International Trademark Registration

As summarized below, streamlined procedures exist for obtaining foreign trademark registration. Please do not hesitate to contact me to discuss your current or planned trademark use in foreign countries.

Madrid Protocol

The Madrid Protocol is an international treaty which facilitates obtaining trademark protection in any country which has signed this treaty using a single international trademark application.

Under the Madrid Protocol, after an initial trademark application is filed in the United States, an international trademark application may be filed based on the original US application. The international trademark application must match the original US trademark application, including the elements of the trademark to be registered and the goods or services for which the trademark is to be registered. The specific countries in which trademark registration is sought must also be named in the application. If the international registration (described below) is dated within six months of the original US application, then the international registration may claim the benefit of the filing date of the US application

If all requirements are met, then the US Patent and Trademark Office will certify the international trademark application, and transmit the application to the International Bureau of the World Intellectual Property Organization.

The International Bureau will examine the application to determine whether the application requirements are met. If any irregularities are found, then both the applicant and the US Patent and Trademark Office will be notified so that the irregularities can be corrected. If the requirements are met, then the International Bureau will register the trademark.

This international trademark registration is not enforceable in any country, and every country remains free to determine whether registration of the trademark in that country would comply with that country’s laws.

If the applicant later determines that trademark registration in additional countries is desired, then subsequent designations may be made to the international registration.

For the first five years of the international registration, restriction, cancellation, abandonment, or expiration of the original US trademark registration has the same effect on the international trademark registration.

Foreign Trademark Registration Considerations

Although foreign trademark registration may be sought on the basis of a single international trademark application, examination of the application in each country will be subject to the laws of that country. In the event of a rejection or other office action, retaining a trademark lawyer who is admitted to practice in that country may be necessary.

Although the requirements for trademark protection in foreign countries varies, most countries have some requirement that the trademark be used in that country. Even if a trademark can be registered without a showing of use of the trademark, challenging the registration based on lack of use may be possible. Enforcement of a trademark registration may not be possible in the absence of use of the trademark in that country.

Trademark applicants should therefore designate only those countries in which they intend to sell their goods or services under the trademark.  Please contact me to discuss how to best protect your trademark internationally.