At Smith & Hopen, we manage trademark registrations for multiple global brands. This experience offers us a first-hand insight into the value a company can derive from a strong international trademark portfolio. We also know how investors and potential acquirers assess international trademarks. Not surprisingly, key qualities of an attractive international trademark portfolio include simplicity, efficiency, and clarity. One of the best strategies for achieving this objective is obtaining an international trademark registration via the Madrid Protocol.

Madrid Protocol Benefits

One of the main advantages of the Madrid Protocol is centralized control over your international trademark portfolio. For example, instead of filing separate trademark applications in individual countries, you can simply file a consolidated international application. This benefit can yield significant cost and time savings. Instead of hiring local trademark counsel in every foreign jurisdiction, your U.S. attorney can handle the entire filing process. You designate the countries in which you would like to protect your brand, and a single international application filed with the United States Patent and Trademark Office (USPTO) branches out into each designated jurisdiction.

The benefits of the Madrid Protocol extend beyond the filing stage. For example, if your company relocates its headquarters, you must update the address on all trademark registrations in your portfolio. Without the Madrid Protocol, this routine event can trigger a logistical nightmare, requiring you to locate foreign counsel in each jurisdiction, wiring them funds, and providing the necessary paperwork compliant with the specific legal requirements of each country. On the other hand, with the Madrid Protocol, a simple address change form automatically updates all active foreign trademark registrations. Same benefit applies to trademark renewals and change of ownership. Furthermore, you can expand your brand protection to additional countries at any time by filing a simple request with the USPTO. Accordingly, if your business strategy involves building a successful company and then expanding it or selling it, the Madrid Protocol is the way to go.

Madrid Protocol Eligibility

The main prerequisite for gaining eligibility for the Madrid Protocol is having an active “basic” trademark application or registration. This means that, prior to filing an international trademark application, your company must have a pending U.S. trademark application or an issued U.S. trademark registration. Great news is that there is no time limit as to when the Madrid Protocol application must be filed. Accordingly, both startups, who recently launched their brands, and established U.S. companies, whose trademarks have been registered for years, can benefit from the Madrid Protocol. Furthermore, an international application filed within six months of the filing date of the U.S. application will receive the priority date of the U.S. filing.

One important aspect of the Madrid Protocol application is its dependence on the underlying U.S. application or registration. This means that if the U.S. trademark filing dies, so does the international filing. To ensure this does not happen, we advise our clients to secure the allowance of their domestic trademark application first. This advice also makes practical sense in most scenarios. After all, if you cannot secure exclusive rights to your brand domestically, then you probably should not invest money into protecting this brand abroad.

Takeaway

If you company has an international presence, trademark protection abroad may bring significant value. In many cases, the best route for securing international trademark rights is filing an international application under the Madrid Protocol.