What is the Madrid Protocol? Registration of Int’l Service or Trademarks

The Madrid Protocol is not some new action or spy film, but an international treaty designed to facilitate the registration of service or trademarks.  The following is a general description of the Madrid Protocol, but it may vary for registration of each individual’s mark.  The Madrid Protocol is an international treaty that was established in 1989 to promote a international registration system.  This International Register is administered and maintained by the International Bureau of the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland. 

The Madrid Protocol allows a national (individual or corporation) of a member state to use a domestic trademark filing as the basis for filing an International Application that designates other contracting nations in which the national wants to also use the mark.  Madrid Protocol Articles 1, 2, and 3.   For the US, an application may originate with the USPTO and be used as the basis for an International Application.  Madrid Protocol Articles 2 and 3.  The International Application could designate other contracting nations such as France, Germany, UK, etc…to also register the same mark. 

There are several advantages to the Madrid Protocol that save on the costs of filing application to register the same mark individually with the office of each country.  An International Application filed based on a US application can be in English, French or Spanish.  The International Bureau would then examine each application to make sure the mark is legitimately being used and has the appropriate class designations. 

After the International Bureau’s initial examination for formalities, the International Application is forwarded to the local office of each country for a substantive examination. The local office for each country gets a 18 month review period issue a refusal of the mark, otherwise it will be deemed to have been accepted by the local office.  Madrid Protocol Article 5. 

This international registration would then be dependent on the US Application for 5 years, but after such period it will become independent of the US application.  Madrid Protocol Article 6.  This international registration would be valid for a period of 10 years before having to be renewed.  Madrid Protocol Article 6.   Thus, there are a variety of reasons the Madrid Protocol may be the appropriate route for international registration of your service or trademarks.

Copyrightability of Websites?

Yes, websites are registrable to the extent the text, artwork, music, audiovisual material, sound recordings contain original works of authorship.  35 USC 102 (a).  However, registration of a website is limited to the copyrightable work received by the copyright office and claimed in the application.  Copyright law will exclude matter previously in the public domain or previously registered by others from your application. 

On the other hand, online automated databases available on your website may be entitled to copyright protection for the entire content they cover, even though, only a portion of the automated databases is submitted in the copyright application.  In copyright applications for websites and computer programs, identifying all graphics, text format, and program codes (such as html) is extremely important to ensure proper scope of copyright protection to a website owner. 

Revisions or updates of websites often have to be re-registered to ensure proper protection. However, group registration may be available for weekly emails or newsletters displayed by a website owner.  Understanding the nuances of how copyright law and the copyright office registers and protects a website owner is crucial to ensuring that you or your business is able to properly stake out the boundaries of its territory on the internet.

Can a Licensee sue a Patent Owner for a DJ of invalidity or non-infringement?

Prior to the Supreme Court’s decision in Medimmune v. Genentech Inc. (S. Ct. 2007), the federal circuit did not permit a licensee that was paying royalties to the patent owner to challenge the validity of the patent or to assert non-infringement of the patent.  Prior to Medimmune, a licensee in such a situation was required to stop making royalty payments and give notice to the patent owner of the basis for the invalidity before bring a declaratory judgment action. 

However, the Supreme Court, in Medimmune, stated that the continued payment of royalties under the patent owner’s threat of an infringement action was sufficient to find an actual case or controversey under Article III.  The Court analogized the situation to instances when a government action coerces compliance by a private party.  Moreover, the Court held that this is very similar to Altvater v. Freeman, 319 US 359 (1943), where the court found jurisdiction to contest the validity of a license agreement.  In Altvater, the patent owner had already procured an injunction against the licensee and the court permitted the licensee to bring a suit challenging the validity of the patent. 

The Supreme Court focused on the coerced payment of royalties by the patent owner’s threat of an infringement action against the licensee to find an actionable controversey under Article III.  It remains to be seen how the Medimmune opinion will be interpreted in the context of a copyright or trademark infringement or any similar claims.  It seems that licensees have a new recourse to deal with the threats of willful infringement and even attempt to renegotiate license agreements based on newly discovered information or design around efforts.

The Illinois Unemployment Insurance Act, what is it?

The Unemployment Insurance Act is a comprehensive statute designed to aid individuals through periods of being out of work.  820 ILCS 405 et. seq.  The Act requires employers to pay contributions for unemployment benefits provided by the Illinois Department of Employment Security (IDES) to unemployed individuals.  820 ILCS 405/202, 239, and 240. 

An employer’s contributions are set by the IDES’ determination of a contribution rate based on a employer’s benefits wage ratio and adjusted state experience factor.  820 ILCS 405/1506.1  Eligibility for individuals to receive unemployment benefits is initially determined by the local office for IDES. 820 ILCS 405/500.

It is important for employees and employers to understand their rights and obligations under the Illinois Unemployment Insurance Act.  Often employers are concerned about their contribution requirements prior to the purchase or sale of a business.  During a separation from employment this is often an issue for both employers and employees to make sure that unemployment benefits are provided to those that have a legitimate claim to such assistance.  Understanding the basis for disqualifications such as a refusal to work, voluntary leaving, or misconduct is often crucial to both employees and employers.  820 ILCS 405/600, 601, 602 and 603. 

Consulting an employment attorney in the purchase or sale of a business, as well as, when a separation of employment occurs can aid both employers and employees.

Generic or Descriptive Service and Trademarks

The policy behind trademark law is to reward owners who are able to provide a consumer with a mark that sufficienly and reliably serves as an indicator for the source of a product or services characteristics or quality.  Two doctrines that ensure that this policy behind service or trademark law is protected are the genericness and distinctiveness doctrine. 

A mark that becomes generic for the product or service provided under it often loses legal protection.  For example, kleenex is sometimes considered to be a generic term for tissues.  Often how a trademark owner uses a mark in advertising campaigns and to promote its product or service may lead to a genericness problem.  See, Trademark Manual of Examining Procedure (TMEP) 1209.01 (c).   

The descriptiveness doctrine, prevents an individual from obtaining trademark protection for a term that describes the product or service sold under it.  For example, “Suits for You”, for a company that provides suits may have difficulty obtaining trademark protection, because it describes that the company is going to provide suits.  Without demonstrating a secondary meaning the “Suits for You” trademark may be rejected for a descriptiveness problem.  See. TMEP 1209.01 (b).

It is important for entrepreneurs, family businesses, individuals, small and mid-size companies to take these doctrines into consideration in developing the appropriate advertising and branding strategies.  Consulting a trademark attorney in selecting a mark and developing a branding strategey can help overcome these potential obstacles to obtaining trademark protection.  These are just two of the many basis that the USPTO will consider in performing a substantive examination of a trademark application.