Coming to America: a guide to extending registrations via the Madrid Protocol

By Lawrence E Apolzon

It has been over a decade since the Madrid Protocol came into force in the United States, yet many rights holders looking to extend protection still find the US use-based system confusing. Taking care over the initial application can be a wise investment

On November 2 2003 the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, otherwise known as the Madrid Protocol, came into effect in the United States. Under this treaty, a trademark owner may seek registration in any countries that have joined the Madrid Protocol by filing an international application through the International Bureau of the World Intellectual Property Organisation (WIPO) in Geneva, Switzerland. The resulting international registration then serves as a means for seeking registration in member jurisdictions, each of which applies its own rules and laws to determine whether the mark may be registered in its jurisdiction (see www.uspto.gov/trademarks/law/madrid/madridfaqs.jsp#q1). Any trademark owner that is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the US Patent and Trademark Office (USPTO). Further, non-US trademark owners in other Madrid Protocol countries can seek to extend an international registration to the United States.

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