The Madrid Protocol

On November 2, 2003, the United States joined the international trademark treaty known as the Madrid Protocol. The Protocol provides U.S. trademark owners with the ability to seek registration in Madrid Protocol countries, using what has been called a "one-stop" filing mechanism. The system, administered by WIPO, offers the owner of a mark in the United States the ability to obtain registration (called an "International Registration") for its mark(s) in a vast number of countries by using a centralized filing system. A single application is filed with the United States Patent and Trademark Office, designating those Member Countries in which the applicant wishes to seek registration. Currently there are 58 countries (also referred to as "member states") that are party to the Protocol. In addition to providing U.S. owners with the ability to seek international registration for their marks, U.S. adherence to the Protocol allows applicants from foreign countries to seek U.S. registration in the same manner.

The Protocol facilitates filing in Member Countries, through use of a single application in one Trademark Office, with one set of documents, in a single language, with payment of a single filing fee (that is payable in U.S. currency), and results in a single registration, with one registration number that has one renewal date. Because the filing system is "centralized" through one Trademark Office, eliminating the need to retain lawyers in all foreign countries where registration is desired, this centralized filing greatly reduces the cost of obtaining worldwide trademark protection for U.S. registrants, businesses and individuals alike. With the exception of the European Union (Community), where it is now possible to obtain a single registration covering all 15 member states of the European Union (note: the European Union is in the process of being enlarged, and the European Union is ultimately expected to become a contracting party to the Protocol), and certain African countries, it is not currently possible to obtain registration in numerous foreign countries without filing separate applications in each of those countries. In addition to reductions in filing fees, maintenance fees and lawyer/agents' fees, changes of address, assignments and similar changes (e.g. , name changes) only need to be filed in one office, and only require payment of a single filing fee. Also, under the Protocol, the owner of an International Registration may subsequently extend an existing International Registration to additional Member Countries, including countries that may later join the Protocol.

When an International Application is filed in the applicant's home country "Office of Origin" (in the United States, the United States Patent and Trademark Office), the applicant designates those Member Countries for which coverage is sought. If an International Application is filed within six-months of a corresponding filing in an applicant's country of origin, it is possible to claim the filing date priority of the "home country" application. Once filed, the U.S. Patent and Trademark Office "certifies" that the mark, the owner and the goods and/or services in the International Application are the same as those listed in the basic registration or application. The U.S. Patent and Trademark Office then forwards the International application to WIPO. To receive a "Date of Receipt" (a filing date) from WIPO, the International Application must be filed through the U.S. Patent and Trademark Office's electronic "TEAS" system, if the application is being filed by a U.S. applicant, and, in any event, must contain the following elements:

• Basic application and its filing date or registration number and registration date

• Name and address of the international applicant (identical to basic application)

• Drawing of the mark

• Color claim (if appropriate)

• Description of the mark (if appropriate)

• Type of mark (e.g., sound, three-dimensional, etc., if appropriate)

• List of Designated Countries

• Certification fee (if filed through U.S. Patent and Trademark Office) and WIPO International Application fees for all classes and designated countries

• Correspondence e-mail address

After these filing requirements are met, each country designated by the applicant conducts its own examination. If a country refuses registration, the applicant responds directly to the refusing country's trademark office, not to either the U.S. Patent and Trademark Office or WIPO. If the applicant can not overcome a refusal in a particular designated country, or if the applicant decides not to respond to the refusal, the International Registration still issues, however, the coverage is not extended to the country that refused registration.

For the first five years of registration, an International Registration is dependent on the continued validity of the underlying Basic Registration or Application. If the corresponding Basic Registration or Application is invalidated for any reason during the initial five-year period of International Registration, the International Registration is likewise invalidated. In this situation, however, the International Registration can be converted into separate national filings in the designated countries, retaining the filing date (including priority filing date) of the Basic Registration or Application, provided a "Request for Transformation" is filed within three months of the invalidation of the underlying International Registration, and upon payment of the national filing fee in each country.

International Registrations are effective for a ten-year period and renewable for similar periods, upon the filing of a single Renewal Application accompanied by the appropriate renewal fee. International Registrations enjoy the same rights and enforceability as a registration that results from a "direct" national filing. Accordingly while not appropriate in every situation, the Madrid Protocol can provide an effective vehicle for obtaining and maintaining registration for marks in a number of foreign countries in a more streamlined, cost effective manner. Recognition of both the benefits and the limitations of the Madrid Protocol are, however, imperative to implementation of a sound strategy for developing and maintaining a trademark portfolio.