Foreign Trademark Law

Trademarks: First Madrid Protocol Affidavits Coming Due

January 26, 2010

In a recent blog update (link below), USPTO Director David Kappos issued a reminder that the first affidavits for extensions of trademark protection issued under the Madrid Protocol will be coming due between February 1, 2010 and February 1, 2011.

The Madrid Protocol is a procedure by which trademark filers may apply for a single international registration which may then be “extended” to individual member countries.  Depending on the circumstances, this can result in significant savings for the registrant when protection in multiple countries is desired.  The United States became a member on November 2, 2003 and subsequently began issuing extensions of protection to qualified applicants on February 1, 2005.

As with traditional US federal trademark filings, registrants using the Madrid system are required to file affidavits of commercial use or excusable nonuse to keep their extensions of protection in force starting with the fifth year after registration.  However, there are some discrepancies between the two systems concerning the statutory procedures and limitations for filing affidavits.  For example, the US federal system allows a six month grace period for filing affidavits.  For registered extensions of protection, however, there is currently no grace period for the first affidavit and only a three month grace period for subsequent affidavits.  Trademark registrants and their counsel need to be aware of these differences, as a missed deadline can result in cancellation.

Director Kappos’ blog post referenced above makes it clear that although the USPTO supports legislative changes to bring the two statutory schemes into agreement, the Office will continue to enforce the filing deadlines as mandated under the current statutes.  Trademark practitioners and registrants would therefore be wise to begin reviewing their portfolios and docketing procedures to ensure that all relevant deadlines are being met for extensions of protection issued starting in 2005.

Link to Director Kappos’ blog entry: USPTO Blog