Intellectual Property Law

Chapter 8 Lecture Notes

Major points to be addressed in the chapter materials include the following:

1. Applications for U.S. trademark registrations can be made by anyone (regardless of
nationality) based on actual use of a mark or intent-to-use a mark. Additionally, under
Section 44 of the Lanham Act, the United States has assumed certain obligations
under international agreements, chiefly the Paris Convention, to allow any person
whose country is a party to the Paris Convention to apply for registration based on
one of the following:

• An application filed in the applicant’s country of origin
• A registration secured in the applicant’s country of origin
Finally, under Section 66(a) of the Lanham Act, foreign nationals may file requests
for extension of protection of their marks to the United States based on a bona fide
intent to use the mark in U.S. commerce.

2. The Paris Convention is based on the principle of reciprocity, meaning that member
nations must provide the same trademark protection to citizens of other member
nations as they do for their own citizens.

3. Under the Paris Convention, if the applicant files an application in the United States
within six months of filing the application in the foreign country, the applicant’s
priority date in the United States will relate back to the earlier foreign filing date.

Similarly, if an application is filed in the United States, the applicant has six months
from the date of that U.S. application to file an application for the mark in any Paris
Convention member nation and “capture” the earlier U.S. filing date for purposes of
priority.

4. A significant benefit of Section 44 is that it allows individuals/companies who have
secured registrations in a member nation to use that registration as a basis for securing
a U.S. registration even if the mark has not been used in the United States. In that
way, foreign applicants receive more favorable treatment than U.S. applicants who
can never secure a U.S. registration without showing use in commerce. Similarly,
under the Madrid Protocol, foreign nationals may use a basic application or basic
registration in their home country as a basis upon which to secure an international
registration, effective in the United States, even though they have not yet used the
mark.

5. Foreign applicants may actually secure U.S. registrations even if the mark has not
been used anywhere in the world, primarily because many foreign countries grant
trademark registrations to the first to file the application (while the U.S. principle is
that the first to use the mark has rights).

6. Under Section 44, the foreign applicant must state in the U.S. application that it
claims priority under the applicable statute. If the U.S. application is based upon a
foreign application or registration under Section 44, a certified copy of the foreign
registration must ultimately be submitted to the USPTO.

7. Applications filed under Section 44 usually designate a domestic representative,
namely someone in the United States (usually a law firm) to receive correspondence
regarding the mark/application.

8. Applications filed under Section 44 must comply with other U.S. requirements. For
example, a drawing of the mark must be submitted with the application. Applicants
must also identify the goods/services offered under the mark in compliance with
USPTO policy (which is often stricter than that of many foreign countries, which
allow applicants to claim very broad goods, such as “computer goods in I.C. 9”).
Dates of first use and specimens might not be stated/filed inasmuch as the mark might
not be in use anywhere. Obtaining a foreign trademark registration is not a guarantee
that a U.S. registration may be obtained.

9. Although applications under Section 44 are exempt from the use requirements of the
Lanham Act, they must meet all other requirements for registration set forth in the
Act. Thus, securing a registration in the country of origin does not guarantee
registration in the United States. A mark registered in another country might be found
to be descriptive by the USPTO and might be refused registration. Similarly, it might
be rejected on the basis it is confusingly similar to another mark.

10. If a Section 44 application is refused registration on the basis the mark is merely
descriptive, the applicant can overcome the refusal by asserting that the mark has
acquired distinctiveness or secondary meaning through its long-standing use;
however, such use must have occurred in the United States. Use solely in a foreign
country will not be sufficient to show the mark has acquired distinctiveness.

11. For U.S. applications based upon foreign applications under Section 44(d), the
applicant must eventually submit a copy (usually a certified copy) of the foreign
registration. If the foreign application is proceeding slowly, the USPTO can suspend
action on the U.S. application until the foreign application matures into a registration.

12. After publication of the mark in the OG, the mark applied for under Section 44 will
proceed to registration. Once issued, this U.S. registration exists independently from
the underlying foreign registration and is subject to all of the provisions of the
Lanham Act, such as the requirements for filing declarations of continued use
between years five and six after registration and every ten years after registration,
renewals, and so forth.

13. If a U.S. company intends to offer its products/services abroad it should strongly
consider obtaining trademark protection in the various foreign countries in which it
intends to do business. In some countries, trademark piracy is common and a U.S.
company might consider filing applications in those countries to preserve its rights to
its marks. Moreover, because many countries do not require use of a mark in order to
secure a registration, a U.S. company can protect its mark even in advance of use of
the mark in the foreign country.

14. Under the Paris Convention, within six months of filing an application in the United
States a trademark owner can file a trademark application in a Paris Convention
country and capture the earlier U.S. filing date.

15. Most U.S. companies use foreign associates (law firms with which they have good
relationships) to conduct searches and prosecute the application in the foreign
country.

16. The progress of applications filed in foreign countries varies widely, with some
countries subjecting the application to a lengthy and substantive examination process
and others subjecting the application to a more cursory review. Registrations in many
foreign countries are valid for ten years although proof of use must be submitted at a
certain time (usually after the third or fifth year following registration). If use is not
proved, the foreign registration will be canceled (similar to the U.S. practice of
canceling registrations if the Declaration or Affidavit of Use is not filed between
years five and six and every ten years after issuance of the U.S. registration).

