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US Trademark Law - Trading Up

Recently, the United States joined the Madrid Protocol for international trademark protection. Now US trademark owners can file for protection in more than 60 countries with a single application.

Prior to joining the Protocol, an owner of a US trademark could only obtain international protection of its mark by filing individual applications in each country in which protection was sought. This often required hiring local legal counsel in each country — an expensive and time consuming undertaking.

Under the Madrid system, using only one application, a claimant can select multiple countries (as long as each country selected is also a member of the Protocol) in which to register its trademark. Assuming there are no problems, using this system can drastically reduce the time, cost and inconvenience of securing broad international protection for intellectual property. In addition, post-registration activities can be substantially less expensive. For example, registration renewals and name or address changes can be accomplished in one step with one fee.

While the treaty's consolidated procedures may offer some advantages, there are also some significant disadvantages that must be considered. For example:

The U.S. trademark system imposes a more restrictive description of goods and services than most foreign countries. Since the home country dictates the scope of protection, a U.S. owner will have its foreign rights more narrowly defined than would otherwise be available by filing separately in the individual countries.

Further, The Madrid Protocol lacks allowances for minor changes to a mark. The U.S. Trademark Office allows consistent and minor revisions to be made without adversely affecting the registration's priority date. An owner who hopes to update a registered mark under the Madrid Protocol must forfeit the original registration.

While the Madrid Protocol provides a new and valuable tool for obtaining international trademark protection, U.S. trademark owners may still be better served by filing individual foreign applications. Persons seeking international trademark protection should consult with an attorney well versed in trademarks to carefully weigh the benefits and disadvantages of using the Madrid Protocol and to assess the strength of the mark to be protected and the level of protection needed.

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