We are often asked by clients if there is such a thing as a “worldwide” trademark that offers protection in every country around the globe.
Short answer: No. Generally speaking, you’ll need to apply for trademark protection separately in each country where you wish to do business. The good news, however, is that a number of countries have formed treaties to make this process easier for applicants seeking some sort of international trademark rights.
The Madrid Protocol is one such treaty, and though it does not afford immediate or incontestable international protection, it is the closest thing to an “international trademark” that a business or brand can secure. Under the Madrid Protocol, a single application for a trademark can be submitted in any of 124 partner countries. It is the fastest and most convenient way to secure trademark protection abroad.
For United States based applicants, the process actually starts with the United States Patent and Trademark Office (USPTO). You must already have applied and received a serial number for a pending application and your international trademark application will be based on that mark and the associated information. You will then need to identify at least one other member country of the Madrid Protocol where you want to extend your trademark protection.
Once the Madrid Protocol application is submitted, the USPTO will review your application to ensure that it meets all necessary requirements and then send it to the International Bureau who will determine if the application meets all the requirements of the Madrid Protocol. If it does, your trademark will be published in the WIPO Gazette and will receive a registration certificate that is good for ten (10) years, with a renewal option for additional 10-year periods.
It is important to note that securing an intentional registration certificate does not guarantee approval in individual member nations. The countries where you requested protection will have a chance to review your application based on the standards they use in their nation to approve or deny trademarks. Each member nation has 18 months to review an application and issue or deny registration.
Of course, there are many other rules and regulations that one must be aware of when considering registering a trademark abroad. And if the countries in which you desire protection are not part of the Madrid Protocol applications would need to be submitted directly in those jurisdictions. In such situations, your attorney will inform you of the trademark requirements of the country where you wish to file and help you submit an application that is legally compliant.
Here at the Law Office of Jason H. Rosenblum, PLLC, we assist clients in the United States with securing international trademarks, and we also help brands based in countries secure their desired trademarks here in America. If you have any questions about international trademark protection or you need assistance with an application, please contact us at (888) 666-0062 to schedule an appointment.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.