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In certain situations, non-US persons and entities may register trademarks in the United States. The United States is a party to several international treaties on trademark protection, such as the Paris Convention, the General Inter-American Convention for Trade Mark and Commercial Protection, and the Madrid Protocol, among others. This page focuses on the registration of foreign trademarks in the United States through the Madrid Protocol or based on an application or registration in another country.
The citizens of another country have rights under the Trademark Act of 1946 (the “Trademark Act”) in two situations: (1) if that country is a party to a treaty to which the United States is also a party and that allows the registration of trademarks based on a foreign registration, and (2) if that country extends reciprocal trademark rights to citizens of the United States. The rights of the citizens of those countries include trademark registration in the United States based on a registration in another country, as explained below, but also the protection of trade names without the need to register them and the effective protection against unfair competition.
The citizens of other countries have five bases to apply for registration and four bases to register trademarks.
Bases for Application
Use in Commerce (section 1(a) of the Trademark Act): The holder of a mark used in commerce may request registration of that mark. In this context, “commerce” means the commerce regulated by the United States Congress, that is, essentially, trade with other countries or between states of the United States.
Intent to use in commerce (section 1(b) of the Trademark Act): This section allows the filing of the application to register a mark before the date on which the mark is used in commerce, as long as the holder has a good-faith intent to use the mark. Although this mechanism allows one to apply for trademark registration, that mark cannot be registered until the holder alleges that it is using the mark in commerce. If the application leads to a registration, the effective date of the registration will be the application date.
Priority based on an application in another country (section 44(d) of the Trademark Act): This section provides a basis to obtain a priority date, but does not provide a basis for the registration of a mark. In order for the priority date in the United States to be the same as the priority date of the foreign application, the applicant must request registration in the United States within six months from the date of the first application outside the United States.
Registration in another country (section 44(e) of the Trademark Act): This section allows the filing of a trademark application in the United States based on a valid registration in the applicant's country of origin.
Madrid Protocol (section 66 of the Trademark Act): The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Madrid Protocol”) allows the filing of a single application to register a mark in any of the countries or organizations that are parties to the Madrid Protocol.
Bases for Registration
All the bases for application listed in the previous section may be bases for registration, except priority based on an application in another country (section 44(d) of the Trademark Act). Therefore, the possible bases for registration are the following:
A trademark application for specific goods or services may be based on the use of the mark in commerce or on the intent to use the mark in commerce, but must not be based on both for the same products or services. In addition, if the applicant meets the requirements of section 44 of the Trademark Act, the applicant may base its application on the following provisions of that Act:
(1) section 1(a) and section 44 (subsections (d) or (e), as applicable), or
(2) section 1(b) and section 44 (subsections (d) or (e), as applicable).
Applications based on the Madrid Protocol, however, cannot be combined with any other basis. A special situation is the possibility of transforming an application based on the Madrid Protocol into an application based on sections 1 or 44, or both; this possibility is discussed in the section on the Madrid Protocol.
Section 44(d) of the Trademark Act grants an applicant priority in the United States based on an application for registration in another country. The applicant has a right to priority during the six months after the filing of the first application in a treaty country; that is, if the application eventually leads to a registration, the date of priority of the mark will be the date of the first request outside the United States. The use of the mark is not required anywhere in the world. This right constitutes a basis for a trademark application, preserving the priority date of the foreign application, but not a basis for the registration of the mark.
The applicant's country of origin must be a party to a treaty on trademarks or unfair competition to which the United States is also a party, or its laws must extend reciprocal rights to United States citizens. In addition, the applicant must submit a declaration of good-faith intent to use the mark in the United States.
There will be no federal registration until the mark is registered in the country of origin or the applicant alleges use in commerce regulated by the United States Congress.
The holder of a trademark registration in another country may use that registration as a basis to apply for and obtain the registration of that mark in the United States. The registration is not automatic, but the United States Patent and Trademark Office (the “USPTO”) will examine the application in accordance with the requirements applicable to any other application, except those regarding the requirement of use in commerce.
The mark may be registered in the Principal Register (if it is sufficiently distinctive) or the Supplemental Register (if the mark is not sufficiently distinctive, but has the potential to become distinctive), even if the use of the mark in commerce has not commenced. The registration without use may last a reasonable period, which may be several years; after this period, the mark must meet the use requirements applicable to any other mark registered in the United States.
