In addition to assisting our clients in obtaining U.S. trademark protection, we are also highly experienced in obtaining trademark protection in any other country around the world. Furthermore, just like with U.S. federal and state trademark applications, you can trust that we will prosecute your international trademark application(s) as relentlessly and cost-effectively as possible - from application filing all the way to registration. This is due, in part, to the extensive network of quality foreign trademark firms that we have used and vetted over the years, such that we are confident that each foreign associate we work with is extremely knowledgeable of their country's trademark laws and charges very reasonable rates for their services.

The process of obtaining trademark protection in multiple countries is typically best started through what's called the Madrid Protocol, which basically operates as a trademark application clearinghouse for most of the industrialized world (a current list of Madrid Protocol member countries can be found here). For any countries of interest that are not members of the Madrid Protocol, we can assist with filing trademark applications directly in those countries.

A Madrid Protocol application does not lead to the grant of an "international trademark," which actually does not exist. Instead, the Madrid Protocol merely provides a centrally administered system of obtaining a bundle of "national" and/or "regional" trademark registrations in particular countries/regions of the applicant's choosing. Thus, the Madrid Protocol provides a mechanism for obtaining trademark protection in multiple countries around the world through a single application, which is more efficient than seeking protection separately in each individual country or region of interest, and also tends to be significantly cheaper than pursuing separate national/regional applications.

Unlike the PCT process in the international patent context, a Madrid Protocol application requires that the trademark owner has an existing trademark application or registration in a member jurisdiction (such as the U.S.). A useful feature of the Madrid Protocol is that this protection may generally be extended to additional jurisdictions at any time. In other words, it is possible to tack on additional countries to an existing Madrid Protocol filing, through what are known as "subsequent designations." One disadvantage of the Madrid Protocol is that any refusal, withdrawal or cancellation of the base U.S. application or registration within the first five years of the Madrid Protocol application will lead to the refusal, withdrawal or cancellation of the Madrid Protocol application to the same extent. Also unlike the PCT process in the international patent context, Madrid Protocol applicants must pay the necessary filing fees for each desired country/region upfront.

If you are only interested in European trademark protection, there is an alternative process known as the Community Trademark (CTM) system. The CTM system creates a unified trademark registration in Europe, whereby one registration provides enforceable protection in all member states of the European Union. The primary disadvantage of a CTM is that an objection against a CTM application in any member state can defeat the entire application, thus requiring the CTM applicant to salvage the situation by converting the application into one or more national applications. In that situation, the applicant cannot recover the costs of filing the CTM application and must in effect repay to file in each country where the CTM application is converted. If you are in fact only interested in obtaining trademark protection in Europe, we will be more than happy to further explain to you the pros and cons of filing a Community Trade Mark (CTM) application versus a Madrid Protocol application designating the European Union.

In comparison, the Madrid Protocol route can cover the same countries as the CTM system (in addition to many non-European countries) and is typically much less expensive.

If you are interested in pursuing trademark protection in multiple countries, or simply would like more information, we invite you to call 888-789-5789 or email us to schedule your FREE initial consultation, during which we can explain the trademark registration process and costs to you in more detail, determine the best path forward for your particular situation, and answer any follow-up questions that you may have.