U.S. companies that conduct business abroad or that are interested in expanding into international markets should seriously consider the benefits of filing for international trademark protection on the valuable trademarks associated with the business. Having international trademarks in place can help protect the company’s brand, identity and products from being confused with those of competitors and copycats. A well-thought out international trademark filing strategy can help a company secure a competitive advantage in other countries.

A registered trademark is a valuable intellectual property right, but it is territorial in nature, meaning that protection only exists in the country in which it is granted. As such, a company that conducts business in multiple countries needs to secure trademark protection in each country where the trademark is used in commerce. Obtaining world-wide protection is possible, but it would require filing for trademark protection in each individual country or region, which could amount to almost 200 different trademark applications!

World-wide trademark protection is not really feasible, or even necessary, for many businesses, Instead, it is not uncommon for a business to pick and choose where to pursue international trademark protection. Generally speaking, businesses typically obtain trademark protection in countries where they conduct business, and countries where there is a high likelihood of counterfeiting.

International Trademark Filings Made Easy With the Madrid Protocol

International trademark filing under the Madrid Protocol are cost-effective because a single application is used to seek trademark protection in multiple countries at one time. The Madrid Protocol is an international trademark treaty that enables streamlining of the international trademark filing process. Currently, there are 98 member countries that are party to the Madrid Protocol, and filing one application means that protection can be sought in any of the 98 participant countries.

It is significantly more affordable to seek international trademark protection under the Madrid Protocol than to file separate trademark applications in individual countries. With the payment of a single fee, and the help of a single US trademark attorney, trademark protection can be obtained in a number of other countries. The process is relatively quick, which enables your business to move forward quickly in order to expand into new markets and to capture new sales.

There are specific requirements as to the form and content of the international trademark application, and once completed, the form can be filed at the United States Patent and Trademark Office – this will be the Office of Origin of your company’s international trademark application. An experienced New York international trademark attorney can help you prepare and file an International trademark application for your company.

It is in the best interests of many companies to seek and obtain trademark protection in other countries outside of the US, particularly if the company conducts business abroad. An international trademark filing attorney can help you secure the trademark protection that your business needs outside the United States. Contact the professionals at Revision Legal to discuss your company’s trademark situation and international trademark strategy. We can be reached by calling 855-473-8474 or by using the form on this page.

Developing an International Trademark Filing Strategy: Priorities and Process

Filing for trademark protection in multiple countries is not simply a matter of submitting paperwork—it requires a strategic framework that aligns with your business’s actual and planned market presence, budget constraints, and risk tolerance. Companies that approach international trademark filing strategically get significantly more protection per dollar spent than those who either file everywhere (expensive) or file only reactively after encountering problems (even more expensive).

Step One: Map Your Markets

The territorial nature of trademark rights means that protection in one country does nothing to prevent infringement in another. Before spending money on international filings, your legal team should work with your business development team to identify:

• Countries where you currently sell or distribute products or services
• Countries where you plan to expand within the next three to five years
• Countries where your products are most likely to be counterfeited or copied (historically, manufacturing hubs with weaker IP enforcement and key consumer markets)
• Countries where a competitor could register your mark first if you delay, blocking your entry into that market

This analysis typically produces a tiered priority list: Tier 1 (file immediately), Tier 2 (file within 12–18 months), Tier 3 (monitor and file if needed). The Madrid Protocol provides a cost-effective mechanism to pursue Tier 1 filings across multiple countries with a single application.

How the Madrid Protocol Works in Practice

The Madrid Protocol, administered by the World Intellectual Property Organization (WIPO), allows a trademark owner to file a single international application designating any or all member countries. As of 2024, the Madrid System has 130 member countries covering over 80% of world trade. The application is filed through the USPTO as the Office of Origin and must be based on a U.S. trademark registration or application (the “basic mark”).

WIPO reviews the application for formal requirements and forwards it to the trademark offices of each designated country. Each country then examines the application under its own national law and may issue provisional refusals—essentially, the equivalent of national Office Actions. The applicant has an opportunity to respond to provisional refusals through local counsel in the relevant country. If no refusal is issued within the examination period (typically 12–18 months depending on the country), the mark is deemed registered in that jurisdiction.

An important feature of the Madrid System is central attack vulnerability: if the basic U.S. registration or application is cancelled or restricted within five years of the international registration date, the international registration can be attacked correspondingly. This is managed by working with your U.S. trademark counsel to ensure the basic mark remains in good standing.

When the Madrid Protocol Is Not the Right Tool

Despite its efficiency, the Madrid Protocol is not always the best filing route. For a handful of important markets, direct national filing through local counsel may be preferable:

China presents unique considerations. China operates on a “first-to-file” system with strong examination procedures, but trademark squatters routinely file applications for well-known foreign marks in anticipation of the mark owner’s entry into the Chinese market. A direct national filing strategy, often including both standard goods/services classes and defensive registrations in adjacent classes where squatters are active, is essential for any company planning China operations.

The European Union offers its own regional registration system—the EU Trade Mark (EUTM)—administered by the EUIPO. A single EUTM registration covers all 27 EU member states and is generally preferable to Madrid designations for EU countries because it provides more seamless enforcement across the region.

Countries with local-language registration requirements, such as Japan, China, and several Middle Eastern countries, may require transliteration or translation of your mark that should be handled by local counsel with linguistic expertise.

Use Requirements and Maintenance Obligations

Unlike the U.S. system, many international trademark registrations do not require proof of use at the time of registration—they can be registered on an intent-to-use basis. However, registrations in most countries are vulnerable to cancellation for non-use after a grace period (typically three to five years) if the mark is not actually used in commerce in that country. Companies that obtain international registrations must develop a genuine commercialization plan to support each registration, or risk losing the registrations they paid to obtain.

Regular maintenance filings and renewal deadlines must be docketed carefully. An international trademark portfolio across multiple jurisdictions requires a systematic docketing system to ensure that maintenance fees are paid and renewals are filed on time. Missing a renewal deadline in a key market can result in permanent loss of the registration.

Contact the international trademark attorneys at Revision Legal to develop your international trademark filing strategy. We work with businesses of all sizes to build cost-effective international IP protection programs. Reach out today.