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Madrid Protocol Overview
December 2003

Federal legislation implemented an agreement effective November 2, 2003 making it possible for the United States to join the Madrid Protocol, an international treaty that facilitates a centralized system for procuring and maintaining international trademark and service mark registration for participating countries. Under the treaty, U.S. applicants have the ability to submit a single international trademark application, in one language, to the U.S. Patent and Trademark Office (USPTO) designating member countries where registration of the mark is being sought.

An international application under this treaty may be filed by anyone with a "real and effective industrial or commercial establishment or a domicile in, or who is a national of, one of the countries party to the treaty." This is called the Office of Origin. There are currently 62 participating countries. The European Union (EU) is expected to join by 2004. Notably absent are Canada, Mexico, India and South America.

Of key importance is what happens to the trademark during the first five years. An international registration is dependent on whether the underlying registration with the Office of Origin is in effect. There are two ways international protection can be cancelled:

• Successful opposition to cancel the underlying application or registration voids the entire international registration. This has been referred to as a "central attack." Rather than incurring the expense of attacking registration in each designated country, an opponent can attack the trademark at its origin and, if successful, stop protection in the designated countries. If this occurs, the trademark owner can register the mark separately in each country.

• If the underlying registration with the Office of Origin is cancelled or limited during the first five-year period, the international registration will be cancelled or limited in all countries designated on the registration. After the first five years, the international registration becomes independent of the underlying registration and remains enforceable in each designated country even if the underlying registration is cancelled.

When a national registration already exists in a country that is a member of the treaty, the registrant can request that the national office replace it with the international registration.

International registrations under the treaty are valid for 10 years, after which they can be renewed for additional 10-year periods. Applications under the Madrid Protocol will be accepted in English, French or Spanish.

U.S. trademark and service mark rule changes

New rules under the USPTO were implemented on November 2, 2003. The changes apply to both U.S. and international applications.

• Color marks can no longer be submitted in black and white. All color marks must be submitted in a separate color drawing. Electronically filed color drawings must be in a .jpg format.

• Applicants must specifically claim a "standard character" mark when trademarks or service marks are comprised of all type. If the designation is not made, the USPTO will classify all type marks as a "typed drawing" rather than a "special form" (a stylized or design mark).

• If an applicant does not respond to a refusal or limitation requirement for certain goods and services, the application will be considered abandoned and the restrictions will be deleted from the application. The registration will proceed only for the remaining classes.