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.

The answer is “yes”.

Yes, part of what an Office commits to do when it joins the Madrid Protocol is that it will “rat out” the applicant to the IB whenever any change happens to the “basic” filing.

In the extreme case if the basic filing were to go abandoned or be successfully opposed or get canceled, that “central attack” would get reported to the IB and this would be a big problem for the international registration.

You quite correctly bring up the intermediate situation where a “basic” filing might have a bit of wordsmithing.  For example suppose the starting ID in the US basic filing was “clothing” and the applicant was required to narrow it down to “clothing, namely balaclavas”.  In such a case the USPTO will tell the IB that it’s now balaclavas specifically rather than clothing generally.   The IB will in turn communicate this to all of the designated offices.  So the protection in the various designated offices will likewise get narrowed down to balaclavas.

The poster asked specifically about subsequent designations.  Yes, this narrowing of protection will happen for the designations that appeared in the Madrid Protocol application when it was filed, and it will happen for any subsequent designations that may get added.

The key here is the five-year period.  The obligation upon the Office of Origin to “rat out” the applicant only persists for five years.  (Five years from what?  Five years from the date of the international registration, which in most cases means five years from the date that the applicant filed the Madrid Protocol trademark application in the first place.)

So the US applicant will want to try as hard as possible to postpone any narrowing of the ID until after the five-year period has come and gone.  Likewise if the application is for some reason at risk of eventually going abandoned (for example in an ITU case, failure to make actual use of the mark in commerce), it is desirable to postpone that event until after the five-year period has come and gone.

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