How to File an International Trademark Application, an Easy Guide

This is a process for filing only. There is no such thing as an exclusive international trademark registration.

Any trademark holder with a request filed in, or a registration produced by the U.S. Patent and Trademark Office (“basic application” or “basic registration”), and who is a national of, has a dwelling in, or possesses a commercial establishment in the United States, can present an international submission through the U.S. Patent and Trademark Office.

The mark and the holder of the international application should be the same as the mark and the holder of the fundamental application or registration. The international application should accommodate a list of goods and services that is equivalent to or slightly different than the list of goods or services in the fundamental claim or registration.

Perchance the international application is appropriately established on a U.S. Application or registration, then the U.S. Patent and Trademark Office will ascertain that the specific information in the international claim is identical to the information in the U.S. Basic application or registration and send on the international claim to the “International Bureau,” the World Intellectual Property Organization.

The International Bureau does not by design register the mark if it is approved by the U.S. Patent and Trademark Office. Certification by the U.S. Patent and Trademark Office is simply to guarantee that the international claim is properly based on a U.S. Claim or registration and to make binding the date of receipt of the international application. The International Bureau is required to still assess the international application to ascertain whether it experiences the Madrid Protocol filing necessities. If the necessities are met and the costs paid, the International Bureau will then register the mark, circulate it in the WIPO Gazette of International Marks (WIPO Gazette), send a certificate to the international petitioner, now called “holder of the international registration”, and inform the Offices of the Contracting Parties entitled in the international application.

Subsequent to when the International Bureau registers your mark, the International Bureau will inform each Contracting Party entitled in the international registration of the application for a continuation of protection to that country. Each assigned Contracting Party will then consider the demand for an addition of protection the same as it would a national claim under its laws. If the submission meets the specifications for registration of that country, it follows that the Contracting Party will consent to protection of the mark in its country.

At hand are dead set time limits for declining to agree to an extension of protection (a ceiling of 18 months). Perchance a Contracting Party does not inform the International Bureau of any denial of an extension of protection contained by the time limits declared in Article 5(2) of the Madrid Protocol, the holder of the international registration is without human intervention, awarded protection of its mark in that country.