How To Protect Your United States Trademark Internationally

Initial, it is crucial to recognize that there is no 1 trademark system which you can use to safeguard your mark in each and every country around the world.  Despite the fact that specific treaties have been enacted in recent years which ease the capacity of trademark owners to extend protection of their marks into other countries, the world trademark systems have simply but to evolve to the point where there is a one-stop-shop for global trademark protection.

In regard to the current cooperative treaties, the most substantial for U.S. Trademark owners is the Madrid Protocol, which allows the extension of protection of U.S. applications and registrations  into roughly 75 other countries and economic unions such as the Australia, China, Cuba, Korea, the European Union and its member nations , Japan, the Russian Federation, Singapore, as properly as a host of other nations.

Second, do you have a pending U.S. Trademark Application or an existing Trademark Registration?  If the answer is yes you can use the same to Apply for an International Registration through the U.S. Patent and Trademark Office into any or all of the countries who have signed the Madrid Protocol treaty.

Of note, given the non-refundable nature of the filing fees it is frequently advisable to have a Trademark Attorney help you in the process.  Moreover, if you mark is refused registration in the foreign country for any reason nearby counsel might want to be retained in that country to respond to the refusal.

Third, if you do not have a pending U.S. Trademark Application or an existing Trademark Registration you can still register your mark in the Madrid Protocol countries and beyond, you will merely need to have original applications filed for in each and every of the countries you seek protection.  Of note, due to the complexities involved a lot of applicants choose to retain one coordinating general counsel to oversee the international filings specifically where numerous filings in different countries are involved.

Fourth, regardless of whether or not you retain a pending U.S. Trademark Application or an existing Trademark Registration the identical is moot should you attempt to seek international protection in non-Madrid Protocol countries.  For instance, most countries in Africa, South America, the Middle East are not members of the Madrid Protocol.  As such you will want to file directly in these countries via local counsel.  In this instance it is extremely advised that you consult a coordinating general counsel to oversee the international filings specially where multiple filings in different countries are involved.