What is an International Trademark Application, and What is the Madrid Protocol?
Now that you have filed your US trademark application, and are looking for international protection, you can avail yourself of the international trademark application, namely “The Madrid Protocol” – it sounds like a Robert Ludlum novel but is not. It’s an efficient international filing system for further filing based on a valid US trademark application.
In order to use the Madrid Protocol for an international trademark filing, you must have a US trademark application or registration to base it from. In order for the Madrid filings to work, the mark must be the same, and the goods and services identical to the US mark, or narrower (in other words, you may remove goods/services for the international trademark application).
From the list of countries, you may choose any that you think your product may be sold in. Some require use in that country for registration, some do not. The total official USPTO fees will be shown at the end, which includes a $100 USPTO processing fee. The application, once paid and submitted, acts to make an application in each of the foreign countries that you have selected. Make sure your contact information is accurate, as the office will contact you if any issues arise in any of those countries, with earlier-registered marks that are confusing with yours, for example.
The marks can all proceed to registration, or you may only get some, based on what the other foreign trademark registers contain. However, the main benefit of the system is to avoid attorneys’ fees in each of the countries; rather, you only pay once and your attorney can relay the updates from the foreign filings.
Non-member Countries for Madrid
Countries that are not in the Madrid Protocol (non-members) are Canada, Argentina, Brazil, Chile, Costa Rica, Hong Kong, Malaysia, Nigeria, Pakistan, Taiwan, UAE, Saudi Arabia, and South Africa. For these, you will have to file a separate application in those countries’ trademark offices.