The Use Requirement Under the Madrid Protocol

Foreign persons and entities may file for a U.S. trademark application through the Madrid Protocol as an “extension” of their domestic (home country) application.  In doing so, the USPTO does not require “use” of the mark in U.S. commerce.  This is an anomaly in U.S. trademark law because “use” is requires for all trademarks both prior to registration, as well as at renewal.

However, foreign filers should be aware that the mere fact that their trademark registers in the U.S. through the Madrid Protocol, does not mean that the mark is insurmountable.  The mark is subject to challenge by a third-party for non-use, and under the theory of abandonment.  In particular  non-use in the U.S. for three consecutive years is prima facie evidence of abandonment.  The trademark owner fighting abandonment in this case would carry the burden of proving that it had not abandoned the trademark, which is often difficult for foreign entities that have not put the mark to use in U.S. commerce.

Overview of the Madrid Protocol

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) is an international treaty that enables cheap and easy trademark registration in multiple foreign jurisdictions.[1] Under the Madrid Protocol, applicants for domestic trademarks may simultaneously apply for protection in any of the 89 nations that are party to the treaty, and receive the priority date for the domestic application.[2] Registrants who comply with applicable formalities receive an “Extension of Protection” (“EOP”) in the foreign nations. [3]

To receive an EOP in a foreign nation, applicants for U.S. trademarks file a “Request for Extension,” designating specific nations in which it seeks protection. Each nation has a fee for EOPs.[4] The Request must be based on a registration in the applicant’s home country. Further, the request must be for the exact same mark, and the product description must be identical to or narrower than the domestic registration.[5]

Registration of U.S. Trademarks by Foreign Entities Under the Madrid Protocol

To obtain an EOP in the United States for a mark registered abroad, the applicant must submit a Request for Extension declaring (1) a bona fide intent to use the mark in commerce in the United States; (2) a good-faith belief in the right to use the mark in the United States; and (3) that no other person has the right to use the mark, or one confusingly similar, in the United States.[6] Of paramount importance is the requirement that applicants intend to use the mark in commerce.  U.S. citizens applying for federal registration must demonstrate use prior to registration of the mark.[7] Because most foreign nations do not require actual trademark use of the mark prior to registration, the Protocol precludes the USPTO from requiring that of applicants for EOPs.[8] However, if the mark is not used within three years of the EOP being issued, the registration can be challenged under the doctrine of abandonment.

For years, commentators had suggested that EOPs could face cancellation for abandonment,[9] but the issue was firmly decided by the Trademark Trial and Appeal Board in SaddleSprings, Inc. v. Mad Croc Brands Inc., 104 U.S.P.Q 2d 1948 (T.T.A.B. 2012). In that case, the petitioner, a U.S.-based beverage manufacturer, applied to register CROCTAIL for “wine and spirits.” The respondent had received an EOP for CROC-TAIL for beverages in 2007, so the USPTO rejected the petitioner’s application. When the petitioner discovered that the respondent had never actually used the mark in the United States, it filed suit to cancel of the mark under the principle of abandonment. Under Lanham Act § 45, three years of consecutive non-use is prima facie evidence of abandonment.

The respondent argued that EOPs are not susceptible to a challenge of abandonment because there is no “use in commerce” requirement to register EOPs. The Trademark Trial and Appeal Board disagreed. Although use is not required to register EOPs, it is required to maintain EOPs. Article 5(6) of the Madrid Protocol provides that EOPs may be invalidated under the law of the relevant jurisdiction if the defendant has the opportunity to defend its rights. As a matter of public policy, the USPTO does not allow parties to “warehouse” trademarks.[10] That said, the use required is use “in the ordinary course of trade.”[11] Anything more than de minimis use is sufficient.[12]

Online Use Sufficient to Avoid Abandonment

Generally speaking, use by the markholder in interstate or foreign commerce is a jurisdictional requirement.[13] Congress’ authority to grant nationwide trademark protection derives from its ability under Article I, Section 8, Clause 3 of the Constitution to regulate interstate or foreign commerce. The use must be “in the ordinary course of trade.”[14] For companies that conduct business online, this requirement can easily be satisfied if the company has an appreciable amount of American customers.[15]

