Unfortunately, basic trademarks don’t automatically work internationally. When you receive an approved trademark from the United States Patent and Trademark Office, you’re only covered in the US and its territories. To ensure your trademark works internationally, you’ll need to do some extra legwork. However, agreements between countries exist that allow US trademarks to work internationally.
The Madrid System for the International Registration of Marks enables holders of a valid US trademark to obtain protection in up to 125 countries with a single application. Those countries not covered under the Madrid system will require individual applications, which can become far more complicated. In either case, it’s best to talk to a trademark attorney to boost your chance of success and avoid common pitfalls in international IP protection.
Madrid Protocol 101: How Do Trademarks Work Internationally?
The Madrid system features two distinct components: the agreement and the protocol. The agreement, initially established in 1891, intended to provide a single space for all trademark registrations across countries. However, not all countries wanted to participate due to concerns that the process was ineffective and inefficient. For this reason, the Madrid Protocol was established in 1989 to correct potential defects. Countries can be agreement members, protocol members, or both.
It’s best to look into coverage under the Madrid system before you start approaching individual countries for trademark recognition, as most major markets are included. Just a few commonly targeted countries include:
|Brazil||The European Union||South Korea|
*(no longer covered by an EU designation due to Brexit)
To use the Madrid system, you’ll need to first register your trademark through the United States Trademark and Patent Office. Once approved, this will provide the data for your international application. You can file a Madrid patent application as soon as you have a US serial number.
You’re going to have to select the countries you wish to seek protection from and pay their specific fees. Also, it’s still entirely up to the countries where you apply to determine whether the trademark will be granted. While the Madrid system streamlines the process by allowing you to complete one application, the process is still complicated and best performed by an attorney.
Working with an Attorney to Avoid International Trademark Pitfalls
You’re only required to have an attorney if you or your company are “foreign-domiciled”; that is, if you’re a permanent resident of a country outside the US or if your company is headquartered outside of the States. Even if you’re in the US, though, it’s still wise to work with an attorney. Small errors—like using a color drawing of a trademark in the basic application and a black and white one in the international paperwork—can result in a denial. An attorney will be familiar with all these minor hiccups and help you overcome them.
On top of that, you’re going to need to make sure that your trademark doesn’t infringe on an existing one in another market. If you thought the US trademark search was hard, wait until you have to sift through the 46,220,000 records in the Global Brand Database! The database doesn’t even guarantee it has all the specific marks that might be covered. It’s also recommended that you search through regional intellectual property offices to ensure that your mark isn’t a duplicate of someone else’s.
And as a worst-case scenario, the Madrid system creates the risk of something called a “central attack” against your registered trademark. In this, someone could challenge your original application for the first five years following its registration. If successful, you would lose all your trademark protection across all the countries that initially approved it. There are ways to mitigate this risk, but it’s important to get legal guidance from an expert trademark attorney as you consider your options.
Answering the question “how do US trademarks work internationally” can be complicated. The first answer is “they don’t.” Your basic trademark is only protected in the US. However, if you take advantage of the Madrid system with the help of an attorney, you can significantly expand the protection of your branded assets.
Bold Patents can help improve your prospects in international markets by providing the right guidance to ensure approval on your initial trademark application. To learn more about how we can help, contact us online or call 800-849-1913.