It became easier for US business people and companies to secure international protection for their trademarks when the US put the Madrid Protocol into effect in 2003. Approximately 75 countries are members of the Protocol, and one application for international trademark protection applies to all of them.

How does the registration process work?

The World Intellectual Property Organization (WIPO) administers the international registration system, but the application process for certain parties begins in the United States. Parties that are eligible to apply for international trademark protection via the United States Patent and Trademark Office (USPTO) are:

  • US nationals
  • Legal entities that are domiciled in the US
  • Legal entities that have a real and effective commercial or industrial establishment in the US

A US applicant cannot file directly with WIPO, but must file for trademark protection with the USPTO first. Once an application is filed or a registration is issued by the USPTO, the applicant may submit an international application to WIPO through the USPTO. The international application must concern goods or services that match or are narrower than those on the USPTO application.

What happens after the registration is filed?

WIPO will send the application for trademark protection to the Madrid Protocol member countries that the applicant chooses. The protection that results is not blanket worldwide trademark protection, but protection overseen by the individual countries.

When the application is filed, each country will examine the application separately and make a decision about its validity under that country’s laws. If there is a problem, the country must notify WIPO quickly. When a country objects to an application, the applicant can take legal action to challenge the decision.

What are the benefits of the international registration process?

The benefits of the Madrid Protocol are simplicity and reduced cost. The process requires only one application, rather than numerous applications covering each country in which trademark protection is sought. One application also means one application fee, which typically greatly reduces the cost. The application is in one language and English is allowed.

The trademark that is registered will have only one registration number and one renewal date (every 10 years). The centralized system also makes it easy to send notification of modifications like change of address, new ownership, or limitation of goods and services.

Why is it important to register a trademark internationally?

Anyone who is considering doing business outside the borders of the US should look into international trademark registration and working with an experienced Los Angeles trademark attorney. While US trademark laws are based on use of the trademark, many countries provide trademark protection to the parties who register, rather than use, the mark first. Business people who do not take advantage of the ease with which they may register internationally may lose rights to protection or have to fight for the use of their trademarks.

Finally, if there is any chance of doing business outside the US, it is wise to check international trademarks when registering for a US trademark to avoid duplicating another party’s mark.

Make sure that you have trademark protection here and abroad. Contact our office for help with the process.