17. If the owner of a foreign trademark registration allows or licenses another to use the
registered mark, most foreign countries require (or strongly urge) that a registered
user agreement be filed with the foreign trademark office, providing basic
information as to the mark and the parties. In the United States, however, licensing
arrangements are viewed as private agreements between the parties and are therefore
seldom filed with the USPTO.

18. In 1996 the European Union Trademark (EUTM) system (formerly called the
Community Trademark system) was established by the 15 member countries of the
European Union (EU), making it possible for an applicant to file one trademark
application that protects the mark in all EU countries. This process saves a great deal
of time and money. Use is not required to obtain an EUTM registration and priority
can be claimed under the Paris Convention, allowing an EUTM application to capture
an earlier U.S. filing date. One renewal application will keep the registration in force
in all member countries. The EU now comprises 28 countries.

19. One disadvantage of the EUTM System is that an EUTM application can be refused if
a ground for refusal exists in just one member country. In such a case, the EUTM
application fails completely, in an “all-or-nothing” scenario. The applicant must then
pursue individual registrations in each country in which protection is desired.

20. The United States is now a party to the Madrid Protocol, an agreement that allows
trademark protection for more than 90 countries and all of the EU countries by a
single trademark application. The Madrid Protocol allows a U.S. trademark owner to
file for registration in any or all of the Madrid Protocol member nations by filing one
application with the USPTO rather than requiring individual applications (in different
languages) filed in multiple trademark offices. Similarly, foreign nationals may rely
on the Madrid Protocol and request an extension of protection of their marks to the
United States (and other Madrid Protocol countries).

21. Whether a Madrid Protocol application originates from the United States or requests
an extension of protection to the United States, the procedure is much the same: The
international application must be based on one’s home country basic application or
basic registration. The application is then subject to a fairly straightforward
examination by one’s own trademark office, which “certifies” the application if its
filing details are correct. The application is then forwarded to WIPO’s International
Bureau (IB), which “registers” the mark, publishes it, and then notifies the various
countries in which protection is desired. Those countries then subject the application
to examination in the same manner in which they handle their own domestic
applications. If the application is not rejected within a specific period of time (either
12 or 18 months), it will automatically proceed to registration.

22. Applications under the Madrid Protocol may claim priority under the Paris
Convention.

23. Registrations secured under the Madrid Protocol are dependent on their home country
applications or registrations for five years. If the home country application or
registration is cancelled or refused for any reason, the Madrid Protocol registration
will also be invalidated. This is known as the principle of “central attack.” If the
international registration is cancelled, however, it can be “transformed” or
“converted” into separate national applications in the various countries in which it
was previously effective. After five years, the Madrid Protocol registration stands on
its own.

24. A Madrid Protocol applicant may later “designate” other countries to which it desires
that trademark protection extend.

25. The period of duration of a Madrid Protocol registration is ten years. It may be
renewed for additional ten-year periods by a single filing with WIPO’s IB.

26. The Madrid Protocol allows an easy and efficient way to secure trademark
registration in numerous countries by filing one application in one language with one
single set of fees (rather than pursuing trademark registration on a country-by-country
basis, which would be far more expensive and time consuming).

27. Countries may belong to the Madrid Agreement, the Madrid Protocol, or both. The
United States is a member only of the Madrid Protocol, which is believed to be a more
flexible route to international trademark registration than the Madrid Agreement.

28. The United States, Mexico, and Canada are parties to the 1994 North American Free
Trade Agreement (NAFTA). The most significant change in U.S. trademark law
resulting from NAFTA is that trademarks that are geographically misdescriptive
cannot be registered in the United States, even if they have acquired secondary
meaning. Thus, an application for PARISIAN NIGHTS for perfume originating in
Georgia cannot be registered (even if it has acquired secondary meaning) because the
mark misdescribes the area from which the goods originate. Consumers would be
favorably disposed toward French perfume and yet the goods are not from France.
Thus, the mark is geographically misdescriptive.

29. The General Agreement on Tariffs and Trade (GATT) was concluded in 1994 and is
adhered to by most industrialized nations, including the United States. The Uruguay
Round negotiations brought IP rights into GATT-WTO system for the first time
through an agreement called the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS). TRIPS is the most comprehensive multilateral agreement
on intellectual property and produced two key changes to U.S. trademark law:

• Nonuse of a mark for three years creates a presumption the mark has been
abandoned (prior to TRIPS, the period was two years); and
• GATT now precludes registration of marks for wines and spirits that contain
misleading geographical indicators. Thus, a wine bearing the designation Napa
must originate in that region.

30. INTA was founded in 1878 to advance and support trademark use. It has more than
6,500 members (companies and law firms and other parties interested in trademark
protection). INTA plays a significant role in trademark law and reform and was
instrumental in promoting the passage of the 1988 Trademark Law Revision Act
(designed to bring U.S. trademark law into conformity with the international
community) and the Trademark Dilution Revision Act of 2006. It is presently
working with ICANN to protect trademark rights in the wake of the introduction of
new gTLDs (see Chapter 7). INTA’s focus is exclusively on trademark law.

31. WIPO, founded in 1893, is a specialized agency of the United Nations and focuses on
promoting intellectual property throughout the world for its more than 185 member
nations. WIPO administers various IP treaties including the Paris and Berne
Conventions, the Madrid Protocol, and the Madrid Agreement. WIPO promotes all
aspects of IP law (trademarks, copyrights, and patents).