Registering Your Trademark Outside the U.S.

Using the Madrid Protocol and Community Trademarks System

There are two common ways for U.S. trademark applicants to register abroad: the Madrid Protocol and the Community Trademark system.

The Madrid Protocol

The Madrid Protocol is a system that allows an applicant to file simultaneous registration applications in any of the 88 nations that belong to the Madrid Protocol treaty. You can find a listing of all member nations at the World Intellectual Property Organization (WIPO) website. The Madrid Protocol, adopted in the United States in November 2003, is administered by the WIPO and is considered a more efficient and less expensive route for simultaneous registration of several foreign marks.

For U.S. applicants, the first step under the Madrid Protocol is to federally register your mark with the USPTO. This application/registration is then referred to as either the basic application or basic registration. The nations in which you choose to register after the United States are referred to as nations for which “extension of protection” is sought.

National criteria

Each of these nations will decide, using its national criteria, whether to register the mark. If registration is refused in one of these countries, it will not affect the main Madrid Protocol application. For example, if you apply to register in Denmark and Estonia but are rejected in Estonia, it will not affect the status of your application in Denmark. Only if the basic registration (the U.S. registration) is abandoned or declared invalid within the first five years of the international registration will the other registrations be terminated. To file, click “Online Filing” under the “Trademarks” dropdown menu on the USPTO home page. Then on the TEAS home page, click “Madrid Protocol Forms.” Choose “Application for International Registration.” If you later want to add more nations, you can come back and choose “Subsequent Designation.”

The Community Trademark

The Community Trademark is a method of registering for a trademark that is good in the 27 European countries that belong to the European Union (Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovenia, Slovak Republic, Spain, Sweden, and the United Kingdom). To qualify for Community Trademark status, the proposed mark must be acceptable in all countries. If your application is rejected by even one country, you must file separate national applications for trademark registration in each country.

Unlike a trademark issued under the Madrid Protocol, the CTM is good throughout the European Union nations and can be enforced throughout the EU. So, instead of having to file separate lawsuits in each member nation, you can file one lawsuit for infringement in many nations.

Generally, trademark lawyers advise that a CTM is worthwhile if registration would otherwise be sought in more than three of the EU nations. An application for a Community Trademark may be made to the Office for Harmonization of the Internal Market, in Alicante, Spain. This site provides more information about how the Community mark works and how to apply for one.

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