How to File a Foreign Trademark

by David Carnes
International tradmark protection helps protect global economic interests.

International tradmark protection helps protect global economic interests.

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Every country protects trademark rights, although trademark laws differ from jurisdiction to jurisdiction. Although obtaining protection in one country does not automatically entitle you to protection in another country, it is possible to file for trademark registration in dozens of countries simultaneously by filing an application with the U.S. Patent and Trademark Office under the Madrid Protocol. You may file in remaining countries by taking advantage of regional trademark systems or applying individually in each country.

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Step 1

Perform an international trademark search to confirm that your trademark is unique. It is unique in any particular jurisdiction if nobody else has registered it or is using it there. You can perform trademark searches on the websites of the U.S. Patent and Trademark Office and the World Intellectual Property Organization. These search engines cover only registered trademarks. Even if you cannot find a trademark that is identical or similar to yours, you may be denied exclusive use in a particular jurisdiction if a party in that jurisdiction is already using an unregistered trademark that is identical or similar to yours.

Step 2

Apply for registration of your trademark with the U.S. Patent and Trademark Office or through an online document preparation site such as LegalZoom. This is a prerequisite to applying for international protection. The USPTO offers the online TEAS application system on its website. You must supply basic information about yourself and your trademark, upload a sample trademark, and pay the filing fee.

Step 3

Submit an international TEAS application for trademark registration with the USPTO. You don't have to wait until your U.S. trademark application has been approved. You may file online using the USPTO website. You must supply basic information, upload a trademark sample and indicate the countries in which you seek trademark protection. You must pay filing fees imposed by the trademark offices of each of the countries in which you seek trademark protection, and you must pay the USPTO a certification fee. The USPTO will forward your application to the World Intellectual Property Organization for further processing. WIPO will then forward it to the trademark offices in each of the countries in which you desire trademark protection.

Step 4

Answer inquiries and objections from national trademark offices. In some cases, you may need a local trademark attorney to assist you. The national offices must deny your application within 18 months of the filing date of your international application; otherwise, WIPO will deem your application automatically approved.

Step 5

Seek trademark protection in countries that are not members of the Madrid Protocol. You may seek protection in European Union countries that are not members of the Madrid Protocol under the EU's Community Trademark Act. In some countries, you may obtain protection only by applying directly to the national trademark office.