How to File an International Trademark Application

There is a system for filing an exclusive trademark application that will bear effect in multiple countries around the world. This system is named The Protocol Relating to the Madrid Agreement Regarding the International Registration of Marks (Madrid Protocol) and is an international treaty that permits a trademark holder to seek registration in any of the countries that have united with the Madrid Protocol by filing an international application.

This is a formula for filing only. There is no such entity as an exclusive international trademark registration.

Any trademark holder with a request filed in, or a registration produced by the U.S. Patent and Trademark Office ("basic application" or "basic registration"), and who is a national of, has a dwelling in, or possesses a commercial establishment in the United States can hand in an international claim through the U.S. Patent and Trademark Office.

The mark and the holder of the international trademark application should be the same as the mark and the holder of the prime application or registration. The international application should accommodate a list of goods and services that is equivalent to or slightly different than the list of goods or services in the simple request or registration.

Perchance the international application is appropriately established on a U.S. Application or registration, then the U.S. Patent and Trademark Office will attest that the specific information in the international claim is identical to the information in the U.S. Basic application or registration, and advance the international request to the "International Bureau," the World Intellectual Property Organization.

The International Bureau does not consequentially register the mark if it is approved by the U.S. Patent and Trademark Office. Certification by the U.S. Patent and Trademark Office is simply to confirm that the international request is properly based on a U.S. Request or registration, and to confirm the date of receipt of the international application. The International Bureau is required to still examine the international application to make certain whether it experiences the Madrid Protocol filing stipulations. If the stipulations are met and the costs paid, the International Bureau will then register the mark, circulate it in the WIPO Gazette of International Marks (WIPO Gazette), send a certificate to the international petitioner, now called "holder of the international registration", and inform the Offices of the Contracting Parties entitled in the international application.

Subsequent to the International Bureau registering your mark, the International Bureau will inform each Contracting Party entitled in the international registration of the requisition for a continuation of protection to that country. Each assigned Contracting Party will then consider the demand for an addition of protection the same as it would a national request under its laws. If the submission meets the specifications for registration of that country, it follows that the Contracting Party will concede protection of the mark in its country.

At hand are dead-set time limits for declining to approve of an extension of protection (a ceiling of 18 months). Perchance a Contracting Party does not inform the International Bureau of any denial of an extension of protection contained by the time limits disclosed in Article 5(2) of the Madrid Protocol, the holder of the international registration is without human intervention, allowed protection of its mark in that country.