US Trademark Application Strategies for Foreign Companies

If you are a foreign entity considering filing a trademark in the United States, there are two very good reasons to use a local US trademark attorney as opposed to filing through the Madrid Protocol.

1. Filing directly through a US trademark attorney will likely result in a faster registration than if you file through the Madrid Protocol.

First and foremost, the application process when filing directly through a US attorney is much faster than when filing through the Madrid Protocol. When you file through the Madrid Protocol, your application goes through a series of loops and different places before it reaches a US government examiner. If you file directly, your application will be examined within four months, and can be registered in as little as eight months. In most cases, a Madrid Protocol application will take a year or longer.

2. A trademark filed through the Madrid Protocol seeking protection in the United States can ultimately end up costing more than filing directly through a local attorney in the US.

The second reason you should use a US attorney is that the process can be a lot cheaper than it is through the Madrid Protocol. Though the Madrid Protocol is supposed to make things cheaper, the United States has very stringent requirements on how you describe your products or services that can prompt issues. What tends to happen is that somebody from overseas files an application through the Madrid Protocol and they list their products or services very broadly, or there’s a super long list. They’ll get an initial refusal because –

a) The language isn’t correct under US law,
b) They went so broad that they’re now conflicting with some other trademark that already exists.

As a result, this individual will need to engage a US attorney to respond to these issues. Our firm typically charges between $1500 and $3000, if not more, to respond to a refusal through the Madrid Protocol. Yet, if you file directly with us, the cost is generally $1000 or less. So, depending on how clean your Madrid Protocol application is, filing through a US attorney can also be a lot less expensive.

Overall, the speed and cost of filing a trademark can vary greatly depending on whether an application is done with a local US attorney or the Madrid Protocol. If you have any further questions regarding filing a trademark in the United States, please feel free to reach out.

Contrasts between internationally registering with the Madrid Protocol and using local counsel.

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.

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