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Like any other system, the Madrid Protocol has its rough spots. But it will have the one sure benefit of making it easier for Americans to obtain international protection for their trademarks. As treaties go, the signing of the Madrid Protocol has not received much fanfare. Yet after a century of resisting the protocol and its predecessor, the Madrid Agreement, the United States is finally poised to join in the internationalization of trademark protection. Under the Madrid Protocol, a single trademark application in one’s home country can be the launching pad for an international trademark registration, which, in turn, can be extended to other member countries. U.S. businesses are eager. They see the efficiencies and the promised cost savings of the new system. But before companies can begin to count up those extra moneys, the Senate must confirm the treaty and enact the Madrid Protocol Implementation Act. As of late September, that seems to be on track. The stage was set earlier this year when the European Community and the United States resolved a long-standing dispute over the voting on protocol matters by the signatory countries. In fact, such votes, which would be conducted under the auspices of the International Bureau of the World Intellectual Property Organization (WIPO), have never actually taken place. Nonetheless, the United States was arguing that the Europeans have unfairly been granted an extra vote because they could vote both as individual nations and collectively as the European Community. The dispute continued even as the U.S. House of Representatives passed the Madrid Protocol Implementation Act and referred it to the Senate in April 1999. Then in February of this year, the two sides came to a compromise, in which the total number of votes cast by the Europeans would not exceed the number of the EC’s member states. Once this impediment was removed, the Senate Judiciary Committee acted quickly. In short order, the committee OK’d the implementation act, which now sits in the queue awaiting a full Senate vote. On Sept. 5, President Bill Clinton forwarded the Madrid Protocol — that is, the treaty itself — to the Senate for its advice and consent. To the relief of U.S. business, everything at long last appears ready for approval of the protocol and passage of the implementing legislation. GOING ABROAD What will be the effect of the Madrid Protocol on U.S. trademark practice? The impact will be felt in two areas: U.S. trademark owners will be able to utilize their domestic applications and registrations as the bases for international registrations. Conversely, foreign trademark owners who obtain international registrations will be able to use those registrations to extend the protection of their marks to the United States. To obtain an international registration under the Madrid Protocol, the U.S. owner must first possess a traditional U.S. trademark application (called a basic application) or registration (called a basic registration). Then the U.S. owner must file an international application with WIPO’s International Bureau. This application must be accompanied by a request for extension of protection, which identifies the member countries of the Madrid Union (i.e., those countries that have signed the Madrid Protocol, the Madrid Agreement, or both) in which the applicant seeks protection. For a period of five years from the date of issuance of the international trademark registration through the Madrid Protocol, that registration and its extension to other member countries will be subject to the trials and tribulations of the underlying U.S. basic application or registration. For example, if the basic application is abandoned, so too will be the international registration and its extensions. If the description of goods or services is limited in the basic registration, so too will be the goods or services covered by the international registration. After five years, the international registration will stand on its own, without regard to the fate of the underlying application or registration. It’s important to understand that the Madrid Protocol does not automatically permit registration of marks in other member countries. On the contrary, the request for extension of protection is simply an expedited form of trademark application. The request is examined in the same manner as other trademark applications within those countries. Trademark authorities may deny such requests on the same grounds as applications filed under the national process. However, the national authorities have only 18 months from the date of request for extension of protection in which to deny the extension. After that, it’s granted. Under the proposed U.S. legislation, a request for extension of protection from a foreign trademark owner will mature into a “certificate of extension of protection.” This certificate will be treated in the same manner as a traditional principal-register registration. The registrant will need to file periodic affidavits of use with the U.S. Patent and Trademark Office to maintain the registration. Certificates of extension will also be eligible to become incontestable under �15 of the Trademark Act of 1946. IMPERFECT PROTOCOL While simple enough in theory, the changes wrought by U.S. acceptance of the Madrid Protocol will be more complicated in practice. The likely volume of such requests for extension of protection will certainly challenge the resources of the PTO. The greater volume will also inevitably create a greater number of opposition and cancellation proceedings before the Trademark Trial and Appeal Board. WIPO’s International Bureau will face a similar challenge when confronted with the rise in international applications and requests for extension from the United States. For U.S. trademark owners, the problem of delays may be exacerbated by the differences between the examination systems in the United States and many other countries. The PTO requires a more particular specification of goods and services than do the trademark offices of many other nations. Under the Madrid Protocol, this restricted coverage will carry over into the international registration. U.S. trademark owners may find that their international registrations are more substantially limited than those of trademark owners from other countries. The appeal of cost savings, which have been estimated by the International Trademark Association to be as high as 67 percent of the current cost of registering trademarks internationally, will draw many into the protocol system. But hidden beneath the veneer of supposed savings is a crucial assumption — that requests to extend protection will rarely be refused by other countries. The cost of responding to refusals will not be any lower and thus could undercut the initial savings. Finally, the field for conflicting marks will expand dramatically. In the past, searches to determine the availability of a trademark entailed a review of federal, state, and common law references. Upon adoption of the Madrid Protocol Implementation Act, a search of the international register will become necessary. Search services will need to incorporate this additional work into their protocols. Because the last major impediment appears to be gone, the United States should soon become a member of the Madrid Union. Then, it will take some time and patience to work out the issues, the rules, and the effects of this new approach to trademark protection. But U.S. businesses appear ready and willing to use the Madrid Protocol to enhance their international competitiveness.

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