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How to File an International Trademark Application via the Madrid System

 

What is the Madrid Protocol?

The Madrid Protocol, administered by the International Bureau of the United Nations World Intellectual Property Organization (WIPO), stands as a pivotal agreement governing international trademark registration across multiple jurisdictions. Enacted to simplify the process of obtaining trademark rights beyond national borders, it offers a streamlined approach for businesses seeking global recognition under a unified system. By filing a single application and paying one set of fees through the Madrid System for Trademark, companies can extend their brand's protection to various member countries around the globe with ease. The Madrid System offers a convenient, cost-effective, and efficient mechanism for trademark registration worldwide.
 
Originally, the Madrid system operated under the Madrid Agreement of 1891, later supplemented by the Protocol to the Madrid Agreement established in 1989. While certain countries are affiliated solely with either the Madrid Agreement or the Madrid Protocol, the latter framework has become the preferred and more widely adopted system.
 

Madrid Protocol Countries

Currently, there are 115 members in the Madrid System, covering 131 countries. They are also known as the Madrid Union, representing more than 80% of world trade. Some prominent member states include:
 
  • United States of America
  • United Kingdom
  • Australia
  • China
  • Colombia
  • European Union and its member countries
  • India
  • Indonesia
  • Japan
  • Mexico
  • New Zealand (excluding Tokelau)
  • Norway
  • Republic of Korea
  • Russia
  • Singapore
  • Switzerland
  • Thailand
  • Turkey
  • Vietnam
 

Who Can Use the Madrid System?

The eligible applicants for the Madrid System fall into 2 categories:
 
  • You are a national of a Madrid System member country or a natural person or legal entity domiciled in a Madrid System member country. Entrepreneurs, inventors, and creators operating as individuals of the member countries can access the benefits of the Madrid System to safeguard their intellectual property rights internationally. Whether you're a freelancer, artist, or innovator, you can apply for trademark registration through this platform.
  • You have a real and effective industrial or commercial establishment in a Madrid System member country. Any commercial entity, regardless of size or industry in the member countries, can leverage the system to secure trademark protection for their brands overseas. This includes corporations, partnerships, sole proprietors, and other business entities. This requirement ensures that applicants have a legitimate connection to the jurisdictions where they seek trademark protection.
 
Note that before applying through the Madrid System, it's essential to have an existing trademark registration or pending application in the country of origin (known as the "basic mark"). The intellectual property office of this country will be the “Office of Origin.” This serves as the foundation for international registration. If the applicant maintains ties to multiple member countries of the system, any of these members can be chosen as the Office of origin for this case. For example, if a British citizen is living in the US, then both countries’ offices can be the Office of origin.
 

2 Types of International Trademark Application

Two main categories stand out in global trademark registration: outbound and inbound. The critical difference between them depends on the involvement of the United States Patent and Trademark Office (USPTO) as the Office of Origin.
 
In outbound applications, the USPTO serves as the Office of Origin. Here, the applicant already holds a US trademark application or registration and seeks to expand its protection globally through the protocol.
 
For example, a U.S.-based company, ABC Tech Inc., wants to protect its "TechShield" brand internationally and files an international application through the USPTO, designating the European Union, China, and Canada.
 
Conversely, inbound applications occur when a foreign trademark application is in place, and the applicant aims to secure trademark protection within the United States via the protocol.
 
For example, an Australian company, XYZ Ltd., wants to protect its brand in the United States. XYZ files an international application through the Italian Patent and Trademark Office, designating the U.S. as a target country.
 
This distinction is pivotal, in shaping the preparatory measures necessary for a smooth application process.
 

Outbound Applications

To qualify for filing an outbound application through the USPTO, you must meet the following criteria. 
 
Basic Mark: You need to have a “basic mark” in the US, either registration or pending application for your trademark. Beware that consistency with the basic mark for the international application is imperative in terms of both the trademark and its owner. Additionally, the list of goods and services included must either match or be narrower in scope compared to those specified in the basic mark.
 
Eligibility: You must be either a national of the US or have a domicile address in the US, or have a real and effective industrial or commercial establishment in the US to submit an eligible application.
 
Additional Country: It is mandatory to designate at least one additional country where you intend to extend the protection of your trademark. This chosen country must be one of the member states of the Madrid Protocol.
 
 

Inbound Applications

To register your trademark in the United States via the Madrid Protocol, a prerequisite is ownership of an international registration issued by the International Bureau of the World Intellectual Property Organization (WIPO). Once secured, you can proceed to request the extension of protection to the United States. This extension process is akin to any other US trademark application, offering identical legal rights upon registration.
 
There are two options to include the United States for protection extension: You can specify the United States as part of your initial international application, which is filed through your home trademark office. Alternatively, after your international registration is granted, you can add the United States through a subsequent designation.
 
 

Attorney Requirements for Outbound and Inbound Applications

If you are domiciled in the United States, you have the option to file an international application through the USPTO independently, without the need for legal representation.
 
