Washington D.C. International Trademark Registration

Protecting a trademark abroad can be done by filing directly with the intellectual property office of each country where you want protection. This method is often chosen when a business is only targeting a few, specific markets that are not members of the Madrid Protocol, or when they require a highly tailored strategy for a particular jurisdiction. While this approach provides direct control and allows for customized applications to meet specific national requirements, it can be administratively cumbersome and costly, as it requires managing multiple applications, deadlines, and legal standards, often necessitating the hiring of local counsel in each country.

The second, and often more efficient, method is to use the Madrid Protocol. Administered by the World Intellectual Property Organization (WIPO), this international system allows a single application to be filed in one language and with one set of fees to request protection in over 100 member countries. Using the Madrid Protocol is a streamlined way to expand trademark protection globally, offering significant cost and time savings by consolidating the filing and renewal processes. This system is particularly advantageous for companies looking to secure protection in multiple member jurisdictions at once, as it greatly simplifies the initial filing process and the ongoing management of a growing international portfolio.

The Madrid Protocol process begins with a "basic application" or "basic registration" filed with the U.S. Patent and Trademark Office (USPTO). This is a crucial prerequisite, as your international application must be based on a U.S. application or registration. Once this foundation is in place, you can file an international application with the USPTO, designating the countries where you want protection. The USPTO's role is to ensure the international application corresponds with the domestic one, a process known as certification. After certification, the USPTO will forward the application to WIPO's International Bureau, acting as the bridge between the national and international systems.

The Madrid Protocol also requires that the applicant be a national of, domiciled in, or have a real and effective industrial or commercial establishment in the United States. This eligibility requirement ensures that the system is used by entities with a genuine connection to a member country. By verifying this connection, the system maintains its integrity and serves the intended purpose of facilitating international protection for businesses operating within member jurisdictions. Understanding and meeting these eligibility criteria is a fundamental first step before proceeding with an international application.

Upon receiving your application, the WIPO International Bureau performs a formal examination to ensure all procedural requirements are met, such as proper form completion, payment of fees, and clear identification of goods and services. If the application is in order, WIPO registers your trademark in the International Register and notifies the trademark office of each designated country. This initial step serves as a centralized checkpoint, ensuring all administrative details are correct before the application is forwarded for national-level review.

Each designated country then conducts its own substantive examination based on its national laws. This is a critical step, as a country can refuse to grant protection if the mark conflicts with an existing one, fails to meet local distinctiveness standards, or is deemed descriptive or generic for the goods and services listed. The trademark office of the designated country has a set period, typically 12 or 18 months, to issue a provisional refusal. If a refusal is issued, you must work with local counsel to respond directly to that country's trademark office. If no refusal is issued within the set timeframe, the trademark is automatically protected in that country. This two-part examination system—formal by WIPO, substantive by the designated country—is a key feature of the Madrid Protocol, balancing the efficiency of a centralized system with the need to respect individual national legal frameworks.

An international trademark registration is initially valid for 10 years from the date of its international registration. You can renew it for additional 10-year periods indefinitely, as long as the mark remains in use and all fees are paid. The renewal process is handled centrally through WIPO. This means you do not need to file a separate renewal application for each country. Instead, you file one renewal request and pay one set of fees to WIPO, which then handles the renewal across all designated jurisdictions.

This centralized renewal is a significant advantage of the Madrid Protocol over filing renewals individually in each country, as it simplifies the long-term management of your international trademark portfolio. It provides a single point of contact and a single set of deadlines for a brand that may be protected in dozens of countries. This efficiency reduces the administrative burden and costs associated with maintaining a global brand presence, allowing businesses to focus on their core operations rather than complex legal filings.