In 2003 the United States signed the Madrid Protocol treaty permitting the holders of U.S. trademark applications and/or registrations to extend their U.S. trademark rights globally into over 80 countries around the world simply by filing requests to do so through the U.S. Patent and Trademark Office. Although the treaty dramatically simplified the process of protecting U.S. trademarks internationally, it did not create the mythical global trademark as many believe. In that regard, here are a few tips that every U.S. trademark holder should know about the current state of protecting their U.S. trademarks abroad in today’s global marketplace:
1. There is No “Global Trademark”
First, there is no “global trademark” that can be used to protect your trademark in every country around the world. Although treaties have been entered making it easier for trademark owners to extend protection of their trademarks into other countries, the world’s trademark systems remain largely separate and maintained on a country-by-country basis.
The myth of the global trademark most likely emanates from the Madrid Protocol system and how trademark rights are extended through the World Intellectual Property Office’s (“WIPO”) clearing house for trademarks. In short, when you apply for international protection of your U.S. trademark through the Madrid Protocol system you effectively extend your U.S. rights to WIPO’s global trademark clearing house located in Geneva, Switzerland. When this occurs, you receive an international certificate of registration which, in and of itself, is relatively affordable. However, that certificate does not protect your trademark in all of the countries of the world or even the countries that have signed on to the Madrid Protocol treaty. Rather, once received, this “international registration” is used to extend your U.S. trademark into the other member nations of the Madrid Protocol that you select.
As such, under the Madrid Protocol, a U.S. trademark holder does receive an “international registration” but this is not effective to protect its trademark in the other member nations until the trademark is specifically extended into those countries by the trademark holder. Each country, in turn, has a fee for such extension.
Thus, under the Madrid Protocol it is easy to extend your U.S. trademark internationally on a country-by-country basis. But the myth of the global trademark remains just that, a myth.
2. Extending Your U.S. Trademark Under the Madrid Protocol
Although there is no one global trademark, U.S. trademark owners can still extend their U.S. trademarks easily and affordably under the Madrid Protocol into more than 80 countries worldwide. To do so, U.S. trademark holders need to:
a. Own a U.S. trademark application or registration;
b. Be a U.S. citizen, a U.S. business entity, or have a real and effective presence in the U.S., and
c. Know which specific countries in which they would like protection that are part of the Madrid Protocol. For a list of those countries Click Here.
An application to extend their U.S. trademark rights may then be made with the U.S. Patent and Trademark Office directly seeking protection in specific countries who have also signed the Madrid Protocol.
3. Additional Information About the Madrid Protocol
The Madrid Protocol has vastly simplified the international protection of trademarks. However, trademark owners should be aware of a few important facts when extending their rights under Madrid.
a. Filing Fees are Non-Refundable: As with a U.S. application, the government and/or organizational filing fees to extend your trademark under Madrid are non-refundable. As such, it is highly recommended that you have a professional Research Report conducted to search the U.S. and international records of the countries in which protection is sought prior to filing for the same to make sure the trademark is available for you to be registered;
b. The 5-Year Rule: As mentioned above, a U.S. trademark holder may extend protection of either their U.S. application or registration filed or registered with the U.S. Patent and Trademark Office. When doing so, however, be advised that for the first 5 years extensions of protection under the Madrid Protocol rely on the continued existence of the underlying U.S. trademark application or registration. As such, if your trademark application gets refused in the U.S. or otherwise becomes abandoned you will need to convert any requested extension under the Madrid Protocol into a nationalized or direct application with that country’s intellectual property office in which an extension was sought. Typically this is easy to do. However, additional costs apply.
c. Examination by Foreign Trademark Offices: It should also be noted that just because you request an extension of protection of your U.S. trademark into a foreign country through the Madrid Protocol it does not mean that you will automatically receive protection therefore. The foreign trademark office, like the U.S. Patent and Trademark Office, will, upon receiving your requested extension, examine your request to determine if your trademark is entitled to protection in that country. This may result in your trademark being registered in that country wherein you will receive a document known as a Grant of Protection or it could involve having your trademark refused on procedural or substantive grounds.
4. Protection in Non-Madrid Protocol Countries
Lastly, protection for your trademark is also available in countries that are not members of the Madrid Protocol. For instance, as of the publication of this article most countries in Africa, South America and the Middle East are not members. As such, to protect your trademark in these countries the same must be initiated by filing directly in these countries’ respective intellectual property offices via local counsel and not through the U.S. Patent and Trademark Office.
In conclusion, there is no global trademark. However, the United States’ membership in the Madrid Protocol has made it easy and affordable for U.S. trademark holders to protect their trademarks in roughly 80 countries around the globe. Moreover, protection can be secured in non-member nations as well, it just takes a few extra steps.
As always, if you have any questions regarding this or any related topics Contact Us at The Trademark Company. We are always here to help.