Are you seeking to extend trademark protection to another country?

Options on How to Extend Your Trademark Protection to Other Countries

The world has become a much smaller place.  With the advent of the internet and other methods of communication, it is becoming more common for businesses to operate or sell products in multiple countries. For small businesses, startups, and trademark owners, understanding how to extend your U.S. trademark internationally can provide significant benefits. This blog post will explore how you can leverage the Madrid Protocol (also known as the Madrid System) to extend your U.S. trademark to other jurisdictions efficiently and cost-effectively.

Trademark Protection is based on Jurisdictional Boundaries

First, it's essential to recognize that trademark registrations are only valid in the jurisdiction where they are registered. There is no such thing as a "global" trademark, as each country in the world has its own trademark laws and registry.  So, by way of example, a trademark registration in Canada only provides protection in Canada.  A trademark registered at the USPTO will only provide protection within the United States.  Similarly, if you want or need to have trademark protection in numerous jurisdictions, you will need to undertake steps to attain registration in each of those jurisdictions.  Since it is possible for the same mark to be registered in different jurisdictions by different owners - that also means that someone else might be able to claim your mark in another country if you do not take steps to register it.  

Two Viable Methods for Extending Trademark Protection

There are two primary ways to extend the protection of your U.S. trademark to other countries:

1. Direct Registration: You can register your trademark directly in each country where you seek protection. This means complying with the domestic laws of each jurisdiction, which can be a complex and time-consuming process.  This option also requires that you retain a trademark lawyer in each country to help with the process.
2. Madrid Protocol: Alternatively, you can use the Madrid Protocol to extend your U.S. trademark. This international treaty simplifies the process by allowing you to seek protection in multiple member countries through a single application.   This option allows you to file via the USPTO, and your US trademark attorney can handle everything (without the need to retain counsel in other countries).  

Understanding the Madrid System (Basics)

The Madrid System is the result of international agreements (i.e.the Madrid Treaty and an additional Protocol) and simplifies and reduces costs for businesses seeking trademark protection in other countries. Managed by the World Intellectual Property Organization (WIPO) it enables trademark owners to seek protection in 124 member nations through an application in one language and via one member nation trademark office.

Advantages of Using the Madrid System

There are many positive aspects and benefits of utilizing the Madrid System to seek to extend the protection afforded by a trademark registration.

1. Cost Effective; Applying through the Madrid Protocol is generally more economical than filing multiple applications in several countries. 
2. Streamlined Process; By submitting one application in a single language the process becomes more direct and less bureaucratic.
3. Centralized Management; WIPO allows management of any trademark modifications, such as renewals or updates.
4. You only need one lawyer, instead of a separate lawyer in each jurisdiction.

Disadvantages of Using the Madrid System

However, there are some negative drawbacks that business owners should be aware of before choosing to seek an extension of protection via the Madrid Protocol.  One of the main drawbacks is the so-called  "Challenges with Central Attack."  Since the original trademark registration serves as the basis of the extension of coverage to other member nations, if your original U.S. Trademark application or registration (or original trademark in another country) faces challenges and gets canceled within five years it could impact extensions to countries. In essence, extension through the Madrid Protocols is akin to a house of cards; if the original registration fails, they all come tumbling down and fail.

Another drawback to keep in mind about the Madrid Protocol - is that it can get quite expensive depending on the number of additional jurisdictions that are selected.

How to Extend Your U.S. Trademark via the Madrid Protocol

1. Start by Submitting a Basic U.S. Trademark Application; To utilize the Madrid Protocol you need to have either a registered trademark or an application pending in the United States.
2. Proceed with Filing an International Application; Once your U.S. Application is established you can submit an application through the United States Patent and Trademark Office (USPTO) which will then be transmitted to WIPO.
3. Select Member Countries, for Protection; In your application indicate the member countries of the Madrid Protocol where you wish to seek protection.
4. Review by WIPO; WIPO will assess your application to ensure it complies with all requirements.
5. Examination by National Offices; If WIPO gives its approval it will send your application to the trademark offices of the selected countries for assessment according to their local laws.

Need Help with using the Madrid System to Extend your Trademark Protection?

For small businesses, startups, and trademark owners looking to expand their brand to another country, leveraging the Madrid Protocol to extend your U.S. trademark can be a highly effective strategy. It offers a streamlined, cost-efficient way to obtain international protection, though it's essential to be aware of potential pitfalls like the central attack.  

Need help navigating the complexities of international trademark protection? Our experienced legal team is here to guide you every step of the way. Contact Dragan Ivetic, Attorney at Law, LLC to learn more about our trademark services and how we can assist you in safeguarding your brand internationally via the Madrid Protocol.  Remember, the initial consultation is free of charge!

Contact us for a Free Consultation on your Trademark legal matter!