Foreign Registrants Using Madrid: Your Proof of Use Affidavits are Treated Differently – But the Rules May be Changing for the Better
By: DEAN R. KARAU
February 2010
To the relief of foreign trademark owners, the United States joined the Madrid Protocol in 2004, affording non-U.S. mark owners the ability to rely on their International Registrations to extend protection to the U.S.
However, the U.S. trademark registration scheme currently treats Madrid-based U.S. registrations differently than other U.S. registrations.
A very important difference arises when the time comes for registrants to file affidavits and specimens proving the use of their trademarks in the U.S.
For all but Madrid-based U.S. trademark registrations, there is a six-month “grace period” for filing the use affidavits and specimens due between the fifth and sixth year after registration and at each ten year anniversary. There also are means by which to correct deficiencies after the due date.
But Madrid-based U.S. registrations have neither the same grace periods nor the same means by which to correct deficiencies – there currently is no grace period for the first affidavit and a shorter three-month grace period for subsequent affidavits.
Thus, foreign trademark owners with both Madrid-based and non-Madrid-based U.S. trademark registrations need to track each type of registration differently.
The impact of these differences will begin to arise this year as the first use affidavits for Madrid-based U.S. registrations come due, some as early as this month.
However, on January 28, 2010, the U. S. Senate took the first step to amend U.S. trademark law in order to fix this anomaly. The Senate’s unanimously-passed bill, if also passed by the U.S. House of Representatives and signed by President Obama, will rectify these discrepancies and treat Madrid-based U.S. registrations the same as other U.S. trademark registrations.
Until the U.S. scheme officially changes, however, foreign trademark owners relying on Madrid to extend protection of their marks to the U.S. must be careful. Taking the time now to review trademark portfolios and acting early can minimize the chances of inadvertent – and perhaps fatal – errors.
Below is a chart with an example of the current scheme under U.S. law for typical U.S. registrations and Madrid-based U.S. registrations, with the differences noted by the arrows and shading:
