trade mark being used in commerce would differ to the registered mark.

What next?

The Madrid System is a good way to obtain protection for your trade mark in the US but it is important to carefully consider your international filing strategy in the US to avoid the above pitfalls which could potentially limit your trade mark rights. When considering your international trade mark strategy ensure you discuss with us the best way forward for your brand.