Lodestar v. Bacardi Has Implications For Protection Of US Marks Under Madrid Protocol

The US Court of Appeals for the Ninth Circuit has issued a remarkable opinion in Lodestar Anstalt v. Bacardi & Co Ltd (Case Number 19-55864, 2022 WL 1180767, at *22, 9th Circuit 21 April 2022) exploring the scope of rights and priority provided by an extension of protection for a trademark registered in the United States under the Madrid Protocol. The opinion provides crucial guidance on who holds enforceable trademark priority: "when (1) a registration was obtained under the Madrid Protocol without showing pre-registration use in commerce; and (2) the registrant's actual use in commerce did not begin until after the allegedly infringing use began" (emphasis original).

In 2009, Lodestar applied to register the UNTAMED word mark and logo in the United States for rum and other products under the Madrid Protocol, with no showing of actual US use and claiming a 16 July 2009 priority date under Section 67 of the Lanham Act. The USPTO issued the registrations in 2011.