Protecting Your U.S. Trademark Overseas

In addition to 84 other countries, the United States is a party to the two treaties comprising the Madrid System for international registration of trademarks.  This system provides trademark owners a cost-effective, efficient way to protect their trademarks overseas.  While not all business need to take advantage of the Madrid System, those businesses and individuals seeking to do business or market their products internationally should consider the benefits to protecting their trademark since theft of intellectual property can pose a serious threat to businesses domestic and foreign.

In order to start the process of registering a trademark overseas, the trademark owner, either an individual or a business, must first register with the United States Patent and Trademark Office. The USPTO provides information via its website www.uspto.gov/trademarks to help trademark owners understand the process of obtaining a trademark.  Once a trademark owner receives his trademark, he must understand that it is not up to the USPTO to police the trademark for him.  In other words, it is the responsibility of the trademark holder to find ways of stopping theft of his trademark, otherwise known as “infringement.”

To protect the trademark in the U.S., owners should register their mark with as many entities as possible that have the ability to help protect the trademark.  For example, U.S. Customs and Border Protection has a electronic system that allows owners to record their U.S. trademarks.  This electronic system, known as the Intellectual Property Rights e-Recordation (IPRR), is in place to assist CBP in preventing importation of trademark infringing goods.

The Madrid system for international trademarks is another way trademark owners can protect their rights.  Assuming a trademark owner has registered his trademark with the U.S., the owner may then file an international application via the International Bureau through the Office of origin.  Offices of origin are located within a trademark owner’s country if that country is a party to the Madrid System’s treaties.

An international application via the Madrid System must include the following:

• A reproduction of the mark with a list of services it covers (classified under the International Classification of Goods and Services)
• Designate the countries in which protection is sought (these countries must be contracting parties)
  • Designation of a contracting party is made under the treaty which is common to the Contracting Party and the trademark owner’s country (i.e. If the designated country is only a party to the Madrid Agreement and not the Protocol and the trademark owner’s country is a party to both, then the designation is made under the Agreement.)
  • This allows for three kinds of international applications:
    • Governed exclusively by the Agreement
    • Governed exclusively by the Protocol
    • Governed by both
    • Be prepared in one of the three languages of the Madrid System:  English, French, or Spanish
    • Pay the required fees through the Office of origin:
      • Basic fee
      • Complementary fee for each designated Contracting Party for which there is no individual fee
      • Supplementary fee for each class of goods and services beyond the third
      • Include certification by the Office of origin of the date the international application was presented

After the application is made and approved by the International Bureau, each designated Contracting Party may examine the trademark and determine whether it will provide or refuse protection of the mark.  Once protection is approved, the rights protected are the same as if the trademark owner had made individual registrations in each designated Contracting Party.

The international registration is dependent on the registration of the mark in trademark owner’s country or where he submits through an Office of origin.  If the trademark ceases to be in effect in the original country during that 5 year time period, then the international trademark ceases to be in effect as well.  However, after the initial 5 year time period, the international registration becomes independent from the basic registration in the country of origin.

It is very important for a trademark owner to either become very familiar with the requirements of owning a trademark in both the United States and via the Madrid System or hire someone who is very familiar with the requirements because there are many specific dates, timelines, and nuanced requirements in order to both register and maintain a trademark.  While it may seem like a lot of work, it is certainly worth the time, money, and energy to ensure your product or service is trademark protected.  You want to ensure that when consumers associate your trademark with a certain product or service that it is YOUR product or service to which they are making the association.

More information can be found by visiting the U.S. Patent and Trademark Office website at www.uspto.gov and by visiting the World Intellectual Property Organization at www.wipo.int/madrid/en.  You may also contact our firm at smorrison@customscourt.com or nmooney@customscourt.com or by calling (850) 893-0670 to get more information on U.S. or international trademarks.