15
Feb/05

'Mis-classified' Goods/Services in Extension to U.S. of a Madrid Application


A letter has been circulated to non-U.S. trademark owners by a U.S. law firm indicating that if they were to extend an International Application to the U.S. under the Madrid Protocol, were the U.S. Trademark Office to rule that some or all of the goods/services are mis-classified under U.S. practice, those goods/services, rather than being re-classified (as would be the case with an application under Section 44(e)), those goods/services would be deleted.  If correct, this would be something of a disadvantage to the non-U.S. filer. 

While fear of this outcome was articulated in the run-up to U.S. adherence, it apparently is not correct.

Examination Guide 2-03 IV B.2 provides that while the PTO will attempt to conform the U.S. extension to U.S. practice whenever possible, the International Bureau controls classification.  The goods/services would remain in what the U.S. Trademark Office would ordinarily think of as ‘the wrong class.’

One fewer thing for our non-U.S. friends to worry about.

Hat-tip to A.S. for supplying chapter and verse.

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