The Advantages and Disadvantages of Using the Madrid Protocol (Foreign Companies Filing in U.S.)

By Josh Gerben, Esq.

If you are a company outside of the US doing international business, you’ve probably come across the Madrid Protocol as an option for filing trademarks for protection in a number of countries including the United States.  A common question that may arise as you seek out trademarks is whether a foreign business should use the Madrid Protocol to file a US trademark application, or directly engage a US trademark attorney to assist with the filing.

First, a small bit of background and clarification: the Madrid Agreement (whose full name is the Madrid Agreement Concerning the International Registration of Marks) predates the Madrid Protocol (formally known as the Protocol Relating to the Madrid Agreement) by over 100 years – 1891 for the Agreement, and 1996 for the Protocol. As you read on, we’ll point out some of the subtle differences between the two, but it’s most important at this point for you to be aware of which countries the Protocol applies to – that’s what we’ll be focusing on here. Now, let’s take a quick look at how a Madrid Protocol trademark filing works in order to lay down the parameters, before we investigate the key advantages and disadvantages of applying that way.

To start, you’ll file a local application through the standard channel in your country of origin – for example, in the United Kingdom, you’d file through the Intellectual Property Office (UKIPO).  When you indicate that you’re seeking International Registration, your local organization passes the application on to WIPO, which then submits it to the Madrid Union countries of your choosing as a Request for Extension of Protection (REP). Upon approval, you’re then entitled to trademark protection in each of those countries according to their local trademark law.

Now let’s examine some key aspects of Madrid Protocol trademarks filed with the United States Patent and Trademark Office (USPTO) and the advantages and disadvantages of hiring local counsel in the United States to make your trademark filing.

Advantages of Using the Madrid Protocol for US trademark applications

1) Easily file in multiple countries in addition to the USA

The primary advantage of filing a trademark application under the Madrid Protocol is that which it was explicitly designed for: to easily allow a person or a business to gain trademark protection in multiple countries with one filing and one attorney or representative. Without the Madrid Protocol, an entity doing business in multiple countries would need to extend resources – time, money, and personnel – individually to each of those countries in which it desired trademark protection. The filing party would need to locate and retain local counsel with expertise in the trademark laws and filing process of each specific country, an undertaking that has since been eliminated by the Madrid Protocol.  If you are filing in multiple countries, including the US, then it may be convenient to simply add the US to your Protocol filing.

2) Save on filing costs by not hiring a local trademark attorney in each country

The fees for Madrid Protocol filings vary widely based on the country of origin, the number of countries you’d like protection extended to, which countries those are, and how many classes you’re filing under. A big advantage of a Madrid filing is the up-front savings found by avoiding direct applications to each intended country or jurisdiction. In addition to the filing fees themselves, you’re also able to save on attorney or representative fees in each local jurisdiction to which you’re applying for a trademark. Standard administrative costs like renewals and changes in ownership information (like name or address) can also be handled centrally through an International Registration rather than on a country-by-country basis, further reducing costs.

3) Registration can be achieved based on “intent to use” in the USA.

In the United States, direct national trademark applications can be filed as “intent to use” in commerce, meaning that the requested mark has not yet been used in interstate sales. However, registration can’t actually be granted until the mark actually is “in use” in commerce – a transition that requires additional documentation, filing, paperwork, and fees. Overseas Madrid Protocol applications, however, can be granted and registered by the United States prior to use in commerce. Keep in mind that as an up-front consideration this is more convenient; however, upon any subsequent challenge to the trademark in the U.S., the burden of proof as to when the mark did enter use in commerce will fall on the Madrid Protocol registration, which is more difficult to prove than the explicit in-use status of a registered national mark.

Disadvantages of using the Madrid Protocol for US trademark filings

1) Filing in the U.S. from overseas can be challenging.

American trademark law is notoriously stringent as to the language required to describe the goods and services offered, as well as the classes used to designate them. Trademark applications must be relatively specific when describing a product or service, and the 45 different classes of offerings can get quite granular. Trademark applications in other countries, by contrast, are permitted to be broader in their descriptions. Describing a product as “clothing” may be acceptable in one jurisdiction, whereas in the U.S., you would need to designate the specific articles you are producing. Applicants in other countries will run into problems with their US filings even when they’ve filed a perfectly acceptable local application due to these discrepancies. In cases like this, a direct U.S. filing that expressly meets the requirements of the USPTO has a greater chance of success than a Madrid Protocol filing.

2) Madrid Protocol filings are subject to central attack.

“Central attack” means that the original application used to initiate a Madrid Protocol filing can be successfully disputed or denied, thus affecting the filings in other nations. In this case, all other trademark protections granted by the Madrid Protocol are cancelled as well – a catastrophic situation for the trademark holder. There is an opportunity for recourse – for instance, the holder can attempt to convert each Madrid Protocol trademark to a national application in each jurisdiction, but this can result in increased representation fees, filing fees, and much more time. It’s still worth the benefits of trademark protection to do so, but in the event of central attack, the Madrid Protocol filing is simply a wasted step and a needless expenditure of resources and money, just to end up with the same result: national applications in the desired countries.

3) Madrid Protocol filings are commonly refused by the USPTO for being technically deficient.

A “successful Madrid Protocol filing” doesn’t mean automatic approval of every trademark in every country. Each international application is reviewed by the local trademark or intellectual property office for propriety and potential conflicts. The Madrid Protocol simply streamlines the application process. While a number of applications may be successful in several countries, when some are denied, the need for local counsel again arises.  Because the requirements for registration in the United States tend to be some of the most stringent in the world, it is not uncommon for US applications filed through the Madrid Protocol to have some technical deficiency.  Therefore, many times, foreign applicants need to hire US counsel to fix errors in the Madrid Protocol trademark applications.  Once this situation occurs, it negates any potential cost savings of the Madrid filing – in many cases, the legal fees would have been less if you simply filed our US application directly through a US trademark attorney.

As you can see, there are several advantages and disadvantages to filing for international trademark protection under the Madrid Protocol, especially if it’s a filing from outside the U.S. that wishes to gain USPTO protection. Typically, the advantages conferred by the Madrid Protocol are realized earlier in the process – a greatly reduced upfront cost, as well as not having to seek and hire local counsel. As you’ve seen, however, those up front savings can be quite easily offset and even surpassed by the potential for increased filing and attorney fees down the line.

The benefits of local counsel, especially in jurisdictions like the United States, with stricter trademark application requirements than other locations, become more apparent when you take their expertise, familiarity with local trademark law, and singular focus on getting your application through the local trademark body into account. It’s well worth carefully weighing your options and the risks you’re willing to take on when you’re considering whether to utilize the Madrid Protocol or file directly for international trademark protection.

At Gerben IP we routinely assist overseas clients in directly filing US trademark applications, and, fixing issues with applications filed through the Madrid Protocol.  Please feel free to contact us with any questions or to get started on your international portfolio today.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.