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Trademarks

Published on 12th March 2024

Trademarks

Registering a Trademark with the Madrid Protocol and in the US

Registering a trademark internationally and in the United States involves different processes. Below is a step-by-step guide for both the Madrid Protocol (for international registration) and the US (through the USPTO).

1. Registering a Trademark via the Madrid Protocol

The Madrid Protocol allows you to apply for trademark protection in multiple countries using a single application. It is managed by the World Intellectual Property Organization (WIPO).

Step 1: Ensure You Have a Base Application or Registration

  • You must already have a trademark application or registration in your home country (e.g., the UK, EU, or US).
  • This base application is called the "Basic Mark."

Step 2: Submit an International Application via Your Home Office

  • File an international application through your country's trademark office (e.g., the UK Intellectual Property Office (UKIPO), European Union Intellectual Property Office (EUIPO), or US Patent and Trademark Office (USPTO)).
  • Your home office will certify that the international application matches your basic mark before forwarding it to WIPO.

Step 3: WIPO Formal Examination

  • WIPO reviews your application for compliance (e.g., proper classification of goods/services, correct formatting).
  • If approved, WIPO records it in the International Register and publishes it in the WIPO Gazette of International Marks.

Step 4: WIPO Forwards the Application to Selected Countries

  • WIPO sends your application to each country you designated for protection.
  • Each national office examines the mark under its own trademark laws.

Step 5: National Trademark Offices Decide on Protection

  • Each country can either approve or refuse protection based on its laws.
  • If a country refuses your trademark, you can challenge the decision locally.
  • If approved, your trademark is protected in that country just like a national registration.

Key Advantages of Madrid Protocol

✔ Single application covers multiple countries.
✔ Lower costs compared to filing separately in each country.
✔ Centralised management—renewals and changes can be done via WIPO.

2. Registering a Trademark in the United States (USPTO)

To register a trademark in the US, you must file an application with the United States Patent and Trademark Office (USPTO).

  • Check the USPTO’s Trademark Electronic Search System (TESS) to see if similar marks exist.
  • Consider hiring a trademark attorney to conduct a more thorough search.

Step 2: Choose Your Filing Basis

The USPTO offers two main filing bases:

  • Use in Commerce (Section 1(a)) – If you are already using the trademark in the US.
  • Intent-to-Use (Section 1(b)) – If you plan to use the trademark but haven't yet.

Step 3: File a Trademark Application

  • Use the Trademark Electronic Application System (TEAS) on the USPTO website.
  • Choose between:
    • TEAS Plus ($250 per class of goods/services) – Requires strict adherence to USPTO classifications.
    • TEAS Standard ($350 per class of goods/services) – More flexibility in classification but higher cost.

Step 4: USPTO Examination Process

  • An Examining Attorney reviews your application (takes 6–9 months on average).
  • If issues arise (e.g., similar existing trademarks, improper descriptions), they issue an Office Action which you must respond to.

Step 5: Publication in the USPTO Gazette

  • If approved, your trademark is published for public opposition.
  • Third parties have 30 days to oppose it.

Step 6: Registration & Maintenance

  • If no opposition arises, the USPTO registers your trademark.
  • For Intent-to-Use applications, you must file a Statement of Use before final registration.
  • You must maintain the trademark by filing renewal documents at 5 years, 10 years, and every 10 years thereafter.

Key Advantages of USPTO Registration

✔ Nationwide protection in the US.
✔ Legal presumption of ownership and exclusive rights.
✔ Ability to use the ® symbol (once registered).

Madrid Protocol vs. USPTO Filing: Key Differences

Feature Madrid Protocol USPTO (US-Only)
Covers Multiple Countries? Yes No
Requires a Base Application? Yes No
Centralised Renewal & Management? Yes, via WIPO No, managed by USPTO
Protection Scope Only in selected countries Entire US
Approval Process Each country has its own decision USPTO decides for US