While trademark owners can gain federal protection across the country by registering their marks with the United States Patent and Trademark Office (USPTO), they cannot automatically gain the same trademark safeguards abroad. To acquire international trademark protections, it is necessary to register the trademark with the foreign country where they wish to shield their intellectual property. Read about the various foreign trademark registration requirements, and explore the options for protecting different intellectual property types by contacting Sullivan & Carter, LLP; speak to an experienced Chicago intellectual property lawyer today by calling (929) 724-7529.
The USPTO defines trademarks as things that distinguish a company’s goods and services from their competitors, such as phrases, words, designs, and symbols. Trademarks help legally protect a brand, prevent fraud and counterfeiting, and help identify the source of a product or service. Registering a trademark with the USPTO provides federal protection, compared to unregistered marks only offering protection at the state level; however, a trademark registered with the USPTO does not provide protections extending beyond the United States.
While it is not possible to obtain a mark that universally applies in every country, several agreements exist that enable applicants to make a single filing to register their marks in multiple jurisdictions. One of these main international agreements is the Madrid System, which covers more than a hundred countries globally.
The Madrid System refers to an international framework for registering trademarks, providing applicants with the ability to simultaneously gain trademark protection in many countries, including China, Australia, and European Union member states. Two international treaties govern this system, namely the Madrid Protocol and the Madrid Agreement. The former allows signatory nationals to acquire trademark protection in jurisdictions falling under the protocol based on pending registrations or applications in their home country; the latter enables those from a signatory nation to secure trademark protection for a mark registered in their home country in every other state that also signed the agreement.
A significant issue faced by company owners when expanding to international markets is when another party registers someone else’s mark in another jurisdiction to seek profit and exploit the success of the brand. One effective method of preventing this and safeguarding a brand is to promptly file international trademark registrations, especially in locations where businesses plan to expand in the future.
Making an international trademark application is possible via the USPTO and the Madrid System if the applicant has an existing USPTO registration, or has applied for registration, and is either a United States national, an individual domiciled in this country, or someone with a business based in the United States. Those who have not registered their marks with the USPTO can also opt to file individual trademark registrations with the trademark office of each country in which they want to register.
Find out about the different requirements of foreign trademark registration, and learn how a Chicago intellectual property lawyer from Sullivan & Carter, LLP may help those looking to protect their IP. Contact our legal team today to organize a consultation.
The USPTO requires applicants to meet certain requirements to register their trademarks internationally. These are as follows:
International trademark registration offers several benefits; for example, a single registration offers cost-effective protection across multiple jurisdictions. Additionally, the Madrid System provides high levels of flexibility, allowing trademark owners to easily determine the countries in which they want to register. Alongside this, the application, renewal, and general administration are more efficient and easier compared to making applications directly with individual countries’ trademark offices.
Completing an international trademark filing does not mean the applicant automatically gains trademark protection in the country where they applied. Three stages of review take place before this can happen, as outlined below.
Initially, the USPTO reviews the international application and checks the information listed matches that included in the USPTO application or registration. The USPTO then forwards the application to the International Bureau, which is part of the World Intellectual Property Organization (WIPO) and manages the program of registering international trademarks. Applicants who do not make it past the first stage of review receive the reasons for this from the USPTO, allowing applicants to submit improved international applications.
Next, the International Bureau reviews the application to identify whether it complies with the Madrid Protocol’s requirements. Assuming the application meets these conditions, the WIPO Gazette publishes the mark and awards a certificate of international registration, which lasts for a decade; applicants can then choose to renew every 10 years. The Bureau then notifies the countries listed in the international application that the applicant wishes to extend their trademark protection to these jurisdictions.
In the final stage, each country listed in the international application reviews the application and uses the same standards applicable to other applications submitted in that jurisdiction to determine whether to extend the USPTO protection to their country. Each country must refuse the applicant within 18 months; otherwise, the applicant automatically gains trademark protection in that location.
American individuals and firms are increasingly looking to make their products and services available in global markets, utilizing the benefits of international trademark registration to dissuade possible infringers and safeguard their brands. Those based in the United States seeking international trademark registration in a member country of the Madrid System can file for registration with the USPTO and then file via the Madrid System; alternatively, they can file directly with the foreign country’s trademark office. Understand more about foreign trademark registration requirements, and discover how a seasoned Chicago intellectual property lawyer can assist companies and individuals looking to register their trademarks domestically and abroad; call Sullivan & Carter, LLP today at (929) 724-7529.
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