While federal registration of a trademark with the U.S. Patent and Trademark Office (USPTO) provides important legal rights within the United States, it does nothing to protect your trademark outside of the country. If you engage in any foreign commerce whatsoever, you should have an international trademark to protect your brand.
Specific international laws and procedures regulate the registration of international trademarks. We regularly handle foreign trademark applications, registrations, and protection.
Trademark Registration Under the Madrid Protocol
As of 2003, the United States joined an international treaty called the Madrid Protocol, which the World Intellectual Property Organization (WIPO) oversees. This treaty allows for a more streamlined process for U.S. businesses seeking international trademark protection. When you own a registered trademark in the United States, you have the ability to automatically apply for trademark registration in any of the countries that participate in the treaty. As of this writing, exactly 100 countries around the world had joined the Madrid Protocol.
As of this writing, the participating countries are:
● Antigua and Barbuda
● Bosnia and Herzegovina
● Brunei Darussalam
● Czech Republic
● Democratic People’s Republic of Korea
● European Union (EU)
● Lao People’s Democratic Republic
● New Zealand
● Republic of Korea
● Republic of Moldova
● Russian Federation
● San Marino
● Sao Tome and Principe
● Sierra Leone
● Syrian Arab Republic
● United Kingdom
● United States of America
● Viet Nam
● Former Yugoslav Republic of Macedonia
To qualify to file an international application under the Madrid Protocol, you must register an existing trademark or have a pending application with the USPTO. This application or registration will serve as the basis for your international trademark.
The USPTO can certify an application and forward it to WIPO for review by its International Bureau. The bureau will closely review the application and determine whether it meets the requirements for filing under the Madrid Protocol. If the application qualifies, WIPO will publish it in the Gazette of International Marks, will notify all member countries, and request extention of trademark protections in those countries. Each country will individually review the application to determine whether it meets that country’s specific standards for trademark protection. If so, each agreeing country may issue a 10-year trademark registration, with the possibility of renewal.
The Madrid Protocol makes the simultaneous application for international trademark protections in numerous countries simpler, and it requires lower fees and costs of application. If nobody opposes your application, you will not need to retain foreign legal counsel. Because of mandated time limits for review, you will not face indefinite delays. These factors can ease business expanion into foreign markets, increasing profits while enjoying trademark protections.
If for any reason someone successfully opposes your USPTO trademark application or the USPTO cancels it within five years of initial registration, you will also lose your international registration and any other foreign registrations tied to it. If this were to happen, it is possible to convert the Madrid Protocol applications into national applications.
Other Considerations for International Trademarks
Filing an application and receiving approval is only one step toward maximizing the benefits of an international trademark. A word, symbol, logo, or slogan that represents one thing in the United States can mean something completely different in a foreign country. You should always be sure that your trademark does not carry any negative connotations in any countries in which you plan to use it.
Registering a trademark in every possible country can obviously be overwhelming, and as such companies often only filed applications where they intend to sell goods or services. Generally we suggest filing international applications as soon as you think you might eventually expand to, because in most other countries trademark rights are acquired based on who files first. The Madrid Protocol allows registered trademark owners to add additional countries whenever they choose.
International Trademark Lawyers
We handle trademark matters throughout the globe. If you intend to expand your business internationally, or if you learn that someone in a foreign market is infringing on your international trademark rights, please contact us.