USA is considered to be one of the largest economies in the world, with a diverse range of businesses competing in a tough marketplace. Every day, there are new entrants in the market which makes it tough to survive and distinguish yourself. One of the ways in which businesses can showcase their distinctiveness and authenticity is through a trademark. With the help of a trademark, a business can protect itself legally from infringements and counterfeiting, while uplifting its brand image.
To understand the trademark registration process in the USA, we need to understand the process in detail.
What is the Madrid Protocol?
The Madrid system has two treaties; the Madrid Agreement and the Madrid Protocol. Both the treaties have the same concept; to create a system that facilitates simple and inexpensive international trademark registration.
There is a question that arises here: If both the treaties have the same purpose then why not just have one rather than two? Well, the Agreement was established in 1891 and came into effect in 1892. Even though there were loads of advantages of the Agreement, yet there were some structural problems too, even though if not in actual terms but still perceived, and that is why several major countries including the U.S. did not join the Agreement.
Later, in 1989 the Protocol was adopted that will fulfill the deficiencies left in the Agreement. The Protocol came into force in 1996.
The Madrid Protocol allows businesses, innovators, and trademark owners to receive trademark registration in multiple countries with the help of a single application. With Madrid Protocol, an applicant has the possibility of attaining trademark protection in more than 124 countries by filing a single international application with the World Intellectual Property Organization (WIPO). The entire payment is made in a single currency, Swiss Franc (CHF).
Types of Trademarks
How does it work?
Even though it might seem that a single application will mean that each member country will have the same laws and legislation, it is not the case. Every country will entertain the trademark registration application according to its own laws.
To understand the application process, let us look at in detail.
It is of utmost importance to check whether similar or identical trademarks are already registered or are pending registration in your desired target markets/regions. If this search is not done, your application can potentially be rejected because there might already be a trademark similar to yours, which can raise an opposition. This can be done through the databases available over WIPO and in the national/regional trademark offices.
First thing you need to do before filing an international application is to file a trademark registration application with your local/national/regional Intellectual Property (IP) office, if you have not already. This office will be your ‘home’ IP office and the application that you will file will be known as ‘basic mark’. Once that is done, you will file an international application with the same IP office, which will then certify and forward it to the WIPO.
This international application will contain all the information about you and your trademark, the class(es), and information about which countries you want to register your trademark in.
WIPO’s Formal Examination
When the international application is forwarded to WIPO, it conducts an examination of that application only. The application is checked for inaccuracies and completeness. If approved, the trademark is recorded in the International Register and gets published in WIPO’s Gazette of International Marks. You will then receive international registration certificate and WIPO will inform all the IP offices of the countries you wish to get your trademark protected.
If there is any issue with the application, WIPO will inform the applicant through the designated office or home IP office and give time to resolve the issue. If the applicant does not resolve the problems, the application will be discarded and considered withdrawn.
Substantive examination by Local/National/Regional IP Offices
The IP offices in the desired countries will examine the application according to their legislation and based on the rules and law, give a decision. This will take anywhere from 12-18 months. The decisions will be recorded by WIPO in the International Register and you will be notified.
If an IP office rejects your trademark application, you can still contest against the refusal decision with the said IP office. A decision of one IP office will not affect the decisions from other IP offices. If your trademark is accepted by the IP office, it issues a statement of grant of protection.
If there is no opposition filed or if the dispute is resolved and the decision is in favour of the applicant, the trademark gets registered and the USPTO issues a certificate of registration.
The entire trademark process takes around 12-18 months.
Benefits of Madrid Protocol
There are several benefits of the Madrid system.
- Perhaps the most important benefit is that it saves money and time: The applicant has to file a single application rather than individually filing applications in each nation, also saving on the cost of translations and representation;
- The Madrid Protocol makes it convenient for the applicant: Easily file an application in one language by paying one set of fees and apply for protection in several territories;
- The Madrid System is a global system, and it represents over 80% of the world trade.
- Examination speed: Member countries have to examine the applications in either 12 or 18 months, to participate in the Madrid Protocol.
Disadvantages of Madrid Protocol
- If the registration in your home country is cancelled or abandoned within the first five years of registration, then all the international applications and registrations will likewise be canceled. This is called Central Attack.
- As there is only a single language you can file in, either English, French or Spanish, it causes a limitation to file in Asian characters.
- The international registration is based on the home country application, and the country might have limited description of goods and services as compared to other territories.
- There can be legal hold ups at individual trademark offices, like office actions or oppositions, and to resolve those, the applicant might have to hire local counsel, which can delay the process and increase the cost.
Price of Trademarks
How much does it cost to have an International Registration?
The cost varies according to the number of territories and classes designated for the trademark. Generally, the cost is around CHF 635 to CHF 1360 or USD 700 to USD 1500. If there are legal fees involved, that will increase the overall cost.
Age of Trademarks
How long does the International Registration last?
International registration of the trademark is valid for 10 years. The registration can be renewed at the end of 10-year period directly with the WIPO.
Documents required for Madrid Protocol
Apart from the usual details when filing the application in your home IP office like name and address, details of the trademark, class(es) in which the goods and services fall, details of goods and services offered, there are different forms that need to be filled according to the classification and nature of your trademark.
At Trademark International, we provide hassle-free trademark registration services catered to your needs, in compliance with the international requirements and standards. International trademark registration doesn’t have to be complicated, and that’s why Trademark International is here to assist with all of your intellectual property needs.
What to do? How to do it? When to do it? Will it work?
If these are the questions that come to your mind when thinking of registering a trademark, you have come to the right place. We, at Trademark International, answer these questions and more! Offering multiple trademark services, we guarantee client satisfaction. For expert advice and consultation, contact us now!
Frequently Asked Questions
The process for registering a trademark varies from country to country. To file for a trademark in the US, you can file an online application with the USPTO. The USPTO entertains two types of applications: ‘In-use’ and ‘Intent to use’. The online application is known as Trademark Electronic Application System (TEAS).
Just like every country has its own registration process, the cost varies as well. Depending on the legal fees and the length of the process, the cost can go up or down. In the US, the price of registering a trademark ranges from $500 to $3000.
You need to file an application which should contain: your name and address, if it’s a business then the type of legal entity it is, details of the trademark, list of goods and services, the details of the class(es).
Yes, you can file for both: a local and an international trademark. Some countries entertain a single application to register a trademark locally as well as internationally.
Yes. It is possible to register a trademark in multiple countries with a single application but it depends on which union the country is part of. You can do this through the Madrid Protocol or EUIPO.
Countries have different laws regarding what can be registered as a trademark. In the US, the types of trademarks that can be registered are slogans, shapes, names, phrases words, images, 3D shapes, holograms, smells, and colors.