What is a trademark?

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples may include brand names, slogans, and logos. The term “trademark” is often used in a general sense to refer to both trademarks and service marks.

U.S. and International Trademark rights

Trademark rights like patent rights are territorial and only enforceable in the granting countries. Thus a U.S. trademark gives no rights outside of the U.S., however, a U.S. trademark holder can block importation and sale of trademarked goods in the U.S. and can sue for damages. Suits can be brought against foreign companies or individuals in U.S. federal district court as long as the trademark holder can serve the infringer by service of process.

International trademark registration may be through the Madrid Protocol or registering in each foreign nation separately. The total cost depends on a number of factors.

The International Trademark

First of all, to clarify, there isn’t an “international trademark” that will be accepted everywhere. There is, however, international trademark registration.

When you register a trademark with the U.S. Patent and Trademark Office (USPTO), you have your trademark protection throughout the United States. This trademark protection doesn’t extend to other countries. If you want to protect your mark in other countries, you’ll have to register it with the countries where you want its protection.

The Madrid Protocol allows trademark owners to register their marks in any of its member countries. Trademark owners only have to file a single application, referred to as an “international application.” The United States is one of 123 member countries participating in the Madrid Protocol. These participating countries are members of the Madrid Union.

The international trademark application makes the process of applying for trademarks in other countries much easier and faster, however, there is no guarantee that a particular country will accept your registration. Each country follows its own laws and standards relating to the types of trademarks it registers.

The Cost of International Trademark Registration

The cost may vary from one place to another because each country can be territorial over trademark rights and registration. Brand owners with various lines of business may have higher costs than a local company that only has one product.

The cost depends on several factors, including:

• How the trademark is registered, either via Madrid protocol or individual attorneys in various countries
• The complexity of your trademark, word mark or word mark with logo
  The type of registration
• However, if you plan to market and sell your goods or services internationally, you must register your trademarks in those foreign countries where you wish to do business. It’s important to understand trademark regulations in the various countries you want to register.

The Madrid Agreement and Madrid Protocol

The Agreement was established in 1891, and revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended in 1979 for the purpose of providing a mechanism that would allow for a single and inexpensive international trademark registration and to eliminate the need for filing, prosecuting or maintaining separate registrations in multiple countries.

The Madrid Protocol relating to Madrid Agreement, was concluded in 1989, which aims to make the Madrid system more flexible and more compatible with the domestic legislation of certain countries or intergovernmental organizations that had not been able to accede to the Agreement, which makes it convenient and cost-effective for trademark owners to register and manage their marks worldwide. You can file a single application and only pay one set of fees to register for protection in various members of countries. This centralized system allows you to renew, modify, or expand your international trademark portfolio.

There are several advantages the Madrid Protocol offers, including the following:

• A single application: When you use the Madrid Protocol, you only have to file one trademark application. This is much simpler than having to file individual applications for each country in which you wish to register.
• No need to hire foreign trademark lawyers: You don’t have to retain trademark counsels in numerous countries. This can be a money saver. Unless you run into problems in one or more of the countries you are registered in, you won’t need to hire trademark counsel there.
• Easy payment of renewal fees: You will have to pay fees from time to time to most countries your trademark is registered in to keep your registration in force. With an international registration, you’ll pay renewal fees to the International Bureau of WIPO, and it will keep your rights in force in each country you’re registered.
• Easy changes to information: If you change your address, you only have to communicate the change once to the International Bureau of WIPO. Likewise, if your ownership or entity type changes, the office will change the information, and it takes automatic effect in all countries your trademark is registered.
  Despite all of these advantages, some people may choose not to use the Madrid Protocol for several reasons. One of the most common reasons being:

The application for the Madrid Protocol only requires an individual to identify goods and services in a way that is not much broader than how they’re identified in the standard U.S. application. Some people may find this description too narrow.

If you prefer a streamlined system, you might want to use the Madrid Protocol. Just remember that not every country is a member. If you want to register your trademark in a foreign country that’s not part of the Protocol, you may have to register there separately.

I am happy to provide a free 1/2 hour call if you would like the benefit of professional counsel when deciding if you need an international trademark, the best method for obtaining one for your situation, and estimating the cost of your particular needs. Please choose a time on my calendly to speak with me.