How to File a Trademark Application Internationally

There are two primary methods of filing a trademark application internationally. The first method is by hiring local counsel licensed to practice in the country you want to file in. The second method is utilizing the Madrid Protocol, used by many nations worldwide, under which your U.S. attorney can continue to represent you in trademark matters.

Hiring Local Counsel

The first method of filing a trademark application internationally is by hiring local counsel in a foreign country. For example, if you want a French trademark registration, you would need to retain French counsel to file your trademark application in France. This can be difficult if you do not have connections in the countries in which you seek to protect your trademark. You want to make an informed decision when selecting an attorney to represent your company.

Using the Madrid Protocol

The second method of filing a trademark application internationally is by hiring a U.S. trademark attorney to utilize the Madrid Protocol. The Madrid Protocol is a shared system utilized by many countries where a standard trademark application can be filed and submitted for registration in any of the countries that utilize the Madrid Protocol. It is a common application platform shared among the countries that choose to use it. The Madrid Protocol allows applicants to save time and money; there is no need to research local counsel in each individual country an applicant wishes to file in, and only one application needs to be submitted. Different countries can be selected on a single filing.

While the Madrid Protocol has many pros, it also has a few cons. If a foreign government issues a refusal on a trademark application, a response to this refusal must be filed by local counsel, or counsel licensed to practice in the respective foreign country. Additionally, using the Madrid Protocol requires that an applicant list his “base” country, such as the U.S. If the government of the base country rejects the trademark application for whatever reason, that rejection is carried over to all Madrid Protocol applications in foreign countries as well.

While the Madrid Protocol is not perfect, it is beneficial to the initial process of filing international trademark applications. It allows applicants to keep the same U.S. trademark counsel they have already retained to handle their stateside trademark matters, and it provides great cost savings up front.