Trademarks can be among your company’s most valuable assets. In addition to distinguishing your products and services from those of others, trademarks represent the reputation, recognition, and goodwill you’ve built in those products or services.  Registering your trademarks helps prevent their appropriation by others, thereby preserving your business and brands.

While registering your trademarks with the United States Patent and Trademark Office (USPTO) protects those trademarks in the United States, it doesn’t provide protection elsewhere. If you’re doing business online, have business operations abroad, or plan to expand your business to different countries, you should consider filing your trademarks internationally.

About the Madrid Protocol

Having to file an application to register your trademarks in each country in which you are doing, or want to do, business can seem daunting. Fortunately, there’s a streamlined solution to this dilemma. The Madrid Protocol, a treaty with over 100 members, including the United States, allows trademark owners and applicants in member countries to apply to register their trademarks in any other member country through a single application called an international registration (IR). Rather than having to register your trademark in every country one at a time, incurring filing fees and local attorney fees in each country, you can file one application under the Madrid Protocol which will apply to all of its member countries.

Obtaining an IR, however, doesn’t guarantee registration in your selected countries. In addition to obtaining a basic registration from the USPTO (or submitting a basic application for registration to the USPTO), you’ll need to go through the following process to obtain your IR and registration of your trademark in your selected countries:

  • The USPTO will verify that the information in your US registration or application matches the information in your IR application, that it is complete, and that all required fees have been paid. If so, your IR application is sent to the World Intellectual Property Organization (WIPO).
  • WIPO will review your IR application to ensure that it meets the Madrid Protocol requirements. If it does, you will be issued a registration number and have an international registration for 10-year renewable periods.
  • This IR will not constitute actual trademark protection in your selected countries. For that, these countries will need to review your application based on the standards in those countries for granting applications for trademark registration. Only then will those countries extend trademark protection to your U.S. trademark.

Limits of the Madrid Protocol

Although there are many benefits to using the Madrid Protocol to register your trademarks internationally, there are also limitations:

  • The IR system doesn’t apply worldwide. For example, you still need to file a trademark application and hire a local attorney to register your trademarks in Canada, Mexico, Brazil, most South American countries, and most Middle East countries, none of whom are members of the Madrid Protocol.
  • The IR is intended to efficiently place your trademark application before the trademark office of the member countries you select to apply for registration. Once before these trademark offices, however, it’s up to them to approve or refuse your application. If that trademark office has questions, requests information, or requires amendments, you may need to hire local counsel to help you anyway.
  • If your U.S. trademark is canceled, your registrations for that trademark in other countries obtained through the IR will be canceled as well, unless you obtain registration for your trademark directly from the trademark office of the country involved.

How Becker Law LLC Can Help

Registering your trademarks internationally may require the expertise of a trademark attorney to navigate the pitfalls inevitably involved in such registrations. Becker Law LLC is dedicated to protecting the intellectual property of creatives, freelancers, startups, and small or medium businesses. Contact us today for assistance with your international trademark registration. 

Be the first to comment!
Post a Comment