How to File an International Trademark

How do international trademarks work (and what is the Madrid Protocol)?

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 100 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.

The main benefits of registering for international trademarks using the Madrid Protocol include the following:

• Save time and money by using a single application to apply for trademark protection in multiple countries.
• Manage trademark registrations (such as changing ownership or owners’ names or business addresses or renewing international registrations) from one location.
• Protect your brand internationally to help you compete in the global market.

How to submit an international trademark application

Here are the requirements for submitting an international trademark application through the USPTO.

Step 1. File a national trademark application with the USPTO

You must have either a completed national trademark registration (known as a “basic registration”) or a national trademark application (known as a “basic application”) on file with the USPTO before using the Madrid Protocol.

Your USPTO basic application or basic registration enables you to file an international application and get an international registration from the International Bureau of the World Intellectual Property Organization (WIPO), which administers the Madrid Protocol.

The international registration from WIPO serves as a basis for requesting international trademark protection from Madrid Protocol member countries. 

Step 2. Ensure you meet USPTO requirements

Along with having a national trademark registration or application, you will need to meet one of the following conditions in order to file an international trademark application through the USPTO:

• Be a U.S. national
• Have a U.S. domicile address
• Have an operational business in the U.S. 

If you don’t meet these requirements, you won’t be able to file an international trademark application through the USPTO. However, you may be able to file through a different Madrid member as long as you meet that member country’s conditions. 

Step 3. Choose the country or countries where you want protection

You must identify at least one other country where you want to extend your trademark protection and designate the country or countries on your international application. The country or countries you choose must be members of the Madrid Protocol. 

Step 4. Ensure the international application contains accurate information

The international application must list the same mark and same owner as the basic registration or application, and 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.

Step 5. Pay applicable fees

You must pay a non-refundable U.S. certification fee 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, or $150 per class if it is based on more than one basic application or registration.

This fee could change, so check with the USPTO for the most recent fees.

You are also required to pay a fee to WIPO for registering the international application and requesting trademark protection in the designated Madrid Protocol member countries. The amount of this fee depends on the countries where you apply. You can find out more about how to pay application processing fees on the WIPO’s Paying Madrid System Fees page. 

Keep in mind that you will need to renew your trademark registration and pay applicable renewal fees once every 10 years.

Step 6. File your international application

You will need to create a USPTO account to file your international application online through the USPTO Trademark Center or work with an attorney.

What happens after you submit your international trademark application

Filing an international application does not guarantee trademark protection in another country. 

Your application will be reviewed by the following entities 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 WIPO, which administers the international trademark registration program.

If 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 or file a Petition to the Director along with a petition fee to request a reversal of the denial. The petition fee is $400 if filed electronically or $500 for a paper application. If you get a certification denial notice from the USPTO and wish to submit a Petition to Director, it’s important to file the petition as soon as possible. 

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 national trademark offices in the countries that you have requested that your trademark protection be extended to.

If the International Bureau finds any issues with your application, it will issue a notice of irregularity. You will have to respond to the notice and correct the issues before you can get your international registration. 

3. Review by individual foreign countries

Each foreign country 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.

You can review each country’s trademark rules via WIPO’s Madrid Member Profiles page. 

A country has 12-18 months to refuse to extend trademark protection. If a member country does not deny protection within the time limit, it is automatically granted.

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.

Who should file an international trademark?

Filing an international trademark application is recommended for businesses that are planning on opening physical locations in other countries or selling goods or services online.

For example, a U.S. business that has a registered trademark with the USPTO and is expanding operations to the U.K. can file an international trademark application with the USPTO. Once the USPTO, the International Bureau, and the U.K.’s Intellectual Property Office approve the application, the business’ trademark will be protected in the U.K. 

How to file an international trademark with LegalZoom

Whether you want to protect your brand, product name, slogan, tagline, or stylized logo, LegalZoom’s trademark filing service can help you file a domestic trademark. For an international trademark, you’ll want to work with a dedicated business attorney to ensure you meet all the requirements and guidelines for international filing.

FAQs

When was the Madrid Protocol created?

The Madrid Protocol went into effect in the U.S. in November 2003. 

Do you have to file trademarks in every country where you run a business?

While not necessarily legally required, it’s a good idea to file a trademark in each country where you run a business. Having an international trademark in each country where you operate a business can help prevent other companies from using your trademark and provide legal protection for your brand if someone infringes on your trademark.

Filing an international trademark application using the Madrid Protocol can help you save time and money otherwise spent filling out individual applications for each country. 

How long does an international trademark last?

International registered trademarks are valid for 10 years. 

How much does an international trademark cost?

The total cost of an international trademark depends on where you are registering for protection. International trademark applicants filing with the USPTO must pay a non-refundable U.S. certification fee of either $100 or $150 per class of goods or services, as well as a WIPO fee. 

Check the Madrid System: Schedule of Fees page for more information.

Jane Haskins, Esq. contributed to this article