Issue 6, 
January 2003


More Information about the Intellectual Property Group
 


© 2003
Bose McKinney & Evans LLP

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Madrid Protocol: 
Adios to Filing Trademark Applications in Individual Foreign Countries?


How does a U.S. company with overseas sales - or an interest in overseas markets - register its trademarks in foreign countries? Presently, the company is required to correspond with foreign trademark associates on almost a country-by-country basis. With the assistance of reputable foreign representatives in each country, the U.S. company can perform availability searches, file applications to register marks, pay foreign associate and foreign country fees and navigate the registration process in each country. This country-by-country process works, but can be expensive and procedurally confusing. Maintaining and renewing registrations on a country-by-country basis also can be expensive and cumbersome. Companies with tight budgets sometimes opt to skip the foreign registration process. 

Soon, trademark lawyers should be able to offer U.S. companies an alternative approach. The U.S. recently ratified an international agreement called the Madrid Protocol. When all the necessary procedures are in place at the United States Patent and Trademark Office (USPTO) , a U.S. company with a U.S. trademark registration or pending application will be able to file a single international application in English with the USPTO to begin the registration process in approximately 56 other countries . 

Will this new registration process be simpler than the current system? Will it be cheaper? In some cases it will, but in other cases, a U.S. company may be better off continuing to obtain national registrations in a few targeted countries. To determine whether your company can benefit from the Madrid Protocol system, you first must have a basic understanding of how the system will operate.  

FULL STORY
Background
How Will the Madrid Protocol System Work? 
Some Wrinkles in the System
Who is Likely to Benefit from Filing a Madrid Protocol Application?

 
This Update, a service of Bose McKinney & Evans, provides information on the issues that affect your business. For more information about the materials presented, contact your primary Bose McKinney & Evans attorney, or email us comments.  The information in this Update should not be construed as legal advice.

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