The long-established rule in trademark law is that trademark rights are gained through use, not registration, and the first to use a mark in commerce has the senior rights. One exception to that rule is an intent-to-use application, which if granted, and then followed up by use (which may be years later) and a registration based on use, grants the registrant priority as of the filing date.
A recent Ninth Circuit decision, Lodestar Anstalt v. Bacardi & Company Limited (9th Cir. 2022), held there is another exception: a registration based on extension of a foreign registration under the Madrid Protocol, a treaty under which a foreign registration can be extended to result in a U.S. registration, and no use is required, although a bona fide intent to use the mark in U.S. Commerce is a requirement.
The decision presents significant advantages to foreign trademark owners, who have not yet entered the U.S. market. A registration obtained under the Madrid Protocol now immediately grants priority to the owner, and insulates it from charges of infringement. And, once the owner commences actual use it can bring suit against users who entered the market after the registration.
A recent Ninth Circuit decision, Lodestar Anstalt v. Bacardi & Company Limited (9th Cir. 2022), held there is another exception: a registration based on extension of a foreign registration under the Madrid Protocol, a treaty under which a foreign registration can be extended to result in a U.S. registration, and no use is required, although a bona fide intent to use the mark in U.S. Commerce is a requirement.
The decision presents significant advantages to foreign trademark owners, who have not yet entered the U.S. market. A registration obtained under the Madrid Protocol now immediately grants priority to the owner, and insulates it from charges of infringement. And, once the owner commences actual use it can bring suit against users who entered the market after the registration.