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.
For more information regarding the Madrid Protocol and filing for international trademark protection, see our Madrid Protocol page and the WIPO’s website at http://www.wipo.int/members/en/.