Utilizing The Madrid Protocol Todd S. Bontemps, Esq. Cooley Godward LLP Christian Larsen Cooley Godward LLP Legal Texts regarding the Madrid System:

The Madrid Protocol  What is it?  When, How and Why should we use it?  What are the Pros/Cons?

Quick Summary  One Application, one fee, yields an International Registration (“IR”) which provides protection in multiple countries.  One renewal deadline (with 10 yr. terms), One registration number and One filing possible for amendments and transfer of ownership.  Add’l Countries may be designated at any time.  Organizations may contract to the MP

The Madrid System (Madrid Agrt vs. Madrid Protocol)  The US is now a party to the Madrid Protocol (but not the Madrid Agreement) and filings are expected to commence in November or December  A List of Contracting States may be found at: (see Attachment ‘A’)

“MA,” “MP,” “MA/MP” ?  A US entity may designate any MP or MA/MP country in its IR. However, a US entity may not designate an MA-only country.  Conversely, any MP or MA/MP country may designate the US in its IR

What Is It? MP Application is a procedure for filing multiple foreign applications, and is:  Based on a national application or registration  In French or English  Subject to an 18 month examination process (see opposition exception, up to 7 months)  Paid for with a single fee.

Fee Breakdown  Basic Filing Fee  Designation Fee  Int’l Class Fee (beyond initial 3 classes)  Handling Fee  List of current Fees: (see Attachment ‘B’)

MP Filing Procedure (US Office of Origin) USPTO IR Request submitted The Request may accompany the Origin App. USPTO Certifies the IR [i.e. conforms to corresponding US app/reg.] WIPO Returns to USPTO for correction [3 Mo. Deadline] Examined in each of the Designated Countries WIPO Forwards Requests to Designated Countries USPTO Forwards IR to WIPO [2 MO Deadline to retain Origin App. date] WIPOConfirms Basic Reqs Met NO YES

“Country of Origin” Defined Applicant’s country of origin is any country party to the Protocol and where Applicant Applicant’s country of origin is any country party to the Protocol and where Applicant  has a real and effective industrial or commercial establishment, or  domicile, or  is a national

Office of Origin  Date of Office of Origin Application is the IR Effective Date  The IB does not examine marks for registerability or cite identical & similar marks. Examination and/or citations are handled by the offices of the designated countries  A change of ownership may change whether the MA or the MP governs an IR.

Madrid Protocol Pros  Basic filings may be made without obtaining local counsel.   Paris Convention priority can be claimed without the need to institute separate national filings.  Additional countries may be designated at anytime (e.g., the EU may be designated once it accedes)  After 5 years the IR registration becomes independent of the origin application/registration  Renewals and amendments to foreign registrations - single form, single fee.   IR will envelope prior national MP or MA/MP member trademark registrations.

Pros (cont’d)  Renewals and amendments to foreign registrations - single form, single fee.   IR will envelope prior national MP or MA/MP member trademark registrations.

Cons  IR is dependent on the initial application or registration of origin (home application/registration) for a 5 year period.  Amendments or cancellation or withdrawal of the application or registration of origin is a “central attack” to the entire IR application/registration.

Cons (cont’d)  Due to the shortened examination period required by the MP (12-18 mos.), the USPTO is likely to require e-filings and may need to reduce Response to Office Action deadlines.  The procedures and rules for amending a mark (i.e. material alteration) may not translate to the resulting IR

Cancellation  Under the MP, an IR is dependent on the home registration for 5 years, however, should the home registration be successfully cancelled, the IR may be converted to national registrations (in those countries where the IR was not rejected) with the same priority date as the original IR.

Converting National  An application which is rejected may be converted to independent national applications although no IR registration will issue (rights will be preserved partially)

Foreign / US Counsel Likely OA–Triggers:   Color applications are submitted to the USPTO in black & white and this procedure does not comply with the IB. A second drawing of the mark in color will be required.   Goods / Services descriptions will often be overly broad

Misc.   NEW Filing Basis - The MP adds a fifth filing basis for registration. Section 65(a): foreign MP applicants can file as MP registrants.   Double Publication - The issues surrounding publication in the WIPO Gazette and republication in the US OG, as well as the issues surrounding extensions to oppose and the 7 month deadline imposed by the MP, are still up in the air.

Hypo o Software company based in Seattle. o Has a subsidiary office in Australia, and has 3 distributors in the UK. o Wants to file SiCLone mark in: US, Canada, Australia, UK, Germany, Norway, Japan, Singapore, and China US, Canada, Australia, UK, Germany, Norway, Japan, Singapore, and China CLIENT

Hypo o “Hey, Thanks A Bundle, Cooley!”