We are expanding sales outside the U.S. How do I protect my trademark internationally?
Posted on Mar. 15, 2017

U.S. trademark rights stop at the border. If you want to protect your trademark outside the U.S., you will need to acquire international trademark rights.

The best way to do this is through the Madrid Protocol. The Madrid Protocol is an international treaty that allows the owner of a U.S. trademark to register the trademark outside the U.S. in countries that have joined the Madrid Protocol by filing an application in the U.S. Patent and Trademark Office. The inconvenient and expensive need to obtain assistance from local counsel around the world in order to acquire international trademark protection is eliminated. Most developed nations have joined the Madrid Protocol, including the EU, Mexico, China, India and Russia. The major exceptions are Canada (which is planning to join by the end of 2018) and most of South America.

The Madrid Protocol international registration process works as follows: The owner of a trademark registration (or application to register) in a Madrid Protocol nation files an application with that nation’s trademark office for an “international registration”. In the application, the applicant designates the Madrid Protocol nation in which it would like to apply for trademark rights. In the U.S., the international application can be filed quickly and cheaply (id="mce_marker"00 per class) via the USPTO’s website. In addition to the filing fee for the international application, however, each designated nation charges a processing fee which is typically in the $500 to id="mce_marker",000 range. 

Once the international registration application is filed with the trademark office, each designated nation examines the application and decides to approve or reject the application in view of the trademark laws that exist in that country. If approved, the international registration as to the approving designated nation lasts for ten years, subject to renewals for additional ten-year periods. Once you have an international registration, you can designate additional nations at any time.

Trademark Law
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Attorney Brett D. Ekins

Brett D. Ekins is an experienced and accomplished trademark and intellectual property lawyer. He represents clients in intellectual property matters and commercial litigation throughout Utah, Nevada and California in state and federal courts, including high-stakes litigation involving trademarks, patents, copyrights and trade secrets. Brett also has extensive experience registering trademarks with the United States Patent and Trademark Office, including proceedings before the Trademark Trial and Appeal Board.