For Israeli companies seeking to register trademarks outside of
Israel this means that an international application can now be filed
by designating any one of the member states to the Madrid Protocol
http://www.wipo.int/madrid/en/members as long as the application is
filed within six months after the filing date of the “home” application in
Israel.

This is good news for Israeli applicants on several levels:

1. It is a much cheaper solution than separate national filings;

2. One application means one registration and one expiry date which
makes administration much easier;

3. Applications may be filed in English and in one currency;

4. For straightforward cases, a local trademark attorney will probably
not have to be hired thus saving cost.

Despite the many advantages, there are some disadvantages.

The rights granted by an international registration can be cancelled if either the home application does not
mature to registration or if its home registration is cancelled during the first five years.

Although it is still possible to convert the international registration to national applications in the designated countries (if the home
application/registration is successfully challenged), the total cost would actually be higher than if the national route had been used at the
outset.

If the international application is faced with local registry objections
(or third party oppositions), the administration via WIPO can become

cumbersome with the additional layer of bureaucracy to negotiate.

After the 5-year period has ended, the international registration
becomes independent of the basic application or registration.

Despite the advantages and cost savings of using the Madrid Protocol,
companies seeking to register marks using the framework should
undertake a complete analysis based on its specific aims and needs in
seeking protection. Before filing an international application, consider
performing a trademark search in the countries you wish to file
your trademark in order to determine whether there will be obvious
conflicts.

Firstly, the bona fide intent-to-use (“ITU”) standard in the U.S. is the same for U.S. and non-U.S. applicants, regardless of whether the applicant’s filing basis is ITU or foreign registration from applicant’s home country.  In some recent decisions, the Trademark Trial and Appeal Board (“TTAB”) of the USPTO has increased the standard of proof for demonstrating the requisite intent to use, stating a clear preference for independent documentation or other corroborating evidence of intent (e.g. pre-existing business plans, internal correspondence, industry custom and practice).  Reliance solely on the sworn declaration that forms part of the standard U.S. application, stating applicant has a bona fide intent to use the mark in connection with all of the goods and services covered by the application, may no longer be adequate, particularly if applicant’s intent is challenged in the course of administrative or litigation proceedings involving the application or resulting registration.  See, e.g., L.C. Licensing v. Berman, 86 USPQ2d 1883 (TTAB March 28, 2008) (“the mere assertion of an intent to use the mark without corroboration of any sort, whether documentary or otherwise, is not likely to provide credible evidence to establish a bona fide intention to use the mark”); See also, Boston Red Sox v. Sherman, 88 USPQ2d 1581 (TTAB September 9, 2008); Honda Motor Co. Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB April 8, 2009).  Although the true impact of these cases remains to be seen, the ‘take away’ for applicants is to take the ITU declaration seriously and not use it as an opportunity to list goods and services beyond the scope of its current or impending business activity.

It is generally considered good practice to file for all items of interest, provided the applicant can in good faith sign the declaration of a bona fide intent to use the mark in the U.S. in connection with each and every item listed.  As the application goes through the prosecution process, there are multiple opportunities for an applicant to delete items from the description as its business plans evolve.  On the flip side, if an applicant determines that it cannot in good faith sign the declaration of a bona fide intent to use the mark for any particular item, that item should be dropped before the application is filed.

It is often the natural desire of trademark owners to cover as much as possible with its registrations and the U.S. rules on intent to use, use in commerce, and abandonment can be understandably frustrating.  However, the picture is not as bleak as it might seem.  The U.S. has a strong concept of related goods and services.  As such, a trademark owner need not have a registration covering every item under the sun to obtain effective enforcement remedies.  This should help foreign applicants become more comfortable with obtaining perhaps less broad coverage in its U.S. registrations than those they may obtain in other countries, in exchange for registrations that will be valid and enforceable because use can be substantiated.

Perhaps a bigger issue for non-U.S. trademark owners is that although proof of use in commerce is not necessary to obtain a registration when the application is based on applicant’s foreign registration, proof of use will be necessary to maintain the registration past the sixth anniversary of the registration date (a Declaration of Continued Use is required under U.S. trademark law), and will be required if a registrant wishes to enforce that registration against an infringer in the U.S.  In the enforcement scenario, the analysis is that since there has been no use by the foreign registrant in the U.S., there cannot be any confusion with the allegedly infringing use.  There is no easy way out of this predicament, since U.S. trademark law is generally based on the concept of “use it or lose it” rather than on who wins the race to the trademark office.

A related issue is that non-use or “abandonment law” in the U.S. tends to be stricter than in other countries.  Current doctrine holds that once a mark has been abandoned, it cannot be revived through a resumption of use, but instead new rights are established dating only from the earliest date of the new use.  As such, there is no ability to “cure” non-use in the U.S. the way that many other jurisdictions permit.  U.S. Trademark Law creates a rebuttable presumption that a mark has been abandoned if there has been no use for three consecutive years.  Any registration where use has not been made may well become permanently vulnerable to cancellation for abandonment at the three-year mark following registration which is two years before the mandatory Declaration of Continued Use is even due.

Robyn S. Lederman, Senior Trademark Counsel

Cantor Colburn LLP

Appelfeld & Co. is a law firm specializing in intellectual property. The firm represents businesses that have substantial IP needs, including both established companies with large patent and trademark portfolios as well as emerging start ups and inventors.

With over 15 years of experience in the field of innovation and IP, Appelfeld & Co. fully understands the realities of a world driven by rapid technological change. Our expert attorneys provide comprehensive legal solutions and advice in all matters relating to IP.

The Appelfeld & Co. practice areas range from trademarks through patent drafting and prosecution, copyright enforcement, designs, litigation, and all aspects of IP administration and procedure (including judicial review).  We also handle IP portfolio management, licensing and commercialization. We offer “ Trademark Israel ” to our foreign associates, aimed at providing easier processing of new trademark applications in Israel.
We adapt. Through significant investments in state-of-the-art technology (such as our industry-leading docketing software) and a talented team of experienced and accomplished attorneys, we are committed to providing both our local and international clients with expert IP portfolio management and a quick response to any request.

Our extensive experience, great team of people, quality of work, responsiveness and attention to client needs make Appelfeld & Co. an excellent choice for a wide variety of technology companies.

International Patent Services
On the patent drafting front, Appelfeld & Co. works in close cooperation with the prestigious U.S. firm of McAndrews, Held and Malloy, recognized as one of the top 10 patent firms in the United States. McAndrews, Held and Malloy was recently listed in the 2010 Top Patent Firms, honoring quality patents in the Information Technology category (Intellectual Asset Management, Feb. 2010).

Due to the strength of this partnership, Appelfeld & Co. can offer its clients a unique cooperative approach:
• Complete IP workflow including project management, docketing services, filing and maintenance by Appelfeld & Co.
• Drafting and prosecution performed by the team at Chicago.
Consequently, our clients enjoy the best of both worlds—the highest level of professionalism coupled with competitive pricing.