In 2003 the United States signed the Madrid Protocol treaty permitting the holders of U.S. trademark applications and/or registrations to extend their U.S. trademark rights globally into over 80 countries around the world simply by filing requests to do so through the U.S. Patent and Trademark Office. Although the treaty dramatically simplified the process of protecting U.S. trademarks internationally, it did not create the mythical global trademark as many believe. In that regard, here are a few tips that every U.S. trademark holder should know about the current state of protecting their U.S. trademarks abroad in today’s global marketplace:
1. There is No “Global Trademark”
First, there is no “global trademark” that can be used to protect your trademark in every country around the world. Although treaties have been entered making it easier for trademark owners to extend protection of their trademarks into other countries, the world’s trademark systems remain largely separate and maintained on a country-by-country basis.
The myth of the global trademark most likely emanates from the Madrid Protocol system and how trademark rights are extended through the World Intellectual Property Office’s (“WIPO”) clearing house for trademarks. In short, when you apply for international protection of your U.S. trademark through the Madrid Protocol system you effectively extend your U.S. rights to WIPO’s global trademark clearing house located in Geneva, Switzerland. When this occurs, you receive an international certificate of registration which, in and of itself, is relatively affordable. However, that certificate does not protect your trademark in all of the countries of the world or even the countries that have signed on to the Madrid Protocol treaty. Rather, once received, this “international registration” is used to extend your U.S. trademark into the other member nations of the Madrid Protocol that you select.
As such, under the Madrid Protocol, a U.S. trademark holder does receive an “international registration” but this is not effective to protect its trademark in the other member nations until the trademark is specifically extended into those countries by the trademark holder. Each country, in turn, has a fee for such extension.
Thus, under the Madrid Protocol it is easy to extend your U.S. trademark internationally on a country-by-country basis. But the myth of the global trademark remains just that, a myth