Madrid Protocol

Understanding the Madrid Protocol System

The Madrid System, formally known as the Madrid System for the International Registration of Marks, serves as a centralized framework for the international registration of trademarks. This robust and efficient system was established by two critical international treaties, namely the Madrid Agreement Concerning the International Registration of Marks in 1891 and the Madrid Protocol in 1989. The latter, often referred to as the Madrid Protocol, introduced major improvements to the system, making it more accessible and practical for modern business needs. Both treaties are part of an overarching mechanism that aims to simplify and streamline the process of obtaining trademark protection in multiple jurisdictions around the globe.

Administered by the World Intellectual Property Organization (WIPO), which is based in Geneva, Switzerland, the Madrid System provides the convenience of filing a single trademark application in one language, and paying a single set of fees to secure protection across a multitude of countries. This can be an immense benefit for businesses seeking to expand their operations internationally.

The Madrid Protocol, as a crucial part of the Madrid System, is of particular significance to the United States Patent and Trademark Office (USPTO). The United States joined the Madrid Protocol in 2003, thereby granting US entities the ability to register their trademarks in other member countries through the Madrid System. Likewise, it opened the door for foreign entities to register their trademarks in the US through the same system. In this way, the USPTO implements the principles of the Madrid Protocol, integrating them into the US trademark registration process and providing American businesses with a cost-effective and efficient method to secure international trademark protection.

Madrid Protocol & United States Trademark Office

The application of the Madrid Protocol to the United States Patent and Trademark Office (USPTO) plays a significant role in facilitating the international registration of trademarks. This Protocol enables a harmonized approach to trademark protection across numerous jurisdictions, providing a centralized system for the administration and management of marks.

The first key aspect involves filing a Request for Extension of Protection to the United States. Through this provision, a holder of an International Registration can apply for an extension of their trademark’s protection to encompass the United States. The USPTO will examine this request in line with its established procedures and U.S. trademark laws, determining whether the mark satisfies all requirements for protection within the U.S. This process allows for international trademark owners to expand their reach into the U.S. market efficiently.

The second aspect delineates the method for filing an International Trademark Application based on a U.S. Trademark Application or Registration. This feature of the Madrid Protocol enables U.S. businesses or individuals to extend their trademark rights beyond the U.S., by filing a single International Trademark Application that could potentially cover multiple jurisdictions. The International Registration obtained can be based on either an existing U.S. registration or a pending U.S. application, which can streamline and simplify the process for U.S. entities wishing to protect their marks internationally.

Lastly, the Madrid Protocol guides how to manage International Trademark Registrations that have been extended to the United States. Once the USPTO approves the extension of protection, the holder of the International Registration must comply with both the USPTO and WIPO rules to maintain the trademark rights. This involves necessary activities such as submitting proof of use, responding to office actions, and renewing the registration at the appropriate intervals.

In conclusion, the Madrid Protocol serves as an essential tool for the USPTO in managing international trademark registrations, providing a framework that benefits both U.S. and international entities in the pursuit of broad-based trademark protection.

Who May File For An International Trademark Registration Through The USPTO?

The United States Patent and Trademark Office (USPTO) provides the facility for eligible parties to file for International Trademark Registration under the Madrid Protocol. An applicant can apply for international registration if they meet certain conditions.

Primarily, the applicant must have a connection with the United States, which can be established through citizenship, domicile, or incorporation. More specifically, an individual applicant must either be a U.S. citizen or have an active domicile in the U.S. For an entity, it must be incorporated in the U.S., or have a bona fide and effective industrial or commercial establishment in the country.

Furthermore, before applying for international registration, an applicant must have either an existing trademark registration (called a ‘basic registration’) with the USPTO, or a pending application for a trademark registration (called a ‘basic application’).

Once these prerequisites are met, an applicant can file an international application with the USPTO, which then certifies and forwards it to the International Bureau of the World Intellectual Property Organization (WIPO). The international application must designate the member countries of the Madrid Protocol where the applicant wishes to extend their trademark protection.

This process facilitates U.S. businesses and individuals in expanding their trademark protections internationally, thus providing a cost-effective and efficient way to secure and manage trademark rights across multiple countries.

Filing For An International Trademark Registration Through The USPTO

The process of filing a trademark application for international registration through the United States Patent and Trademark Office (USPTO) under the Madrid Protocol involves several key steps:

• Establish a U.S. Basis: Before filing for international registration, an applicant must first have an existing U.S. trademark application or registration. This is referred to as the “basic application” or “basic registration”.
• Prepare the Application: Next, the applicant must prepare the international application using the USPTO’s Trademark Electronic Application System (TEAS). The application should include the mark, list of goods/services, and the designated countries for extension of protection. It’s crucial to note that the information in the international application must match that in the basic application or registration.
• Pay the Fees: Along with the application, the applicant must also pay the required fees. These include the USPTO certification fee and the international application fee, which varies based on the number of classes of goods/services and the designated countries.
• Submit the Application: Once the application is prepared and the fees are paid, it can be submitted electronically to the USPTO via TEAS.
• USPTO Certification: After receiving the application, the USPTO reviews it for completeness and consistency with the basic application or registration. If everything is in order, the USPTO will certify the application and forward it to the International Bureau (IB) of the World Intellectual Property Organization (WIPO).
• Examination by WIPO and Designated Countries: The IB will review the application to ensure it complies with the Madrid Protocol. If approved, the application is recorded in the International Register, published in the WIPO Gazette, and then forwarded to the trademark offices of the designated countries for their examination.
• Approval by Designated Countries: Each designated country will examine the request for extension of protection in accordance with their national laws. If approved, the trademark is protected in that jurisdiction, equivalent to a national registration.
• Management and Renewal: After successful registration, the international registration can be managed through the USPTO and WIPO, with renewals due every ten years at WIPO.

This process provides a streamlined way for U.S. businesses and individuals to protect their trademarks in multiple countries around the world with a single application.

Contact Our Chicago Business Attorneys

We understand that navigating the process of international trademark registration can be a complex task. Our business attorneys is well-versed in these procedures, offering experience in international trademark law and the intricacies of the Madrid Protocol. Our aim is to provide efficient solutions tailored to your unique business needs, helping you protect your intellectual property rights across the globe. Whether you are just starting out on your international business journey or you are an established entity looking to expand your reach, we are equipped to guide you every step of the way. We invite you to contact our law firm today to explore how we can assist you with your international trademark registration needs.