One of the many benefits to federal trademark registration is the ability to also prosecute an international trademark registration if certain trademark qualifications are met. If products and services are provided and/or sold in countries outside the United States, a business or individual should seriously consider an international trademark registration in those additional countries to ensure the trademarks are protected. Even if trademark is not currently being offered in the marketplace bu the business or individual has an intent to use the trademark, most countries still allow the prosecution an intent to use trademark application.
Why International Trademark Registration
Holding a federal trademark registration only provides trademark protection in the United States. Prior to the advent of the internet, that may have been enough, but now that many business are advertising their goods and services on the internet, companies need to seek international trademark protection in those certain countries where their goods or services are being advertised or sold. This is the only way to ensure protection of the trademark rights associated with a worldwide brand.
Procedure for International Trademark Registration
The first step to registering a trademark internationally is to ensure the trademark is registered in the home country. Once the trademark is registered in the home country, rather than register the trademark in each country where the individual or business is seeking trademark protection, there are several options a trademark owner can pursue to save time and money. One method is to apply for a Community Trademark (CTM). This allows the trademark owner to register its trademark throughout the European Union in one application with one fee. The only downside to applying for a CTM is that if the proposed trademark isn’t clear for use in any of the countries of the European Union, the entire CTM application will be rejected.
Another method of international trademark registration is through the Madrid Protocol. There are currently 188 countries, referred to as member states and are part of the Madrid Protocol. To register a trademark in one of the 188 member states, the trademark owner simply files a single international trademark application, with the International Bureau of the World Property Intellectual Organization (WIPO), through the USPTO. The trademark applicant will be required to pay a fee for each country in which international trademark registration is sought. This will save the trademark owner time and money by avoiding prosecuting multiple international trademark applications. Also, if one country rejects the trademark, a trademark owner may still successfully register a trademark in another country.
Since November 2, 2003, the United States has participated in an international treaty for trademark filings called the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, June 27, 1989 (Madrid Protocol). The Madrid Protocol provides an international trademark registration system that creates a streamlined process for marks registered in any member country. In other words, under the Madrid Protocol, United States citizens and companies can file trademark applications in other Protocol member countries directly through the United States Patent and Trademark Office.
For example, if you have a federal trademark registration with the USPTO, you may file a single trademark application for a single international trademark registration by designating any member nation, and apply for trademark registration in that country as well. The trademark applications are then sent to the trademark offices for each of the designated countries. Each trademark office will conduct its own review of the application to determine registrability of the trademark. It is important to note that you must register your trademark in every single nation that you want protection. Simply because your trademark is registered in one country, does not automatically mean that it will be registered in every member nation. In the event an applicant receives an office action or opposition, the applicant may need to hire local attorneys in that country to handle the matter.
The Madrid Protocol provides only a system for filing trademark applications – trademark applicants are responsible for performing any preliminary trademark search or knock out searches to determine whether a trademark is available in a particular country and for determining what trademark use requirements a particular country have been satisfied.
For more information on the Madrid Protocol system, see, Madrid Protocol Contracting Parties, for a list of the 91 member nations. Also see, WIPO’s website at http://www.wipo.int/members/en/.