Amending a US application that Is the basis of an IR?

A member of the E-Trademarks listserv asked this:

I have never filed via the Madrid Protocol, but I am considering filing one based on a recently filed US application. If the listing of goods in the US application are amended, are the IR and the subsequent designations automatically amended so that the goods are always the same? It would seem weird to have an IR and national designations with a different listing of goods.

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How Madrid ten-year trademark renewals work

US trademark practitioners are just now starting to get asked by foreign clients to do a kimadrid-ren-4nd of filing that never existed before about September of 2014.  The filing is a ten-year Statement of Use for a US Madrid registration.  This blog article tries to explain such filings and how they are similar to and different from other US trademark maintenance and renewal filings.  If you already understand everything about the figure at right, you can skip reading this blog article!

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Clever associate’s trademark advocacy secret weapon revealed

It’s a few months ago that I looked at one of our trademark cases — a Madrid Protocol case that had come in from foreign counsel on behalf of a foreign applicant — and pronounced to anyone who would listen that the case was never going to be approved for publication.  I was convinced that the Examining Attorney’s grounds for refusal were impossible to overcome.   I figured it was only a matter of time before it would go abandoned.  I figured the sole remaining necessary lawyering skill would be communicating a gentle let-down to foreign counsel — an exercise in expectations management.

One of my associates was handling the case.  The other day I was astonished to learn that my associate had completely overcome the refusal.  I asked her how she accomplished this seemingly impossible result.  She smiled and explained what had happened.

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The importance of warning clients about unscrupulous fee requests

We all need to redouble our efforts to warn clients about unscrupulous fee requests.  Four recent examples reminded me how insidious these fee requests can be.  The first one asks me to wire $2322.30 to a bank in Slovakia.  The second one asks me to wire $2738 to a bank in Czech Republic.  The third one asks me to wire $2548.25 (where do they get these amounts?) to a bank in Slovakia.  And the fourth asks me to wire $2327 to a bank in Czech Republic.

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New USPTO “series code” for Hague Agreement cases

Those whose practice includes “inbound” Madrid Protocol trademark applications are accustomed to the series code “79”.  When you see a USPTO application number that starts with “79” you know that it is a trademark application number and that it came to the USPTO from the International Bureau of WIPO.  Someone who filed a Madrid Protocol trademark application (in a place other than the USPTO) must have designated the US.

Now the USPTO has picked the series code that it will use for Hague Agreement applications.

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Canada takes a step toward Hague and PLT

The Canadian parliament has taken up a bill which, if enacted, would permit Canada to join the Hague Agreement (one-stop filing of applications for protection of industrial designs) and the Patent Law Treaty.

There has also been some progress in Canada toward eventually joining the Madrid Protocol (one-stop filing of applications for protection of trademarks).

Monitoring the international trademark filings of your competitors

Many companies, and many trademark practitioners, are unaware of an extremely helpful service which the World Intellectual Property Organization makes available free of charge.  The Madrid Electronic Alert (“MEA”) system is a free-of-charge “watch service” designed to inform anyone interested in monitoring the status of particular Madrid Protocol (international) trademark applications. This is particularly helpful for monitoring Madrid Protocol trademark filings of competitors and adversaries.

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