In addition to assisting our clients in obtaining U.S. trademark protection, we are also highly experienced in obtaining foreign trademark protection. The process of obtaining foreign patent protection is usually best started through what’s called the Madrid Protocol, which basically operates as a trademark application clearinghouse for most industrialized countries. A Madrid application does not lead to the grant of an "international trademark," which actually does not exist; rather, the Madrid Protocol merely provides a centrally administered system of obtaining a bundle of national trademark registrations in particular countries of the applicant's choosing. Thus, the Madrid Protocol provides a mechanism for obtaining trademark protection in many countries around the world, which is more effective than seeking protection separately in each individual country or jurisdiction of interest.

Unlike the PCT process in the patent context, a Madrid application requires that the trademark owner has an existing trademark application or registration in a member jurisdiction (such as the U.S.). A useful feature of the Madrid Protocol is that this protection may generally be extended to additional jurisdictions at any time, such that international trade mark protection can be extended to new jurisdictions which subsequently join Madrid, or to such other jurisdictions as the trademark owner may choose. One disadvantage of the Madrid Protocol is that any refusal, withdrawal or cancellation of the U.S. application or registration within five years of the registration date of the international registration will lead to the refusal, withdrawal or cancellation of the international registration to the same extent. Additionally, if the U.S. application is rejected as a whole, the international registration would also be totally refused.

Also unlike the PCT process in the patent context, Madrid applicants must pay the necessary filing fees in each desired country upfront.

If you are only interested in European trademark protection, there is an alternative process known as the Community Trademark (CTM) system. The CTM system creates a unified trademark registration in Europe, whereby one registration provides enforceable protection in all member states of the European Union. The primary disadvantage of a CTM is that an objection against a CTM application in any member state can defeat the entire application, thus requiring the CTM applicant to salvage the situation by converting the application into one or more national applications. In that situation, the applicant cannot recover the costs of filing the CTM application and must in effect repay to file in each country where the CTM application is converted. If you are in fact only interested in obtaining trademark protection in Europe, we will be more than happy to further explain to you the pros and cons of filing a Community Trade Mark (CTM) application versus a Madrid Protocol application.

In comparison, the Madrid Protocol route can cover the same countries as the CTM system, in addition to many non-European countries, and is typically much less expensive.

The costs involved in the foreign trademark process depend on which system we ultimately go through, as well as in which countries you are interested in obtaining protection.

So, if you are interested in obtaining foreign trademark protection, or simply would like more information, we invite you to call 949-250-5800 or email us to schedule your FREE initial consultation, during which we can explain the various foreign trademark options to you in more detail and answer any follow-up questions that you may have.