Filing an International Trademark

Filing an International Trademark

by Jane Haskins, Esq., January 2015

Registering your trademark with the U.S. Patent and Trademark Office (USPTO) gives you trademark protection throughout the United States, but it does not protect your trademark in other countries. To protect your trademark abroad, you need to register it with the foreign countries where you want protection.

The International Trademark Application

The Madrid Protocol is a treaty that allows a trademark owner to register a trademark in any of its member countries by filing a single trademark application, called an “international application.” The United States is one of more than 80 countries that are members of the Madrid Protocol.

The international application simplifies the process of applying for foreign trademarks, but it does not guarantee that a particular country will agree to register your trademark. Each country has its own laws and standards regarding what types of trademarks can be registered. There is no such thing as an “international trademark” that is good everywhere.

Who Can Submit an International Trademark Application?

You can file an international trademark application through the USPTO if:

  • Your trademark is registered with the USPTO, or you have filed an application for registration; and
  • You are a national of, or domiciled in, the United States, or you have an industrial or commercial business in the United States.

How to Submit an International Trademark Application

The following are the requirements for submitting an international trademark application through the USPTO:

  • You must have a trademark registration (known as a “basic registration”) or have filed a trademark application (known as a “basic application”).
  • The international application must list the same mark and same owner as the basic registration or application.
  • The list of goods and services in the international application must be the same as or narrower than the list of goods and services in the basic registration or application.
  • You must pay U.S. certification fees when you submit the international application. The fee is $100 per class of goods or services if the application is based on a single U.S. application or registration. This fee could change, so check with the USPTO for the most recent fees.
  • You must identify at least one other country where you want to extend your trademark protection. The other country must be a member of the Madrid Protocol.
  • You can file your international application online through the Trademark Electronic Application Service (TEAS) or though an online trademark service.

Next Steps

Filing an international application does not guarantee trademark protection in another country. Your application will be reviewed by three different agencies before your trademark protection is extended:

1. USPTO Review

The USPTO will review your international trademark application and certify that certain information in the international application is the same as the information in your U.S. registration or application. The application is then sent to the International Bureau of the World Intellectual Property Organization (WIPO), which administers the international trademark registration program.

f the USPTO does not certify your application, it will notify you of the reasons that your application was not certified. You can then submit a corrected international application.

2. International Bureau Review

The International Bureau will review your application to determine whether it meets the requirements of the Madrid Protocol. If it does, your trademark will be published in the WIPO Gazette and you will receive an international registration certificate. The registration is good for 10 years and may be renewed for additional 10-year periods.

The International Bureau will also notify the countries you designated that you have requested that your trademark protection be extended to those countries.

3. Review by Individual Foreign Countries

Each foreign country that you designate in your international application will review your application for extension of trademark protection, using the same standards that apply to other trademark applications filed in that country.

A country has 18 months to refuse to extend trademark protection. If a member country does not deny protection within 18 months, it is automatically granted.

If you’re ready to file for an international trademark, LegalZoom can help. We've partnered with an experienced law firm that can guide you through the process. Begin with a free consultation that includes an evaluation of your international trademark application and a clear understanding of your options and pricing up-front.