Question: How do I register my business’ trademark internationally?

Answer: According to the United States Patent and Trademark Office (USPTO), you may register a trademark through the Madrid Protocol (“Protocol”) with any of the 87 countries that are signatories to the protocol. The cost of registration will depend upon the countries selected and the type of mark to be registered. The benefit of registration through the Madrid Protocol is the cost and time savings compared to directly registering with each country directly.

General Requirements for Registration

According to the USPTO, the Protocol relating to the Madrid Agreement concerning the International Registration of Marks is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an international application. The resulting international registration serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark may be protected in their jurisdiction.

As of September 2012, there are 87 signors to the Protocol. A current list of the countries are available by going to the World Intellectual Property Organization (WIPO) website.

Any trademark owner with an application filed in or a registration issued by the USPTO and who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the USPTO.

To file an international application through the USPTO, an applicant must have a U.S. application, called a basic registration on file with the USPTO. The mark and the owner of the international application must be same as the mark and the owner of the basic application or registration. The international application must include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. The international applicant must pay the U.S. certification fee(s) at the time of submission and identify at least one country in which registration is sought.

An international applicant must pay fees to the USPTO and to the International Bureau. The USPTO charges a fee for certifying international applications and transmitting them to the International Bureau, called a certification fee. The certification fee is $100.00, per class, if the international application is based on a single U.S. application or registration. The certification fee is $150.00, per class, if the international application is based on more than one U.S. application or registration.

The International Bureau requires payment of fees based on whether the reproduction of the mark is in black and white and/or in color, the particular Contracting Parties designated in the international application and the number of classes of goods and services indicated in the international application.

Once an international application is submitted through the USPTO, the USPTO will determine if the application meets the requirement of 37 C.F.R. §7.11(a), the USPTO will certify that certain information in the international application is the same as the information in the U.S. basic application or registration and forward the international application to the International Bureau.

When the International Bureau receives the application, it will examine it to determine if there are any irregularities. If there are no irregularities the Bureau will issue a registration number. If the requirements are not meet, the Bureau will send a notice to both the USPTO and the international applicant that explains the problems with the application. Responses to irregularity notices must be received by the International Bureau within the time period indicated in the irregularity notice.

After the International Bureau issues a registration number, the application will then be submitted to each country individually by the Bureau to determine if it meets the respective countries trademark requirements. If the application does not meet the requirements for registration in that county, the mark will have to be registered directly with the respective country’s agency and include whatever changes are required. If the registration meets the guidelines than the reviewing country will submit a final approval. Each country maintains their own review period, therefore one country may be approved quicker than another.