How to File an International Trademark

How to File an International Trademark

If you have a trademark that is already registered with the U.S. Patent and Trademark Office (USPTO), it is protected in the U.S. However, if you plan to do business outside the U.S., you will need to register it separately in the countries where you plan to do business.

Under the Madrid Protocol treaty, you can submit a single application for trademark protection in more than 90 countries. While this simplifies the process, it does not guarantee that your trademark will be approved for registration in every country since each country has its own standards and laws governing trademark protection.

Qualifications for Submitting an International Trademark Application

You can file an international trademark application through the USPTO if:

• You have an existing trademark that is already registered with the USPTO;
• You have already applied for trademark application with the USPTO; and
• You are a U.S. national OR living legally in the U.S. OR have a commercial or industrial business in the U.S.

How to Submit an International Trademark Application

You can submit an international trademark application online through the Trademark Electronic Application Service (TEAS) for a fee. The requirements for submitting the application include:

• International application must be for the same trademark with the same ownership as the U.S. registered mark;
• International application must be for the same or a narrower list of goods and services as the U.S. registered mark;
• Payment of a fee (currently $100 per class of goods and services);
• Identification of one or more countries where you want your trademark to be protected (these countries must be a member of the Madrid Protocol).

International Trademark Application Review Process

Once you have filed your international trademark application, it will be reviewed by three different agencies:

USPTO — The USPTO will review the application to ensure that the information provided matches the trademark’s U.S. registration or application.

WIPO — The International Bureau of the World Intellectual Property Organization (WIPO) will review the application to ensure it meets the requirements of the Madrid Protocol. If approved by WIPO, you will receive an international registration certificate good for 10 years, and renewable in 10-year increments. WIPO will also notify the countries designated on your application that you have requested trademark protection.

Individual Country Review — Each country designated on your application will review the application using the standards unique to that country. Each country has 18 months in which to deny an application; if it does not, protection is automatically granted.

We can help you protect and defend your intellectual property rights at home and abroad. Contact one of the experienced Florida IP attorneys at Jurado & Farshchian, P.L., at (305) 921-0440, or email us at info@jflawfirm.com.

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