One year of Madrid Protocol

By Carl Oppedahl

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November 2, 2004 marks the one-year anniversary of membership of the US in the Madrid Protocol.

What has happened during this first year? How many US applicants have availed themselves of Madrid to seek protection outside of the US ("outbound filings")? How many non-US applicants have used Madrid to pursue protection within the US ("inbound filings")?

Outbound filings.

About 1757 Madrid Protocol applications have been filed with the USPTO as the Office of Origin. Of these, about 1257 have been certified to the International Bureau, and about 842 have received "registered" status from the IB.

The rate of such filings with the USPTO has been fairly steady for many months, at about forty filings per week. It us thus perhaps unsurprising that the USPTO Madrid Processing Unit has kept up quite well with the flow of applications. In most cases, the MPU certifies an application the same day it is filed.

As may be seen from these numbers, a rather surprising one-fourth or so of all Madrid filings in the US OOO fail certification. How can so many applications fail the certification? The usual mistakes include the following:

• no application or registration number is listed;
• applicants who claim priority (box 6 on form MM2) fail to include the application number in box 5 of form MM2;
• the listed Goods/Services are beyond the scope of the basic application/registration;
• for the description of the mark field, the applicant enters a description that is not found within the basic application/registration, or adds language to the international application description; therefore, the basic application/registration and the international application are not identical;
• applicant's name is not identical to the name in the basic application/registration; and
• either the mark is not identical or it not provided at all; the mark must fit in box 7(a of form MM2.

Now that the e-filing system for Madrid is available the number of failed certifications by US filers should drop substantially, for the simple reason that a filer can choose a "one-click" filing which simply copies the entirety of the TARR record of the basic filing into the Madrid application. See "One-click" Filing of Madrid Protocol Trademark Applications in the USPTO.

Inbound filings.

About 8476 Requests for Extension of Protection ("REP") into the US have been filed with the IB. Of these, about 5838 have the status of "registered" with the IB. REPs for registered Madrid filings are transmitted electronically to the USPTO, and nearly all of these (about 5426) are in the USPTO's TARR system. In other words, it appears that USPTO is now keeping up quite well with incoming REPs in terms of entering them into TARR.

Once a REP gets into TARR, how long does it take to get examined? Analysis of the TARR history of hundreds of REP applications and hundreds of non-REP applications indicates that the applications now being examined have filing dates in April of 2004, regardless of whether they are REP or non-REP applications. Thus, REPs are not being examined faster or slower than non-REP applications. The pendency is about 6-7 months. Right now, of the about 5427 REPs in TARR, about 37% or 2034, are not yet assigned to an Examining Attorney, having been filed more recently than April of 2004.

Once a REP enters the US, what happens to it? Of the REPs that have been examined, some 2841 of them have received Office Actions. (This represents well over 90% of all REPs.) Stated differently, very few REPs, well under 5%, are getting approved for publication on the first try.

Why do REPs receive Office Actions? Your scribe's informal polling of non-US trademark firms identified two problem areas.

• Legal entity information missing. On Form MM2 there is a place (box 2f(ii)) where the legal entity is invited to indicate its entity type and the place of organization. If provided, this information populates field 842 in WIPO's Madrid online database, and is in turn provided for the TARR fields called "Legal Entity Type" and "State or Country Where Organized." If a Madrid applicant leaves box 2f(ii) blank, this ensures a USPTO Office Action demanding that the information be provided.
• Identification of goods/services. A typical Madrid application prepared outside of the United States in (for example) International Class 25 will list the identification of goods simply as "clothing, footwear, headgear." In the US, this will almost invariably trigger an indefiniteness rejection with a demand that the applicant specify the types of clothing and headgear. (I say "almost" because Madrid application number 79000212, which was scheduled to be published on November 16, 2004, has been yanked from publication with just such an ID. I predict that before this application gets published, the ID will be amended to limit the goods in this way.

A handful of REPs (83) now have a status of "approved for publication" and another 212 have passed "final review prior to publication". (Three of these have been withdrawn from publication.) Thus about 292 marks are on their way to being published.

No REP has yet been published for opposition. The first one is scheduled to be published November 9, 2004 and another 22 REPs are to be published a week later, November 16. None of these marks is in color. Perhaps the Trademark Office has not yet worked out how it will handle the publication of color marks.

What is the balance of inbound to outbound filings? At first glance one might think there are far more inbound filings (8476) than outbound filings (about 1757). But It should be kept in mind that on average, each outbound filing has half a dozen designations, and thus amounts to half a dozen REPs. Thus the number of incoming and outgoing REPs is in rough parity.