Pitfalls of the Madrid Protocol – Just Ask Fiat

Pitfalls of the Madrid Protocol – Just Ask Fiat

 Italian car maker Fiat sought to extend the protection in the United States of an international registration for the trademark FIAT 500 for “retail store and on-line retail store services featuring a wide variety of consumer goods and others.”  Fiat’s U.S. application was based on its international registration under the Madrid Protocol.  The Madrid Protocol allows a single international application to be filed with the national trademark offices of member countries as opposed to a separate application in each country. 

The issue before the Trademark Trial and Appeal Board (TTAB) in In re Fiat Group Marketing & Corporate Communications S.p.A, Serial No. 79/099154 (TTAB Jan. 31, 2014), involved whether amending the original identification of services in Fiat’s application from “advertising services, business management; business administration; office functions” to retail store services constitutes impermissible broadening of the application in violation of Trademark Rule 2.71(a).  Rule 2.71 permits an applicant to “amend the application to clarify or limit, but not broaden, the identification of goods and/or services.”

Fiat’s identification of services in its international registration under the Madrid Protocol – i.e., “advertising services; business management; business administration; office functions” – mirrored the heading of International Class 35.  In other words, in its original application, Fiat used the class heading of International Class 35 to identify its services.  Although International Class 35 encompasses retail and on-line sales, the TTAB rejected the registration.  The TTAB expressly rejected the “class heading covers all” construction of a registration that is sometimes used in foreign jurisdictions.

Instead, the TTAB applied the “ordinary meaning” test from section 1402.07(a) of the Trademark Manual of Examining Procedure (TMEP), which provides, in relevant part, that “[t]he USPTO will not permit the applicant to amend to include any item that falls in the class, unless the item falls within the ordinary meaning of the words of the heading, . . . .”  Section 1402.07(a) specifically references TMEP § 1402.01(b), noting that “class headings are generally unacceptable to identify goods/services in United States applications, even if the class heading is used as the identification in the foreign registration.” 

Fiat argued that the amended services should be considered within the scope of protection of the original application because the full heading for Class 35 protects “retail stores and store services.”  Fiat relied on the following language from TMEP § 1402.02 regarding the filing date requirement that an application identify recognizable goods/services: “[t]he USPTO will not deny a filing date if the applicant uses the language of an international class heading or indicates that the mark is used on all goods or services in a certain class.”  See TMEP § 1402.02.  Based on that language, Fiat argued that the USPTO considers a class heading to encompass all of the goods or services in a particular class.  According to Fiat, it was not broadening the scope of the original services in violation of Rule 2.71 because retail services are under the umbrella of “business management” services  - words taken verbatim from the heading of International Class 35. 

The TTAB disagreed, holding that the proposed amendment improperly broadened the identification of services in violation of Rule 2.71(a).  The TTAB relied on TMEP § 1402.01 which requires that “common names” and “generally understood” terminology be used instead of a class heading to identify the goods and/or services.  Then, applying the “ordinary meaning” test from TMEP § 1402.07(a), the TTAB found that the term “business management” is clearly defined and cannot be construed to encompass retail store services.  It simply found unpersuasive Fiat’s argument that “business management” is an umbrella term that incorporates operating a retail store because the latter involves the management of a business. 

The TTAB summed up its decision as follows:

. . . while class headings are allowed in international registrations, and the USPTO will accord a filing date to a USPTO application seeking extension of protection to an international registration that uses a class heading as an identification of goods or services, use of the words comprising a class heading as an identification in an application filed with the USPTO is not deemed to include all the goods and services in the established scope of that class.

In short, the TTAB rejected the so-called “class heading covers all” policy adopted by certain countries party to the Madrid Protocol – thereby preventing Fiat from extending the protection of its FIAT 500 mark in the United States to retail store services.  The lesson learned here is that when using an international registration as the basis for extension of protection in the United States, make sure you are familiar with the rules and regulations of the USPTO, including its rejection of the “class heading covers all” policy. 

 Thomas Telesca is an attorney at Ruskin Moscou Faltischek, P.C. in Uniondale, New York, where he is a member of the firm’s Litigation Department and International Practice Group.  He can be reached at ttelesca@rmfpc.com.

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