HOW TO FILE AN INTERNATIONAL TRADEMARK APPLICATION by ResearchCopyright.com

Once you have filed for, and received a trademark in the United States, you may use that as the basis of applying for an international trademark via the Madrid System. The Madrid System is two treaties: The Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement. The United States is party only to the Madrid Protocol.

There are three ways to apply for an international trademark under the Madrid Protocol.

1. Through the Office of Origin.

For people in the United States, this would be the United States Patent and Trademark Office.

2. Through the Office of a Designated Contracting Party.

The USPTO is the Office of a Designated Contacting Party if the trademark holder of an international registration requests an extension protection of that registration to the United States.

3. Through the Contracting Party of the Holder.

If the trademark holder of an international trademark registration lives in the United States, or has an industrial or commercial establishment in this country, the trademark holder can apply for an international trademark through the USPTO.

Who is allowed to file an international trademark application? As mentioned above, you have to either be a citizen or national of the US, live in the US, or have an industrial or commercial establishment in the United States.

The minimum requirements for applying for an international trademark are as follows:

1. The International Application must be filed through the Trademark Electronic Application System.

The form can be pre-populated with the information from your original filing, or can be a free-text form. The only changes you can make to the application are to narrow the list of goods or services, changing the classification of the trademark, and changing the address of the applicant.

2. The Basic Application or Registration Number.

The international application must include the filing date and the serial number of the basic application that gave you trademark protection in the United States.

3. The Name and Address of Applicant.

This would be the address of the person applying for the international trademark. It must be the same as the one given on the Basic Application.

4. A Drawing of the Mark Seeking International Protection.

The international application must contain a reproduction of the mark that is the same as the one that was included in the basic application and meets the requirements of how to submit such drawings. The drawing must be in black-and-white if a specific color is not being registered, in which case a color and black-and-white image must be submitted.

5. Color Claim.

If a specific color is being submitted as part of the mark, the application must include a statement that the color is a feature of the mark and name the color.

6. Identify Goods and Services.

The listing of goods and services the mark is to be used with. This must be identical or narrower than the list included in the basic application.

7. Classification in International Applications.

The goods and services must be classed according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, otherwise known as the Nice Agreement.

8. List of Contracting Parties

This would be the country or other intergovernmental organization that is party to the Madrid Protocol. If you filed your original trademark paperwork in the United States, this would be the USPTO.

9. Fees.

Fees change all the time, check with the USPTO for the current fee schedule.

10. Statement of Entitlement.

This is a statement stating that the applicant is entitled to file an international trademark application and that they own the mark in question.

11. Description of Mark.

If the basic application included a description of the mark, the interntional application must contain the same description.

12. Indication of Type of Mark.

What type of mark it is must be mentioned, is it a three-dimensional mark? A sound mark? Two-Dimensional mark? Etc.

13. E-Mail Address

The E-Mail Address of the person applying for international trademark protection for correspondence purposes.

Remember, even though you received trademark protection in the United States, receiving it internationally is not guaranteed, though having protection in the United States does help your chances of having your mark approved.