You’ve registered your trademark in the United States and have enjoyed the benefit of national protection for your brand. Now you want to take your products to an international market. Can you register for an international trademark like you can a national one?
Not really. But, under the Madrid Protocol, you can file an international trademark application with the United States Patent and Trademark Office (USPTO). And, as part of your application, choose which signatory countries you’d like to have trademark protections in. You’re not automatically granted a trademark in those foreign countries they still have the right to review your application. And they’ll hold it to the same standards as they would for any other trademark application filed in that country. But you’ll be able to request trademark registration in 130 signatory countries.
If you want to apply for an international trademark with the USPTO. First, you need to have a federally registered trademark or have a trademark application in the works. It would help if you also lived in, be a national of, or have a commercial or industrial business in the United States.
To start with, your application for international trademark registration has to have the same trademark information as your trademark registration or application for a national trademark with the USPTO. It should list the same trademark owner as well as the same mark. It should also list the same goods and services.
You will have to pay a fee to file your international trademark application. You should always check with the USPTO before you file your application because the fees can and do change. You’ll need to identify at least one other Madrid nation where you want to extend your trademark registration, but you can identify as many as you want.
You can file your own application online through the Trademark Electronic Application Service (TEAS). However, many people use a trademark registration service to navigate the process. It’s easier because you’ll have trained professionals. This includes trademark lawyers, handling the ins and outs of the application process. Which can be really helpful if you’ve never filed an international trademark application before.
Wait for Approval
Your international trademark registration can take a long time to come through in all the countries where you applied to have trademark protection extended. It will need to go through three different layers of administrative review before your trademark protection is extended in your chosen countries.
The USPTO will review your application first. They are looking to make sure that the information in your international application is the same as in your national trademark registration or application. When they have completed their review, they’ll either send the application on to the International Bureau of the World Intellectual Property Organization (WIPO), or they’ll decline to certify your application. Should they decline to certify your application. They will send it back with an explanation of why they didn’t certify it. Then you can file an amended application.
However, if your application is forwarded to WIPO, they will review it. If it meets Madrid Protocol requirements, WIPO will publish it in the WIPO Gazette. You will receive an international registration certificate that is good for 10 years and can be renewed for 10-year periods.
The review process isn’t over. The final step is to get your trademark application approved in all the countries you indicated when you filled out your international application. The benefit of the application is that you can file for international trademark registrations in your own language. And only your language, in your country of residence, with one application and one fee. That doesn’t mean that the individual countries you apply to don’t individually review your trademark application, because they do.
Each foreign country you indicated on your application will review your trademark application separately. You’ll be held to the same standard as any other trademark applicant in those countries. However, this can’t drag on forever. A country has 18 months to reject your trademark application. If they haven’t rejected your application by then, it’s automatically granted.
Registering a trademark internationally means registering your trademark in every country where you want to do business. Thankfully, there is a treaty in place to make this easy. So you can file for international trademark protection with a single application. Start your international trademark application today, so you can protect your brand wherever your products and services are sold.