American businesses are at a significant disadvantage when it comes to international trademark filings. We want to change this. Please sign and share this open letter to call out the issue and request equal treatment.

The Honorable Robert Lighthizer Ambassador Via Courier United States Trade Representative 600 17 th Street NW Washington, DC 20006

EQUAL - Equal Treatment In The United States And Equal Access To The Protocol

Dear Ambassador Lighthizer:

We are contacting your office to request that it review and address the one-sided nature of the Madrid Protocol1 and its fundamental unfairness to American business.

To be successful even the most brilliant new products must stand out. Since the early 1970’s, various companies had dabbled with mobile communicators,2 but it took the bold marketing genius of Steve Jobs to make smartphones essential. The iPhone, he said, was like having your life in your pocket. Jobs made the iPhone stand out.

A critical part of standing out is a unique trademark – the attention-getting word, phrase, or logo—that distinguishes a product. Companies must protect their trademarks against infringement and unfair competition; otherwise, their trademarks will cease to distinguish their products from those of the competition.

The Madrid Protocol promised American trademark owners that they could easily and inexpensively protect their trademarks in international markets.3 But for the United States, the Protocol has backfired. It does not really help American trademark owners to easily and inexpensively protect their trademarks abroad. Instead, it enables their foreign competitors to protect theirs in the United States and to a degree that is not possible for Americans. It is time for equal: time to provide equal treatment in the United States and time to provide equal access to the Protocol for American trademark owners.

The comprehensive system created by Congress gives trademark owners all the rights they need to protect their trademarks in the United States. However, because United States trademark are based on use, the system results in trademark registrations that include more limited descriptions of items than those that are often available in foreign countries, where applicants need not use their mark on the goods described.4 The description of goods in a registration is important because it sets boundaries on the scope of protection available against infringement.5

Protocol applications are dependent filings, meaning that applicants must have a trademark application or registration in their home country that includes the mark and describes all of the goods and services claimed in their Protocol applications.6 Accordingly, when seeking to protect their trademarks abroad, American companies must choose whether to file through the Protocol using the narrow, use-based descriptions of items from their United States’ registrations or to file nationally through foreign trademark offices using the wider descriptions available in foreign countries. Most American companies will chose to file through foreign trademark offices so that they can use the wider descriptions and secure a broader scope of protection.7 Accordingly, the Protocol is of little assistance to most American trademark owners.

Not only does the Protocol system fail to effectively help American companies protect their trademarks abroad, but worse, it puts them at a major disadvantage to foreign competitors in the United Sates market. While American companies must use their marks on every product and service claimed in an application prior to registration or face charges of fraud and invalidity,8 foreign Protocol applications can proceed to registration in the United States without any use in commerce.9 Moreover, Protocol filings often remain unused10 and clog-up the federal register.11

Thus, American Elon Musk, who intends to go to Mars, cannot get a trademark registration for “Mars landing vehicles” in the United States because he has yet to put the mark into use on those goods, but through the Protocol naturalized Russian Gerard Depardieu, who has no prospect of going to Mars, can. And when Musk does go to Mars, Depardieu’s registration will still be on the Federal Register to potentially block Musk from getting a registration.

The Protocol is fundamentally inconsistent with the system laid out by Congress for the protection of trademarks and in practice is contrary to the interests of American trademark owners. The good news, however, is that the most glaring unfairness can be resolved through EQUAL. Two steps are necessary:

  1. Insist that Protocol Applications are used in commerce on all the goods and services claimed prior to registration. Congress can immediately tackle this with an amendment to 15 U.S.C. § 1141h(3) of the implementing legislation. The Protocol does not require that applications be excused from use12 and why Congress chose to unfairly prefer foreign applicants in this way is bizarre. Correcting this inequity will establish equality of treatment, level the U.S. playing field, and staunch the accumulation of zombie Protocol registrations on the Federal trademark register; and
  2. Abolish dependency. Dependency is the requirement that applicants have a trademark application or registration in their home country that includes the mark and describes all of the goods services claimed in their Protocol applications. Instead allow applicants to file through the Protocol without a home application or registration. Untethered from their narrow United States registrations, American businesses will be able to claim the wider selection of goods and services they need abroad. Abolishing dependency will require amending the Protocol.13 However, there is a coalition ready to support such change because dependency also prejudices applicants from China, Japan, and South Korea.14 Since together these countries make up a large proportion of world markets, they will have a strong hand to play in righting the Protocol.

Requiring use in the United States prior to registration for applications filed by American and foreign applicants will provide equal treatment. Enabling applicants to file through the Protocol without a national registration will provide for equal access on an equal basis.

In furtherance of the above Congress should act immediately to require use of Protocol trademark applications prior to registration in the United States. As well, the United States Trade Representative should commence negotiations to end dependency.

The outcome will be that foreign companies will no longer secure an advantage in the United States by virtue of their broad home registrations and American companies will no longer be hamstrung abroad by virtue of their narrow United States’ registrations. These changes will improve all our lives by helping more brilliant products to stand out.

If you agree with the above sentiment and wish to add your name, please hit “agree” or send an email to equal@iphorgan.com Signed petitions will be sent to the Chairs of the House of Representatives Judiciary Committee and the Senate Judiciary Committee, and to the United States Trade Representative.

1 Protocol Relating to the Madrid Agreement Concerning The International Registration of Marks.

2 Devices that combined telephony and computing were first conceptualized by Theodore G. Paraskevakos in 1971 and patented in 1973.

3 Sen. Patrick Leahy of Vermont on 1 July 1999. (Congressional Record, V. 145, Pt. 11, July 1, 1999 to July 15, 1999, pg. 15495).

4 The mark must in in use on the items described in a United States’ application while there is no such limitation in most countries.

5 Unlike the United States, many countries use classes or even sub-classes as their guide to the relatedness of items for infringement purposes.

6 Article 6(3).

7 In 2016, the number of Community Trademarks applications filed directly by American companies greatly exceeded the total number of all Protocol applications filed that year by American companies, see https://euipo.europa.eu/ohimportal/en/the-office and http://www.wipo.int/madrid/en/statistics/annual_stats.jsp?type=EN&name=1.

8 15 U.S.C. § 1064(3).

9 15 U.S.C. § 1141h(3) Extension of protection shall not be refused on the ground that the mark has not been used in commerce.

10 Figures derived through TESS show that over 13,000 66(a) registrations were granted in 2008, and nearly 8,000 were abandoned when a first statement of use became due. In the same period, just under 200,000 non-Protocol registrations were issued, and less than half of those were abandoned for failure to file a statement of use.

11 Examiners must cite Protocol filings against confusingly similar later applications.

12 Article 2(1) Paris Convention For the Protection Of Industrial Property As Amended on 28 September 1979 provides for national treatment. Madrid Applications can be subject to the same user requirements as national U.S. applications; see also discussion on Legal And Technical Implications Of Canadian Adherence To The Madrid Protocol – Canadian Intellectual Property Office, Section IV On The Madrid Protocol.

13 See Article 2, requiring a basic application or basic registration as a pre-requisite for obtaining an International Registration.

14 Because trademark registrations in these countries are vulnerable to non-use cancelation within five years of grant, dependency extends that risk to Protocol registrations based on them, see Article 6(2).