Intellectual Property Law

Chapter 8 Discussion Answers

1. ABC Inc., an Italian company, secured a trademark registration in the United
States on February 15, 2016, based on Section 44(e) of the Lanham Act and its
earlier Italian registration (although it had not used the mark in Italy). What
requirements are now imposed on ABC with regard to maintaining the mark?

All U.S. requirements relating to use and maintenance of marks apply to
this mark as well. Thus, ABC must file an affidavit of use between years
five and six after registration (and every ten years thereafter), and it must
renew the registration every ten years. If it has not commenced use by
Feb. 15, 2022, the registration will be cancelled. A foreign applicant
relying on Section 44(e) may obtain a registration without showing use,
but to maintain the registration in force, use must be shown between
years five and six after registration (and a party could seek to cancel the
mark based on abandonment after three years because nonuse for three
years will result in a presumption of abandonment).

2. Henry Young, a U.S. citizen, applied for an EUTM trademark application last
year. The application was approved in all EUTM countries except Finland.

a. What is the effect of the refusal of Finland to register the mark?

The EUTM is a “unitary” system, meaning that when the
application failed in Finland, it then fails in all countries. The
“all-or-nothing” scenario of the EUTM means that the
registration is either valid in all 28 EU countries or in none of
them.

b. Is there anything that Henry can do to “save” the registration?

Henry can convert his EUTM application into separately filed
applications in any countries in which the application has not
been refused and obtain registration on a “piecemeal” basis in
various EU countries (other than Finland).

3. Sophia Minelli, a citizen of Italy, received an extension of protection for her mark
VILLE D’ITALIA (originally registered in Italy in 2015) in the United States on
March 18, 2015, on which date she received several other Madrid Protocol
registrations (in Poland, Switzerland, and Vietnam). The registration was canceled
in Italy in 2016.

a. What is the effect of the cancellation in Italy on the other registrations, if
any?

For the first five years after any Madrid Protocol extension of
protection is registered, it is dependent on the status of its
home country basic registration. If such is invalidated for any
reason, the resulting international registrations will also be
invalidated, under the principle of “central attack.” Thus, the
registrations in the United States, Poland, Switzerland, and
Vietnam are now all invalid.

b. Is there anything that Sophia can do to “save” the registrations?

Sophia’s international registrations in the United States,
Poland, Switzerland, and Vietnam can be “transformed” or
“converted” into separate national applications in those
countries (in which her registration was originally effective but
now invalidated).

c. Would your answer be different if the date of the international registration
was 2010? Discuss.

Yes. After five years, the international registration stands on
its own and exists independently of its home-country
registration. Thus, the cancellation of the registration in Italy
in 2016 would have no effect on the validity of the international
registrations if they were received in 2010.

4. Alex received an EUTM registration for the mark FUEGO on June 14, 2011. He
has used the mark only in Greece. May Alex’s registrations in the other EU
countries be cancelled for nonuse in those countries? Discuss.

No. Use in any one of the member nations of the EU constitutes use of
the mark for all 28 member nations and will protect an EUTM
registration throughout the EU against cancellation of a registration
due to nonuse of a mark.

5. After Filippo obtained an EUTM registration for his mark in 2008, Croatia was
added to the EU in 2013. What must Filippo do, if anything, to secure protection
for his mark in Croatia?

Filippo need not do anything. If a party has an EUTM registration in
force at the time of enlargement of the EU to other nations, protection
is automatically extended to the territories of the new member nation.

6. Sandro obtained a Madrid Protocol international registration for his mark in six
Madrid Protocol countries in 2015. He would now like to add three countries to
the registration. May he? What should he do?

Sandro may apply for a “subsequent designation” and add these other
three countries to his registration by filing a request for such.