Issue 130 | November 3, 2003
USPTO Issues New Trademark Exam Guides
 Madrid Protocol Materials

On October 28, 2003 the U.S. Patent and Trademark Office issued Exam Guide No. 2-03 entitled "Guide to Implementation of Madrid Protocol in the United States." Although the Exam Guide discusses electronic filing requirements, the USPTO previously announced on October 24, 2003 that it is temporarily postponing the rules that otherwise require electronic transmission to the USPTO of applications for international registration, responses to irregularity notices, and subsequent designations submitted pursuant to the Madrid Protocol.

Due to "technical difficulties," the USPTO has also delayed the posting of electronic forms for filing documents related to the Madrid Protocol. Until the USPTO posts these forms, international applications, subsequent designations, and responses to notices of irregularities must be submitted on paper. Since the International Bureau (IB) of the World Intellectual Property Organization will not accept an international application or subsequent designation that does not appear on an IB form, applicants should use the forms available on the IB web site at http://www.wipo.int/madrid/en/.

These forms can be completed online, printed, and then mailed or hand delivered to the USPTO. If mailed, all Madrid Protocol-related documents must be sent to Commissioner for Trademarks, P.O. Box 16471, Arlington, Virginia 22215-1471, Attn: MPU. This new address applies solely to Madrid-related submissions. Any other trademark-related correspondence that is sent to the alternative address will not be accepted, and will be returned to the sender. The changes are effective from November 2, 2003 to January 2, 2004 and the USPTO will issue a notice announcing any extensions at least ten business days before the extensions commence.

As discussed by Hanno Rittner at the APLF Roundtable on October 16, 2003 available at http://www.aplf.org/private/private-events.shtml, the Madrid Protocol offers streamlined procedures for international trademark protection with several potential pitfalls for U.S. trademark owners:
  • Restricted Goods and Services: Any goods limitations in the home-country U.S. application will carry over into the related Madrid protocol applications resulting in narrower protection than may be available in Protocol member countries that allow much broader descriptions.
  • Supplemental Registrations: Registration on the U.S. Supplemental Register can not serve as the basis for an International Registration. A descriptiveness or surname refusal in the U.S. could be catastrophic.
  • Central Attack: If, during the first five years the home-country application does not register, or is cancelled, then the International Registration and corresponding foreign designations will be nullified to the same extent. Problems with the home country registration could also be catastrophic.
"Frequently Asked Questions by U.S. Trademark Owners Seeking International Rights," "Madrid Protocol: Tips for Paper Filers," and the Madrid Protocol Exam Guide are available via http://www.uspto.gov/main/newsandnotices.htm. The notice concerning "Temporary Postponement of Electronic Filing and Payment Rules for Certain Madrid Protocol-Related Rules" is available at http://www.uspto.gov/web/trademarks/
and the USPTO's "Rules for Implementing the Madrid Protocol" are available at http://www.uspto.gov/web

U.S. National Application Materials

The Madrid Protocol rule changes also modify certain national trademark procedures. On October 30, 2003 the USPTO issued Exam Guide No. 1-03 entitled "Changes Affecting All Applications and Registrations" which is available at http://www.uspto.gov
. These changes will affect all trademark applicants in the U.S., whether or not they seek foreign trademark protection:
  • Where a mark claims color, the drawing must depict the mark in color, and the applicant must name the color, describe where it appears, and claim the color as a feature of the mark.
  • Where an applicant does not receive a Notice of Abandonment, a petition to revive the abandoned application must be filed within 2 months of actual knowledge of the abandonment stating that the applicant diligently checked the application's status every six months.
  • Extensions of time to file a Notice of Opposition are limited to a total of 180 days after publication even if the applicant consents.
  • Extensions of time to oppose an application filed under the Madrid Protocol may only be filed through the Trademark Trial and Appeal Board's electronic filing system, known as ESTTA.
  • An opposition to a Madrid Protocol filing cannot be amended after filing to add to the grounds for opposition or to add to the goods or services subject to opposition.
For more information on these new trademark procedures, please contact the author of this APLF Update, Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.