When federally registering a trademark in the United States, the United States Patent and Trademark Office (USPTO) grants important legal rights within the US, but does not protect the trademark abroad. If engaging in foreign trade, there must also be an international trademark to protect the brand.
Specific international laws and procedures govern the registration of international trademarks. At Sethimaz, we have been dealing with the application, registration, and protection of foreign trademarks for over ten years.
Here is a glimpse into our expertise:
Beginning in 2003, the United States joined an international treaty called the Madrid Protocol, which is overseen by the World Intellectual Property Organization (WIPO). The treaty allows for a simpler process for US companies seeking international trademark protection. When a trademark is registered in the United States, the holder can automatically apply for trademark registration in a treaty country. At the time of writing, 100 countries around the world have acceded to the Madrid Protocol.
In order to file an international application under the Madrid Protocol, one must either register an existing trademark or file a pending application with the USPTO. This application or registration will serve as the basis for the international brand.
The USPTO may certify the application and transmit it to WIPO for examination by its International Bureau. The Office will carefully review the application and determine whether it meets the requirements for the application of the Madrid Protocol. If the application is eligible, WIPO will publish it in the Official Bulletin of International Trademarks, notify all member states, and request an extension of trademark protection in those countries. Applications will be reviewed individually in each country to determine whether they meet that country’s criteria for trademark protection. In this case, each contracting country can issue a mark with a validity of 10 years and is renewable.
The Madrid Protocol simplifies the simultaneous filing of international trademark protection in many countries and requires lower filing fees and costs. If no one opposes the application, there is no need to hire a foreign lawyer. The company will not be subject to indefinite delays due to mandatory review deadlines. These factors can facilitate the company’s expansion into foreign markets, increasing profits while benefiting from brand protection.
International registration and all other related foreign registrations can be lost if someone successfully opposes the trademark application with the USPTO for any reason, or if the USPTO revokes it within five years of original record. In this case, the application of the Madrid Protocol can be converted into a national application.
Applying for and getting approved is only the first step in maximizing the benefits of an international brand.
A word, symbol, sign, or slogan that means one thing in the United States may mean something entirely different abroad. The trademark should not have negative connotations in the country where it will be used.
Registering a trademark in all possible countries can, of course, be confusing, so companies usually file only when they intend to sell goods or services. In general, we recommend that an international application be submitted as soon as an extension can be made. In most countries, the acquisition of trademark rights depends on who applies first. The Madrid Protocol allows trademark owners to add additional countries at any time.
With over 10 years of experience representing international trademark and copyright clients, The Law Offices of Sethi and Mazaheri are ready to assist you in all your trademark matters.
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by Prozco®