However, suppose you are a foreign-domiciled applicant relying on a US registration or application as your basic application. In that case, you must engage a US-licensed attorney for the filing process and proceedings to ensure compliance with local trademark laws and procedures through the USPTO. In instances where the USPTO issues a provisional refusal of the application, your legal representation must respond and advocate on your behalf throughout the ensuing proceedings afterward with the USPTO.
 
Additionally, after obtaining international registration, it is advisable to secure legal representation from attorneys licensed to practice law in the target country where you intend to register your trademark, as many intellectual property offices in the world require legal representation for foreign trademark applicants.
 
 

How to Select a Good Attorney

Entrepreneurs and small business owners must prioritize trademark registration to safeguard their brands. Selecting the appropriate trademark attorney is essential for successfully registering and protecting their invaluable asset. Let’s look at some important factors when selecting a good attorney for your trademark:
 

Expertise

Select an attorney specializing exclusively in trademarks, with extensive experience working with the USPTO. Verify their past track record of successfully registered trademarks, ensuring they possess the skills, adeptness, and proficiency required for the nuanced trademark registration process.
 
Also, a trademark attorney's educational background, preferably from a reputable law school, indicates their legal understanding. Additional training or education, such as a background in relevant fields like technology, can offer advantages for specific trademark cases.
 

Experience

Look for attorneys with broad experience in various aspects of trademark law, including searches, applications, responses to office actions, litigation, and renewals. Their comprehensive knowledge enables strategic guidance and effective protection of your brand during the process.
 

Communication

Choose an attorney known for effective communication. They should provide transparent assessments of your trademark's chances of registration, foster a positive working relationship, and ensure personalized attention to your case. Effective communication and timely updates are crucial. Reviews and testimonials from colleagues and former clients can provide valuable insights into an attorney's performance and reputation.
 
 

How to File an International Trademark

 

 

The process of applying for outbound and inbound trademark registration through the USPTO can seem daunting, but understanding each step simplifies the journey. Let's break them down:
 

Outbound Applications Process

Step 1. USPTO Review

To file your international trademark application, you'll need to use the Trademark Electronic Application System International (TEASi). Ensure accuracy and consistency with the information in your basic application or registration. Choose the pre-populated form in TEASi to streamline the process, making minimal changes to avoid manual review. If you can't use the pre-populated form, fill out the free-text version accurately, referring only to TSDR data.
 
Designate at least one country for protection extension initially. Stay aware of deadlines and use alternative filing methods if USPTO system issues arise. Don't forget to include the required email addresses to avoid delays in processing.
 
Fees: Two fees are required for your international application: a certification fee payable to the USPTO in USD upon filing, amounting to $100 per class of goods or services per application, and an international fee payable to the International Bureau in CHF(Swiss franc) after certification. You can pay the international fee directly to the International Bureau in CHF after certification or through the USPTO in USD during filing.
 
Be aware that the basic fees for black-and-white and color trademark designs differ, with color being more expensive. Specifically, the fee for a black-and-white design is CHF653, while the fee for a color design is CHF903. Therefore, it is crucial to confirm your choice at the time of application, as it directly affects the cost.
 
Once your international application is submitted and the certification fee is paid, the review will be initiated by the USPTO to ensure alignment between your application and your US basic application(s) or registration(s). If the USPTO certifies the application, it will be sent to the International Bureau for further procedures. If any differences are found, a denial of certification will be issued. In such cases, if you already paid the international fee through the USPTO, it will be refunded, but the certification fee is non-refundable.
 
 
If you receive a denial of certification notice, you have two options:
  • Submit a new international application addressing the identified issues.
  • File a Petition to the Director to contest the denial. Note that this requires a petition fee and does not guarantee approval.

 

Step 2. International Bureau review

The International Bureau carefully reviews your application to ensure compliance with Madrid Protocol requirements and completeness of information. If any issues arise, they issue a notice of irregularity, then you must address and rectify the identified problems before proceeding with your international registration.
 
Once everything is corrected, your trademark is published in the WIPO Gazette of International Marks, and you receive an international registration certificate. This registration is valid for 10 years and an additional 10-year period of renewal is available. Additionally, the International Bureau notifies the designated countries of your request to extend trademark protection to them.
 
 

Step 3. Review by Foreign Countries

When you designate foreign countries in your international trademark application, each country reviews it according to its own trademark laws. Many require representation by a local attorney licensed in their jurisdiction. Hiring a local attorney is recommended to assist you with all the paperwork and procedures involving foreign trademark offices.
 
Countries have 18 months to refuse trademark protection. If no denial is issued within this period, protection is automatically granted.
 
After obtaining international registration, you can file subsequent designations to extend protection to additional Madrid System members. These can be filed directly with the International Bureau or through the USPTO. Filing directly with the Bureau exempts you from paying the transmittal fee for USPTO, and the process remains the same for each designated member.
 
 

Step 4. Maintain Trademark Registration

During the five-year dependency period after the issue date of your international registration, your basic trademark registration/application and international registration are linked. It's crucial to adhere to maintenance requirements and deadlines for your basic registration.
 
Maintenance documents for your basic registration must be filed with the USPTO. If the basic registration is canceled during this period, your international registration and all extensions of protection will be canceled as well.
 
