Currently there is no such thing as a single international trademark application.  Similar to patents, the scope of protection of trademark registrations only extends to the country in which they are filed.   As such, a US trademark application will only grant trademark rights in within the United States. Accordingly, to obtain protection for your trademark word or design in foreign countries, you will need to file a trademark application in each country.  In some cases this may be fine if you are only filing in one or two countries, but if want protection is several countries, this can be very costly. However, there are different alternatives to foreign trademark filing as discussed below.

Madrid Protocol Application

A single application called the Madrid Protocol Application may be filed by your US attorney, designating several foreign countries that are members of the Madrid Protocol treaty. This international treaty streamlines the foreign filing process by allowing the filer to file a single application designating multiple foreign member countries.  The Madridp Protocol system is currently composed of over sixty countries. The Madrid Protocol system has several advantages including a lower cost, compared to filing separately in each, country, and greater efficiency.  There are requirements however which are listed below:

A) A pending US application, or issued US registration must be on file with the United States Patent and Trademark Office (“USPTO”); and

B) The owner of the trademark must either be a US citizen; or be domiciled in the US; or must have a “real and effective industrial or commercial establishment in the United States.”

There are several considerations as to which method of foreign trademark filing is appropriate.  For example, with the Madrid Protocol, the original US application is extremely important because the Madrid Protocol application depends upon the originally filed US application. If the US application fails, during the first five years, the Madrid Protocol application will likewise follow.  To discuss the appropriate foreign trademark filing strategy, call our office for a consultation.