The United States is not a party to the Madrid Agreement, but it is a party to the Madrid Protocol, which allows an applicant to file a single application covering any party to the Protocol. If the destination country for the application does not reject the application within a period of 12 to 18 months (in the United States this rejection period is 18 months), the application is accepted.
Only persons or entities who are domiciled or have an establishment in a country that is a member of the Madrid Protocol or who are citizens of a member country may use the Madrid Protocol mechanism.
An application for international registration must designate one or more countries for extension of trademark protection, but it may not designate the country of origin of the application. Subsequently, other countries may be added.
The applicant files the application for international registration with the trademark office of the country of origin, which sends the international request to the International Bureau of the World Intellectual Property Organization (the “International Bureau”). The International Bureau then examines the application, and if it meets the requirements it is published in the International Register and it is notified to the designated countries. An international registration is effective for 10 years, and may be renewed indefinitely through the payment of the corresponding fees. (The term “international registration” may be misleading in this context, because it is not a trademark registration, but an authorization to apply for registration in other countries).
If an applicant wants to extend the protection of the mark to the United States under the Madrid Protocol, the applicant must state its intent to use the mark in the United States. The application is subject to examination in accordance with the requirements of the Trademark Act, except those regarding use in commerce. If the applied-for mark does not meet the requirements, the application will be rejected. The mark must be registrable in the Principal Register, because the Supplemental Register is not available for marks registered under the Madrid Protocol.
Within 18 months, the director of the USPTO must send to the International Bureau one of the following communications:
- a notification of rejection based on the examination of the application;
- a notification of rejection based on an opposition to the application;
- a notification that an opposition may be brought after the 18-month period.
If the USPTO does not issue any notification within those 18 months, the protection of the mark is extended to the United States. The certificate of extension of protection has the same effect as the registration of a mark published in the Principal Register.
The filing of an application to extend protection constitutes a constructive use of the mark from the earliest of the following dates: the date of the international registration, the date of recordation of the request for extension of protection to the United States, or any other priority date under Article 4 of the Paris Convention.
Dependence Period
For five years, the international registration depends on the application or registration in the country of origin. That is, the international registration is cancelled if the application or registration in the country of origin expires or is restricted, abandoned, or cancelled at the request of the trademark office of the country of origin. The cancellation may affect all or several of the goods or services included in the application. If the international registration is cancelled for any of these reasons, the holder has a three-month period to file applications in each country; this is known as the “transformation” of the goods or services affected by the cancellation. The transformation cannot take place if the application or registration in the country of origin has been cancelled at the holder's request. In the United States, the holder of the international application may request the registration of the same mark for the affected goods or services based on section 1 (use in commerce or intent to use in commerce) or section 44 (application in another country or registration in another country). A transformation request must be filed within three months after the date on which the International Bureau cancelled the international registration.
Advantages of the Madrid Protocol
The Madrid Protocol offers advantages to trademark applicants and holders who want to register their trademarks in other countries. Instead of filing applications and paying application fees in several countries, the Madrid Protocol allows the applicant to file a single application in one language and pay a single fee. If the trademark office of the destination country does not respond to the application within 12 to 18 months (the specific duration of this period varies by country), the application is approved. The Madrid Protocol also allows the use of a single formal step to, among other things, change the holder's address and the holder of the mark, or to limit the goods and services to which the mark is applied.
Disadvantages of the Madrid Protocol
The Madrid Protocol also has certain disadvantages for trademark applicants and holders. An application filed under the Madrid Protocol must not be combined with other bases for application, such as sections 1 and 44 of the Trademark Act; this may limit the applicant's flexibility if problems arise during the registration process. The applicant may not broaden the identification of goods and services beyond the identification contained in the international registration; in addition, the USPTO has discretion to demand an identification of goods and services more precise than the one contained in the international registration. A mark registered under the Madrid Protocol may only be registered in the Principal Register, and not in the Supplemental Register, which contains marks that are not sufficiently distinctive, but that may become distinctive. The Madrid Protocol does not allow the applicant to change the mark that is the subject of the international registration: if the holder of an international registration wants to change the mark, even slightly, it must file a new application for international registration. In addition, the USPTO does not allow the change of a mark in an application filed under the Madrid Protocol. Finally, the holder of a mark registered in the United States under the Madrid Protocol must file affidavits of use periodically, and if they are not filed, the trademark registration will be cancelled.