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International Trademark Registration Under The Madrid Protocol

By Eric Misterovich

In today’s global market it is necessary to gain an edge in business conducted not only within our own borders, but internationally as well. But many current trademark owners or potential applicants may be unaware that international registration is actually quite simple to do thanks to what is known as the Madrid Protocol. It is a procedure-based treaty aimed at making international trademark registration as easy and cost effective as possible for both individuals and businesses. Here is a list of the 10 main procedural advantages you should be aware of:


1. The “One Stop Trademark Shop”


The primary advantage of the Protocol is that a trademark applicant can file a “basic application” in the United States and an “international application” with the WIPO at the same time. Additionally, a trademark holder who has a “basic registration” may also seek the same international protection.


2. Unification of Language and Fee


The beauty of the Madrid Protocol trademark system is applicants do not need to be linguistic scholars or affluent businessmen. Instead, the international application is available in the English language and comes in at a flat fee of $100 for single applications or registrations.


3. Concurrent Filing With Federal Application


A U.S. trademark applicant or holder is able to file for international registration concurrently. This is advantageous because of the snail-like manner of our federal registration system. Instead of waiting months, or even years for a valid registration, trademark owners can now file their international applications in conjunction with their U.S. application pursuant to the Protocol.


4. Cost Efficient Designations and Renewal


The applicant or holder is able to designate as many of 88 member countries he or she wishes to gain protection in without any additional fees. Additionally, applicants and holders can make any subsequent changes to their application or seek renewal for a small processing fee.


5. Priority Filing Dates To Protect From Infringers


Any international application filed with the USPTO that amounts to registration in a designated country is considered registered upon the initial filing in the USPTO. Simply put, protection is considered to begin on the date of application if the mark is registered. This allows a designated registrant a larger scope of backdated time to protect their mark from possible infringers.


6. Supplementary Coverage Available For New Signatory Nations


A person who successfully registered a mark using the Protocol’s procedures are able to extend their coverage to other participating nations at any time. This is particularly useful given that a large number of nations still have yet to join the agreement.


7. Consistent Mark Protection Period


A mark that is successfully registered receives a ten-year period of protection. Instead of worrying about expiration in each participating nation, a holder instead is aware of the exact period that his or her international protection will last.


8. Foreign Applications Are Able To Survive A Domestic Challenge


Prior to the Protocol, a joint application could be challenged by what is known as a “central attack.” This would mean that any mark application subject to challenge in the United States would also derail the international applications as well. However, the Protocol now allows an applicant facing domestic challenge to splinter their international application in too separate applications for each country he or she chooses to still pursue the mark in.


9. Ease of Responding to Irregularities


An applicant need not worry if any international application is subject to a procedural discrepancy in a foreign country. Instead, an applicant will receive what is known as a “Notice of Irregularity” that explains the problems with the application in that respective nation. An applicant then simply has to file a “Response to Notice of Irregularity” form with the USPTO. If the response is accepted by the USPTO then it will subsequently send it to the designated nation in an attempt to correct any problems. Also, all non-irregular foreign applications will remain in the application assembly line.


10. Electronic Application


Although an international application must be submitted to the USPTO, this is not the procedural hurdle one would believe it to be. This is because any interested international applicant can visit this website in order to file electronically. This site also contains the following the forms for “Subsequent Designation of an International Registration” and for “Response to a Notice of Irregularity”

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