Domestic Applicants Seeking International Registration
Owners of U.S. trademark applications or registrations seeking to expand their trademark rights abroad by filing an international application must often comply with strict statutory deadlines, and they must make strategic decisions regarding country designations and goods and services classification in the record.
Foreign trademark rights are an important asset, the acquisition and preservation of which requires exercise of due diligence and maintenance that can both be accomplished centrally via the Madrid System.
Sometimes it is necessary to engage counsel abroad during the prosecution of an international application due to challenges to registration presented in foreign jurisdictions.
Section 66(a) Applicants Seeking Extension of Protection of an International Registration to the U.S.
Owners of international registrations requesting extension of protection of their registration(s) to the U.S. based on § 66(a) may face refusals and oppositions at the USPTO similar to those encountered by regular applicants because § 66(a) applications are examined in the same way as regular applications on the Principal Register.
Although holders of international registrations are not required to demonstrate use of their mark in U.S. commerce prior to registration at the USPTO, they must file affidavits of use or excusable non-use under § 71 of the Lanham Act after registration in order to maintain the granted extension of protection.
Section 66(a) applicants and registrants should carefully monitor the status of their international registration because any rights extended to the U.S. based on that registration depend upon its validity, and only under limited circumstances may their application or registration at the USPTO be transformed to one under another section.