Dean R. Karau Intellectual Property

dkarau@fredlaw.com

612.492.7178

Printable Version

Foreign Registrants Using Madrid: President Obama Signs Law That Will Treat Madrid and Non-Madrid Proof of Use Affidavits the Same

By: DEAN R. KARAU

March 19, 2010

To the relief of foreign trademark owners, on March 17, 2010, President Obama signed into law the Trademark Technical and Conforming Amendment Act of 2010, fixing an anomaly in U.S. trademark law which had treated Madrid-based U.S. registrations differently than other U.S. registrations when the time came for registrants to file affidavits and specimens proving the use of their marks in the U.S.

As reported in Foreign Registrants Using Madrid: Your Proof of Use Affidavits are Treated Differently – But the Rules May be Changing for the Better, Trademark Topics, February 2010, for all but Madrid-based U.S. trademark registrations, the former U.S. law provided for 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.

But Madrid-based U.S. registrations did not have the same grace periods nor the same means by which to correct deficiencies. That meant that foreign trademark owners with both Madrid-based and non-Madrid-based U.S. trademark registrations needed to track each type of registration differently. The impact of these differences would have begun to arise this year as the first use affidavits for Madrid-based U.S. registrations came due.

The new law rectifies these discrepancies and treats Madrid-based U.S. trademark registrations the same as all other U.S. registrations.

Below is a chart with an example of the new scheme under U.S. law for typical U.S. registrations and Madrid-based U.S. registrations:

Madrid and Non-Madrid-Based U.S. Registration: