Registering Your Trademark Outside the U.S.

Using the Madrid Protocol and Community Trademarks System.

Imagine that you own a leading soap company called CleanWash. The name is famous across America, and you have a federal trademark to ensure that no one else tries to use it. Eventually, you decide to expand your business into Asia. You're shocked to learn that there are dozens of "CleanWash" products already on the market, using the name that you made famous to sell soap.

As markets become increasingly globalized, businesses need to protect their trademarks not just within the borders of the United States, but also around the world. There are two common ways for U.S. trademark applicants to register abroad: the Madrid Protocol and the Community Trademark system.

Registering Trademarks Abroad Through the Madrid Protocol

The Madrid Protocol is a system that allows an applicant to file simultaneous registration applications in any of the 90 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 U.S. Patent and Trademark Office. 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. In other words, you might choose only a handful of countries in Central America, if that is the only other territory where you intent to expand and protect your brand.

Role of National Criteria In Determining Whether Your Trademark Will Be Registered

Each of the Madrid Protocol nations will decide, using its own national criteria, whether to register your 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” drop-down menu on the USPTO home page. Then, on the "TEAS" 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.”

Registering Trademarks Using 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.(Note, however, that the United Kingdom has announced its intention to leave the European Union, and no separate guidance on its international trademark protocol has yet been issued.)

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 will have to file separate national applications for trademark registration in each country. (Currently, as of 2017, this rule still applies to the United Kingdom.)

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.

Trademark lawyers normally 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. You can learn more about that process on the European Union Intellectual Property Office website.

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