Renewals for your international registration and extensions must be filed with the International Bureau. Additional maintenance requirements, such as proof-of-use filings, should be submitted directly to the trademark office in each designated Madrid member.
 
Visit here for more details about the process of outbound applications.
 
 

Inbound Applications Process

Step 1: USPTO Receiving a Request

When the USPTO receives your request for an extension of protection from the International Bureau, it assigns a US application serial number and places it in the examination queue. You'll receive a filing receipt containing a serial number for tracking. Remember, you'll need a USPTO.gov account for electronic filing and responses.
 
Fees: Apart from the basic registration fee for CHF300, there are two types of fees:
 
  • Supplementary Registration Fee: CHF100 per designated contracting party. For certain contracting parties, this supplementary fee is replaced by an "individual fee."
  • Individual Fee: Some contracting parties require an individual fee instead of the supplementary fee. For details, refer to the individual fee schedule. For example, the fee for the United States is CHF460 per class.
 

Step 2: USPTO Reviewing an Application

Your application undergoes examination by an attorney to ensure compliance with federal trademark law. Check the official website for average wait times. Depending on the outcome, you'll receive either an initial office action or a notice of publication.
 
If your application faces no issues, you'll receive a notice of publication, marking progress to Step 3.
 
 

Step 2-1: Respond to Office Action

Upon receipt of an office action outlining any legal issues to your trademark's registration, termed as refusals and requirements, you're required to respond within six months, addressing each refusal or requirement. Subsequently, the examining attorney evaluates your response. 
 
Depending on the adequacy of your response, meaning that whether your response resolves all refusals and requirements successfully or the examining attorney spots new issues, you may receive a final office action, a second non-final office action, or a notice of publication (hence step 3). Note that If you fail to respond in time, then this application will be abandoned.
 
 

Step 2-2: USPTO Issues Final Office Action

Receiving a final office action indicates that your previous response didn’t satisfy the details of refusals and requirements. You can either file a request for reconsideration for another chance to satisfy all requirements or appeal to the Trademark Trial and Appeal Board (TTAB).
 
You can take both actions, but remember that further action needs to be taken within six months of the issuing of the final office action. There are still other options, such as filing a petition.
 
 

Step 2-3: Requesting for Reconsideration / Filing an Appeal

The examining attorney reevaluates your request. This time, you may receive a notice of abandonment or a notice of publication (hence step 3). If your application is abandoned, you have the option to revive it within two months. Otherwise, you may file a new subsequent designation or a new application.
 
If your request for reconsideration is unsuccessful, or if you appealed directly to the TTAB, your case is now handled by the TTAB.
 
 

Step 3. Publication, Opposition, and Registration

If your application meets all legal requirements, USPTO will publish your trademark in the Trademark Official Gazette (TMOG). The TMOG is a weekly online publication that notifies the public that the USPTO plans to register your trademark. Approximately one month after approval, your trademark will be published.
 
During this period, individuals who perceive potential harm if your trademark is registered have the opportunity to file an opposition, contesting its registration. Alternatively, they may request an extension of time if they are still deliberating. If no oppositions are raised, your trademark is typically registered approximately three months after its publication in the TMOG.
 
Congratulations! Your US trademark registration, submitted via the Madrid Protocol, serves as an extended protection of your international registration now. To secure and maintain your registration, ensure timely maintenance of both international and US trademark registrations, filing required documents, and paying fees.
 
Visit here for more details about the process of inbound applications.
 
 

Benefits of an International Registration

Here, we explore the advantages of pursuing international registration for your trademark and brand, emphasizing the benefits of expanding protection globally and more.
 
  • Global Expansion: For businesses eyeing international markets, securing trademark protection in each country individually can be arduous and time-consuming. The Madrid Protocol offers a streamlined alternative, allowing companies to extend their trademark rights on an international scale simultaneously.
  • Cost-Effectiveness: Traditional methods of obtaining international trademark protection often require substantial expenses due to separate filing requirements and legal fees in each jurisdiction. By centralizing the application process, the Madrid Protocol minimizes costs, making it an attractive and convenient option for businesses of all sizes.
  • Management Efficiency: Managing multiple trademark registrations across various countries can be complex and resource-intensive. Through the Madrid System, businesses can benefit from centralized administration, including updates, renewals, and modifications, thereby reducing administrative burdens with better efficiency.
  • Deferred Use Period: Registrations designated to the USA benefit from a 5-year grace period to commence use, allowing flexibility in meeting strict use requirements for national US trademarks.
 
 

Let WPTO Help You Apply For an International Trademark

Looking to secure your international trademark registration hassle-free? Let WPTO guide you through the process seamlessly. With over 70 years of expertise in providing comprehensive IP services, our team of experienced attorneys, patent agents, engineers, and international IP consultants ensures your trademark rights are safeguarded worldwide.
 
From electronics to biotech, our specialists handle it all, having successfully obtained over 30,000 patent and trademark rights globally. Trust in our expertise and technical knowledge to protect your intellectual property. Contact us now to leave a message and start your international trademark registration journey.
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