Tips from the Trademark Insider: How to Protect Your US Trademark Internationally

First, it is critical to understand that there is no one trademark system which you can use to protect your mark in every country around the world. Although certain treaties have been enacted in recent years which ease the ability of trademark owners to extend protection of their marks into other countries, the world trademark systems have simply yet to evolve to the point where there is a one-stop-shop for global trademark protection.

In regard to the current cooperative treaties, the most significant for U.S. Trademark owners is the Madrid Protocol, which allows the extension of protection of U.S. applications and registrations into roughly 75 other countries and economic unions including the Australia, China, Cuba, Korea, the European Union and its member nations , Japan, the Russian Federation, Singapore, as well as a host of other nations.

Second, do you have a pending U.S. Trademark Application or an existing Trademark Registration? If the answer is yes you can use the same to Apply for an International Registration through the U.S. Patent and Trademark Office into any or all of the countries who have signed the Madrid Protocol treaty.

Of note, given the non-refundable nature of the filing fees it is often advisable to have a Trademark Attorney assist you in the process. Additionally, if you mark is refused registration in the foreign country for any reason local counsel may need to be retained in that country to respond to the refusal.

Third, if you do not have a pending U.S. Trademark Application or an existing Trademark Registration you can still register your mark in the Madrid Protocol countries and beyond, you will merely need to have original applications filed for in each of the countries you seek protection. Of note, due to the complexities involved many applicants choose to retain one coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.

Fourth, whether or not you retain a pending U.S. Trademark Application or an existing Trademark Registration the same is moot should you attempt to seek international protection in non-Madrid Protocol countries. For instance, most countries in Africa, South America, the Middle East are not members of the Madrid Protocol. As such you will need to file directly in these countries via local counsel. In this instance it is highly recommended that you consult a coordinating general counsel to oversee the international filings especially where multiple filings in various countries are involved.

TheTrademarkCompany.com