Intellectual Property Law

Chapter 8 Discussion Questions

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?

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?

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

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?

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

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

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.

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?

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?