- I registered my trademark in the United States. Is my trademark protected internationally?No. Trademark rights are geographic-specific, meaning a trademark will be protected only in the country or countries where the trademark is registered. Therefore, registering a trademark in the U.S. protects the mark in the U.S., but it does not protect the mark in other countries like Canada, Mexico, and Germany.
- Is there such thing as a single “international trademark” that is good everywhere?No. There is no such thing as an “international trademark” that is good everywhere.
- Is there a convenient and cost-effective way for a U.S. trademark holder to apply for protection internationally?Yes. The “Madrid System” is a cost-effective and efficient way for trademark holders – individuals and businesses – to apply for protection in up to 128 countries through the filing of one application (“international trademark application”) with a single office, in one language, with one set of filing fees, in one currency. The Madrid System also allows trademark holders to modify, renew, or expand their global trademark portfolio through one centralized system. Each country designated for protection in the international trademark application has the right to determine whether or not protection for a trademark may be granted. Once the trademark office in a designated country registers the mark, the mark is protected in that country just as if that office had registered it.
- The USPTO approved my trademark application for registration. Will the trademark offices in other countries do the same?Not necessarily. While the international application simplifies the process of applying for foreign trademarks, it does not guarantee that a particular country will agree to register your trademark. Each country has its own laws regarding what types of trademarks can be registered, therefore, some countries might permit registration of your trademark and others might not.
- What are the requirements to file an “international trademark application” through the USPTO?To file an international trademark application through the USPTO, an applicant must meet each and every requirement:
- You can file an international application through the USPTO if your trademark is registered with the USPTO, or you filed an application for registration with the USPTO.
- You are a national of, or domiciled in, the United States, or have an industrial or commercial business in the United States.
- The international application must list the same mark and same owner as the U.S. registration or application.
- The list of goods and services in the international application must be the same as or narrower than the list of goods and services in the U.S. registration or application.
- You must pay a U.S. certification fee when you submit the international application. The U.S. certification fee is $100 per class of goods/services.
- You must identify at least one other country where you want to extend your trademark protection. The other country must be a member of the Madrid Protocol.
- How long does each country have to decide whether to refuse or accept the international trademark application?Each country has 18 months from the date on which WIPO notified the Office of its designation to refuse an international trademark application. If a member country does not deny the application within 18 months, the applied-for trademark us automatically granted.
1. Contact Us
Contact us to schedule your free international trademark consultation. We can be reached at 1 800-651-7301, via email at info@trademarkattorneyslosangeles.com, or through our contact form at the bottom of this page. If you fill out the contact form, one of our attorneys will get back to you within 24 hours of your submission to schedule a phone consultation, virtual meeting, or an in-person meeting with you. During the trademark consultation, a U.S. licensed attorney will explain the international trademark registration process to you and answer any questions you may have.
2. Prepare and file an international trademark application with the USPTO
We prepare and file your international trademark application with the United States Patent and Trademark Office (USPTO). The USPTO will check to see whether your international trademark application complies with their filing requirements. If it complies, the USPTO will certify the international trademark application and forward it to the International Bureau of the World Intellectual Property Organization, or “WIPO”, for further processing.
WIPO will check to see if your international application complies with their formal requirements. For example, WIPO might look to see if your international application contains sufficient contact details, has a designation of at least one member country, has high quality images, and that the required fees are paid. If it complies, WIPO will notify the trademark office of each country. If, however, the application does not comply with WIPO’s formal requirements, WIPO will send you and the USPTO an “irregularity notice” explaining how to correct the issue within a given time limit. Each foreign country designated in the international trademark application will review the application using the same standards that apply to other trademark applications filed in that country.
3. Liaise with Foreign Law Firms
Each country has its own laws regarding what types of trademarks can be registered and, therefore, foreign counsel may be required to assist in prosecuting the international application. We’ve partnered with foreign counsel that we trust and that provide our clients with the best foreign registration prices.
4. Trademark is Registered Internationally
If everything goes right, your trademark will be registered in the countries designated in your international trademark application.