Although some marks may evade the use requirement if they have become “famous,” there is no bright-line rule on what constitutes “fame” in the eyes of the USPTO. [16] Prudent markholders who wish to establish use online should take note of the following considerations. Advertisements will not suffice to meet the use requirement, so any goods or services offered online should prominently feature the mark, as well as a means for ordering the product.[17] If the point of sale is obfuscated, the Trademark Trial and Appeal Board may find that the website functioned as an advertisement.[18] However, in situations involving non-commercial services incident to a commercial transaction, i.e., hotel reservations, it does not matter that the “sale” occurs in a foreign jurisdiction.[19]

Because the use need only be “in the ordinary course of trade,” the transfer of a noncommercial license for open-source software can satisfy the use requirement.[20] To ensure that your marks are meeting the use requirement in the United States, it is important to understand the norms for each industry. Use in commerce is a relative term, subject to change with the times.

 



[1] Information on the Madrid Protocol, including the complete text, is available on the World Intellectual Property Organization (“WIPO”) website at http://www.wipo.int/madrid/en/legal_texts/.

[2] In disputes where it is unclear which party first adopted the mark, this can be decisive.

[3] An EOP has the same legal effect as a “registration.” See Madrid Protocol Article 4(1)(a) (“[T]he protection of the mark in the Contracting Party concerned shall, as from said date, be the same as if the mark had been registered by the Office of that Contracting Party.”)

[4] The current fee schedule is available at http://www.wipo.int/madrid/en/fees/.

[5] See Guide to the international Registration of Marks Under the Madrid Agreement and the Madrid Protocol, Part B.II § 16.02 (WIPO 2002). Some commentators have said that this is a disadvantage to U.S. trademark owners, as many foreign jurisdictions permit much broader definitions of goods and services than the USPTO. See generally 3 McCarthy on Trademarks and Unfair Competition § 19:31.20 (4th ed.).

[6] USPTO also requires that applications for EOPs be in English. Registration of EOPs is covered by Lanham Act § 66, 15 U.S.C. § 1141f.

[7] The exception being the relatively new (1989) “Intent-to-Use” application, under which an applicant must demonstrate actual use within six months of registration (extendable up to 36 months).

[8] Under U.S. Trademark law, domestic applicants must demonstrate that they use the mark in commerce in order to obtain protection. Because many foreign jurisdictions do not require use in commerce, the Madrid Protocol prohibits the USPTO from conditioning issuance of an EOP on meeting the use in commerce requirement.

[9] See McCarthy on Trademarks and Unfair Competition, § 19:31:20 (4th ed.); see also TMEP § 1904.07 (“An extension of protection to the United States may be invalidated in an administrative or judicial proceeding governed by United States law, such as a cancellation proceeding before the Trademark Trial and Appeal Board or a federal court proceeding.”).

[10] An example would be registering marks with no intent to use them as a means of later extorting exorbitant licensing or assignment fees from a bona fide user.

[11] See TMEP § 901.02.

[12] See generally McCarthy on Trademarks and Unfair Competition, § 19:31:20 (4th ed.).

[13] See The Trade-Mark Cases, 100 U.S. 82 (1879).

[14] See TMEP § 901.02.

[15] In fact, the trademark manual has likened browsing websites to strolling the aisles of brick-and-mortar stores. See T.M.E.P. § 940.03(i).

[16] See e.g., Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004).

[17] In re Dell Inc., 71 U.S.P.Q.2d 1725 (T.T.A.B. 2004) (finding use of the mark where consumers could purchase the good online).

[18] See e.g., In re Genitone Corp., 78 U.S.P.Q. 2d 1819 (T.T.A.B. 2006); In re Quantum Foods, Inc., 2010 WL 1720595 (T.T.A.B. 2010).

[19] Int’l Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359, 361 (4th Cir. 2003) (finding use by the Monte Carlo Casino based on a significant amount of U.S. consumers, despite the fact that no transactions occurred within the United States).

[20] See e.g., Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001).