How To Register A Trademark Internationally

International trademark registration is essential for many types of American businesses. The company’s branding may not be fully protected outside of the United States without international registration. Companies can register their trademarks in different countries by working with trademark lawyers in each country of registration. However, the Madrid Protocol also offers a much simpler, streamlined process to register a trademark internationally. If your company needs help with international trademark registration or other trademark matters, consider scheduling a free 15-minute consultation with an intellectual property lawyer at the Grabbe Law Office to learn more about the process.

How Do I Register a Trademark in Another Country?

For most companies looking to register an international trademark, the Madrid Protocol is the best option. The Madrid Protocol is a treaty that allows trademark owners to register international trademarks in any of the treaty’s member countries. This registration can be completed through a single trademark application, rather than finding legal representation and applying in each country individually.

Registering through the Madrid Protocol is typically the simplest way to apply for a foreign trademark. However, each country will still review the application and determine whether or not to accept the registration. Trademark laws and standards vary from country to country, and there is no such thing as an international trademark that is valid worldwide. This means that, even though you may file one application for multiple countries under the Madrid Protocol, the decision will ultimately be made by each country’s trademark office.

Applying for an International Trademark From the United States

Companies that operate in the United States and individuals who are nationals of the United States may file an international trademark application with the United States Patent and Trademark Office (USPTO) if they have already registered their trademark with the USPTO or have applied for registration with the USPTO.

A knowledgeable attorney from the Grabbe Law Office may be able to help you learn more about international trademark registration through the USPTO. Generally, the following requirements must be met to register a trademark internationally through the USPTO:

●     The applicant must have a trademark registration (also known as a basic registration) or have filed a trademark application (also known as a basic application) for trademark protection in the United States

●     The international trademark application must include the same mark and the same owner as the basic registration or application.

●     The international application must include the same list or a narrower list of goods and services as the original registration or application

●     United States certification fees of $100 per class of goods or services must be paid when submitting an international application

●     At least one other country must be included in the application and that country must be a member of the Madrid Protocol

The Review Process for an International Trademark

International trademark applications filed through the Madrid Protocol are reviewed by three different agencies, and each agency must approve the application before trademark protections can be granted.

USPTO Review

For United States-based applicants, the USPTO will first review the international trademark application to ensure that the information matches the information in the United States registration or application. Following this review, the application is sent to the International Bureau of the World Intellectual Property Organization (WIPO), which is in charge of the international trademark registration program.

If the USPTO decides not to certify the application, it will notify the applicant of the reasons why. The applicant will then have the opportunity to submit a corrected application.

International Bureau Review

The International Bureau reviews international trademark applications to ensure that they meet the Madrid Protocol requirements. Trademarks that meet these requirements are published in the WIPO Gazette, and the applicants review international registration certificates. The certificate is valid for ten years and may be renewed for subsequent 10-year periods. The International Bureau also contacts the countries listed in the application and notifies them that the applicant has requested that trademark protection be extended to those nations.

Foreign Country Reviews

Each country listed in the international application conducts its own review of the application to verify that it meets the same standards as other trademark applications filed in that country. The countries have 18 months to decide whether to extend trademark protection. If they do not make a decision within 18 months, protection is automatically granted.

Applying for International Trademarks in Individual Countries

If you need trademark protection in a country that is not included in the Madrid Protocol, you will need to apply in that country directly. This is often a more complicated and time-consuming process for applicants, which is why most trademark owners in this situation speak with an experienced trademark lawyer who has knowledge of the local trademark systems of that country.

Should I Register My Trademark Internationally?

International trademark protection is vital for companies that sell or manufacture products internationally. E-commerce provides a great opportunity to expand a company’s reach, but the company must also ensure that its branding is protected in all countries that it ships to. International registration can be used to prevent other businesses from using similar branding, which could confuse customers regarding the source of products. Protecting a company’s branding internationally helps to protect the company’s credibility and value.

International trademarks also make it much easier to enforce a company’s trademark rights. A business that has only registered its trademark with the USPTO can only enforce those trademark rights in the United States. However, this protection is extended to all countries listed in the Madrid Protocol application, which allows infringers to be held accountable in various jurisdictions worldwide.

Contact a Trademark Lawyer To Learn More

If you have questions about how to register a trademark internationally or whether your company needs international trademark registration, an experienced trademark attorney may be able to help. The attorney can help evaluate your business needs and help you determine whether to apply internationally and in which countries to apply. If you want a guide through the international application process, either through the Madrid Protocol or local applications, consider contacting the Grabbe Law Office today to schedule a free consultation.