Madrid Applications - Avoiding A Provisional Refusal From The USPTO

Nadaline Webster,

There is no such thing as a single worldwide trademark registration but the Madrid System of trademark registration managed by the World Intellectual Property Office (WIPO) in Geneva provides a basis for international registrations. It currently has 98 contracting parties providing registrations in 114 countries. That figure is set to grow again this year expanding the opportunities for protection available to trademark owners that do business across multiple regions or indeed the globe!

Not only is the number of regions in which you can submit applications growing but the use of the system is growing too. The number of annual applications through the Madrid system grew again last year - by 7.2%, bringing the total number of individual applications for 2016 to 52,550. With your domestic registration serving as a base for the first five years, a WIPO application allows you to pick and choose the countries to which you would like to submit an application, known as designations. Having successfully registered a mark, you can later (subject to availability) expand the scope of protection to other countries, called subsequent designations.

The Madrid Yearly Review provides a variety of statistics regarding applications and registrations every year. It shows that some countries have proven more popular than others in terms of the desire of brand owners to protect their trademarks in that country. In 2016, 22,444 brand owners selected China as a designation, retaining its ten year reign as the most popular country. Close behind are Europe and the US with 21,747 and 21, 276 designations respectively last year. One of the many advantages of the Madrid system is the ability to choose multiple designations, with the average number chosen in 2016 per application being 7.

There is not much between the 3 regions in terms of popularity but there is a difference between the number of designations chosen in an application and a successful registration in each of those regions. According to the Yearly Review, the US represents the largest user base of the Madrid system for the past 3 years but they also issue the largest number of provisional refusals. In 2016, the US provisionally refused 19,855 applications citing the US as a designation. That's over 10,000 more than the next region on that list, Republic of Korea who issued 9,327 refusals.

While you can choose any or as many designations as you like, your proposed mark must pass muster in each of those countries individually. Additionally, your application must meet all the criteria required by that country for its own internal processing of applications. In practice then, a working knowledge of the systems at use in each of the regions in which you wish to designate, can be extremely helpful in reducing the likelihood of your application meeting a provisional refusal head on.

While the volume of provisional refusals issued from the USPTO was down by a small amount this year, the US trademark registration process still provides a stumbling block for many. Our webinar provides a focus on the US trademark registration process and in particular, gives insight and assistance to those considering an application from outside the US, whether that is a Madrid application or a direct application. Our experts, Randy Michaels, Elyssa LeFevre Chayo and Tiffany Valeriano will guide you through the pitfalls and provide solutions to common issues when attempting to gain a Federal trademark registration.

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