As a company domiciled in the United Kingdom looking to file an American trademark application, there are 2 options:
- You can file a trademark application through an international trademark system called the Madrid Protocol.
- You can hire an American trademark attorney to represent you and file the application on your behalf.
There are advantages and disadvantages to both of these choices, and the subsequent timelines factor into this decision as well. It is important to note that there is no possibility to ‘rush’ an application and that the timing of the trademark application’s review is entirely up to the discretion of the examining offices. Depending on the method selected, it will take a UK-based business approximately twelve to eighteen months to file and register a trademark in the United States.
Filing through the Madrid Protocol
The Madrid Protocol, formalized in 1996, is an excellent option for companies looking to file trademarks in multiple countries and looking to avoid extensive filing fees in each jurisdiction. While this international system streamlines the application process internationally, not all countries are a part of the Madrid Protocol. Additionally, a refusal of the original application can affect the other applications as well. Click here to learn how to avoid a Madrid Protocol trademark registration refusal in the United States.
To begin, you would file the application through the typical channel in your country of origin–in this case, the United Kingdom. When submitting the application, you would indicate that you are seeking international registration and designate the countries in which you would like to make parallel filings. The local office, which would be the United Kingdom Intellectual Property Office (or UKIPO), then passes along the application to the World Intellectual Property Organization, which handles all Madrid Protocol filings. After approximately three to four months, WIPO will approve the application for registration and extend the application to the other countries you have requested. The following approval is up to the discretion of each nation according to their trademark laws and the turnaround time will vary according to each location; generally speaking, each national office has twelve to eighteen months to accept or refuse the registration. While this turnaround time is typically quicker, there is a possibility your trademark could take close to two years to register if the United States Patent and Trademark Office takes the full amount of time to review the application.