Bad Neighborhoods of Madrid: Problems Facing Madrid Applicants in the United States

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The Madrid Protocol provides foreign trademark owners with a vehicle for extending their "home country" trademark protection into the United States through their local trademark office. While these local filings eliminate the cost of hiring U.S. counsel to prepare the U.S. applications, they also increase the chances that foreign trademark owners will fall victim to the peculiarities of the U.S. trademark system. However, with some understanding of the U.S. trademark system, Madrid applicants can tailor their U.S. extensions and avoid these pitfalls. This article identifies and proposes solutions to the four most common pitfalls that Madrid applicants face in the United States.

Traditionally, the U.S. trademark system only protected marks that were used in U.S. commerce. In 1988, U.S. law was amended to allow applications for marks not yet in use, subject, however, to the applicant having a bona fide intention to use the mark in U.S. commerce. Madrid applicants are frequently surprised to learn that U.S. extensions are also subject to this "bona fide intention to use" requirement and that it applies to all of their listed goods and services. Lack of a bona fide intent to use the mark will void an application and lead to cancellation of any resulting registration.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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