Extension of protection (EOP) extended to the U.S. and the Supplemental Register (Madrid Protocol Trademark)

Extension of protection (EOP) extended to the U.S. and the Supplemental Register (Madrid Protocol Trademark)

  • 15 April, 2024
  • Nyall Engfield

An extension of protection (EOP) extended to the U.S. cannot be amended to the Supplemental Register. This can be challenging for International Applicants and attorneys must be aware of the risks that this limitation creates.

In the United States, the trademark registration process offers two primary registers: the Principal Register and the Supplemental Register. The Principal Register provides the most robust form of trademark protection, including the presumption of the mark's validity, the presumption of ownership and exclusive use, and the ability to bring an action concerning the trademark in federal court. In contrast, the Supplemental Register is intended for trademarks that are not eligible for the Principal Register due to lack of distinctiveness but are capable of acquiring distinctiveness over time.

Extension of Protection (EOP) to the U.S. Under the Madrid Protocol

When a trademark registered internationally under the Madrid Protocol seeks protection in the United States, it is referred to as an Extension of Protection (EOP) to the U.S. This process allows a trademark holder to extend their protection to the U.S. through a simplified process, rather than filing a separate application directly with the United States Patent and Trademark Office (USPTO).

Limitation on Amendments to EOP Filings

One critical limitation for trademarks that have been extended to the U.S. under the Madrid Protocol is regarding their amendment post-registration:

  • No Amendment to Supplemental Register: If an international registration extended to the U.S. does not qualify for registration on the Principal Register (e.g., due to the mark being merely descriptive and not having acquired secondary meaning), it cannot be amended to seek registration on the Supplemental Register. This limitation is significant because, under other circumstances, applicants who face issues with distinctiveness might opt for the Supplemental Register as a temporary solution.

This limitation arises because the Madrid Protocol and the agreements related to it (specifically the Madrid Agreement and the Protocol Relating to the Madrid Agreement) were designed to streamline the process of international registration by adhering strictly to the terms of the international application as originally filed. Since the original international registration does not include the option of registering on the Supplemental Register, any extension of protection based on that registration is confined to the terms as they were set out initially.


For trademark holders:

  • Strategic Filing Considerations: Trademark holders need to consider carefully where and how to file their original trademark applications. If there is a possibility that the mark may not qualify for the Principal Register due to issues like descriptiveness, applicants should consider strategies for acquiring distinctiveness or alternatively filing directly in the U.S. to access the Supplemental Register if needed.

  • Need for Distinctiveness: Since moving to the Supplemental Register is not an option under an EOP, international registrants must ensure that their marks either are inherently distinctive or have acquired sufficient secondary meaning before seeking an extension to the U.S.

This aspect underscores a strategic layer in international trademark management, where choices made in one jurisdiction can significantly impact the options available in others, particularly under systems like the Madrid Protocol that link the treatment of a trademark across multiple national boundaries.

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