Friday, 19 September 2008

If You Plan To Do Business Internationally, You Should Consider an International Application for Registration of a Trademark under the Madrid Protocol

In a recent post, we discussed a Community Trade Mark (CTM), and how it allows a trademark applicant to have protection within all countries of the European Union (EU).  When filing a Community Trade Mark, it can be done through The Office for Harmonization in the Internal Market, also known as OHIM.  However, that is not the only option.

The Madrid Protocol allows a trademark owner to file an international application for registration under the Madrid Protocol.  This can be done through the United States Patent and Trademark Office (USPTO) as long as the applicant is a national of the United States, a domicile within the United States, or has a real and effective commercial establishment within the United States.  The benefit of such an international application is that there is one filing fee, the CTM Trade Mark through the EU is an option, and all other members of the Madrid Protocol can be selected in order to give you protection in each of those countries. 

The attorneys at Traverse Legal can file the Madrid Protocol international application for registration through the United States Patent and Trademark Office, designate which registration countries the applicant would like to have protection in, including the EU, and then the application will be forwarded to the World Intellectual Property Organization (WIPO), wherein WIPO will handle all communication between the United States Patent and Trademark Office and the other countries including the European Union.  Once filed, each country will review the trademark as necessary and notify the USPTO whether or not the international application and therefore the trademark protection is achieved.  For example, WIPO registers the international application and then electronically notifies the OHIM of the designation of the European Community.  This notification triggers an 18-month time limit within which the OHIM must notify any provisional refusal of protection based on absolute grounds or relative grounds to WIPO.  Thus, a trademark applicant will be able to understand where it has trademark protection. 

No longer should United States companies focus solely on brand protection within the United States.  A company‚Äôs brand, which includes its trademark and other valuable intellectual property, needs to be protected in all places where business is conducted.  These filing mechanisms, namely the international application for registration under the Madrid Protocol, makes it efficient and cost effective to identify the countries and acquire protection within them.  Should you have questions regarding a Community Trade Mark within the European Union, an international application for registration pursuant to the Madrid Protocol, or merely a United States Patent and Trademark Office filing, you should contact an attorney who has handled all of these issues. 


Post a comment

Comments are moderated, and will not appear on this weblog until the author has approved them.

If you have a TypeKey or TypePad account, please Sign In.


TrackBack URL for this entry:

Listed below are links to weblogs that reference If You Plan To Do Business Internationally, You Should Consider an International Application for Registration of a Trademark under the Madrid Protocol:

Official Trademark Clearinghouse Agent

Trademark Blog Homepage: Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Trademark Infringement: Cease & Desist Letter Help

  • Trademark Threats: 6 Reasons To Take Them Seriously
    Trademark attorney Enrico Schaefer explains what you should do when you receive a trademark cease and desist letter. Listen as he reviews 6 reasons why you should take any trademark threat letter seriously, and what you should do when you receive a cease and desist.
  • How to handle a trademark cease and desist letter?
    Trademark Attorney Brian Hall discusses what you should do when you receive a trademark cease and desist letter. What a trademark threat letter? Why trademark owners send trademark threat letters? What you should do when you receive a trademark infringement threat letter.

How to Trademark A Name?

  • How to Register a Trademark - USPTO
    You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages ... here is how.
  • Types of U.S. Trademarks - USPTO
    Specific types of trademarks include: Service marks which identify and distinguish the source of a service rather than a product; Certification marks are used by someone other than its owner, to certify quality or other characteristics of such person's goods or services; Collective marks are trademarks or service marks used by the members of a collective group or organization.
  • Definition of a "Trademark"- USPTO
    A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
  • How To Copyright and Trademark a Catchphrase!
    Wondering how to trademark a catchphrase? You should also think about how to copyright a catchphrase. Some intellectual property can be protected by both a trademark and copyright registration.


Domain attorney recommended by
© 2011 Traverse Legal, PLC. All Rights Reserved.
Traverse Legal on LinkedInTraverse Legal on FacebookTraverse Legal on Twitter
Events & Conferences:
  • International Trademark Association 2011, San Francisco, California
  • Cyber Law Summit 2011, Las Vegas, Nevada
  • Game Developers Conference 2011, San Francisco, California
  • DOMAINfest 2011, Santa Monica, California
Recent Attorney Speaking Engagements:
  • South By Southwest 2010 SXSW Interactive Conference, Austin, Texas
  • West LegalEdcenter Midwestern Law Firm Management, Chicago, Illinois
  • Internet Advertising under Part 255, Altitude Design Summit, Salt Lake City, Utah
  • Online Defamation and Reputation Management, News Talk 650 AM, The Cory Kolt Show, Canada Public Radio Saskatewan Canada
  • Alternative Fee Structures, Center for Competitive Management, Jersey City, New Jersey
  • FTC Part 255 Advertising Requirements, Mom 2.0 Conference, Houston, Texas
  • Webmaster Radio, Cybersquatting & Domain Monetization, Fort Lauderdale, Florida
Notable Complex Litigation Cases Handled By Our Lawyers:
  • Trademark Infringement, Milwaukee, Wisconsin
  • Cybersquatting Law, Trademark Law and Dilution Detroit, Michigan
  • Internet Defamation & Online Libel Indianapolis, Indiana
  • Trade Secret Theft, Chicago, Illinois
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Miami, Florida
  • Cybersquatting Law, Anticybersquatting Consumer Protection Act Eastern Dist. of Virginia, Alexandria
  • Stolen Domain Name, Orlando, Florida
  • Commercial Litigation, Tampa, Florida
  • Copyright Infringement and Cybersquatting Law, Grand Rapids, Michigan
  • Mass Tort Litigation, Los Angeles, California
  • Stolen Domain Name, Detroit, Michigan
  • Adwords Keyword Trademark Infringement, Los Angeles, California
  • Trademark Infringement & Unfair Competition, Boston, Massachusetts
  • Non-Compete Agreement and Trade Secret Theft, Detroit, Michigan
  • Mass Tort, Philadelphia, Pennsylvania
  • Mass Tort, Tyler, Texas
  • Insurance Indemnity, New York
  • Copyright Infringement, Detroit, Michigan