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.