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’s 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.