Introduction
Trademarks are vital assets for businesses because they act as markers of brand identification and consumer confidence. Protecting your brand is essential whether you are a small local business or a large international firm.
A trademark’s protection generally extends only to the borders of the country in which the trademark is registered. As a result, if your goal is to protect your trademark in multiple countries, you will have to register your trademark with each of those countries.
Luckily, once you have registered your trademark in the United States, it is possible to apply for registration in up to 130 countries at once through the Madrid Protocol, a centralized filing system run by the World Intellectual Property Association (WIPO).
This blog post will briefly answer some common questions about U.S. and international trademark protection. However, this blog is not legal advice, and it is highly recommended that you consult an attorney to analyze your particular case.
Is my US Trademark Protected Internationally?
No. A U.S. trademark registration will not give your trademark protection outside of the United States. As a result, if your trademark is registered only in the U.S., a business could potentially use your mark, or a similar one, for selling their goods or services in a different country.
How can I protect my trademark internationally?
If you have either (1) a pending U.S. trademark application or (2) a registered U.S. trademark, you can simultaneously apply for protection in up to 130 countries through the Madrid Protocol. To file a Madrid Protocol application, open your USPTO account, and in the “Trademark Form Finder,” select “File forms related to the Madrid Protocol.” The system will ask for your trademark registration or serial number, and you can then select the countries in which you would like protection, enter your information, and pay the application fees.
Is there a downside to Madrid Protocol registration?
Although the Madrid Protocol offers a centralized registration system, in some cases, the process can still be complex. For example, although you send your initial application through the central filing system, any later correspondence with a country’s office (such as office actions or oppositions), is conducted directly with that office. Additionally, your international application cannot vary from your U.S. application, and it can be difficult to add or remove International Classes of goods or services. Finally, your international registration is tied to your U.S. registration for a period five years. During that five-year period, if the USPTO cancels or rejects your registration, your international registrations will also be canceled or rejected.
Conclusion
Registering your business’s trademarks is an important step in building and protecting your brand’s identity. If you have already registered or applied for a trademark registration in the United States, filing through the Madrid Protocol can be an easy and cost-effective way of protecting your trademark internationally, especially if you are planning to expand your business into international markets. If you are thinking about filing a U.S. trademark application, or expanding your registered trademark’s protection through a Madrid Protocol filing, we recommend consulting with an attorney experienced in trademark law in order to analyze your particular situation.
This post presents general information and does not constitute legal advice or create an attorney-client relationship.
