An foreign trademark owner (or applicant) having a valid registration in their country of origin may file a trademark application with the USPTO. As an international trademark holder, you can utilise a Madrid Protocol application to file for US trademark registration while also extending protection to other nations that are signatories to the Madrid Protocol Agreement. However, if you do not already have a registered trademark in your nation and are filing for a US trademark, you may be unable to submit under the Madrid Protocol agreement. Directly with the USPTO, you may file an application to register your trademark. Your application must adhere to US substantive requirements and formalities, as well as legislation and procedures governing overseas application submission.”
If you are a foreigner, you can apply for trademark in the United States. You have the option of filing through the Madrid Protocol or directly with the USPTO.
In addition to being able to file for a trademark via any method, there are several other advantages to doing so:
If you use the Madrid Protocol, you do not need an attorney; but, if you go straight via U.S. Customs and Border Protection (CBP), it is suggested that you engage an attorney due to certain difficult legal concerns connected with this alternative.
The expenses connected with either option are lower than those involved with applying directly with CBP; nonetheless, they are still substantial enough that employing an experienced lawyer is typically worthwhile when considering how much money may be saved by doing so.
Overseas Trademark Rregistration.
Owners of overseas trademarks can apply for a trademark in the United States by submitting an application to the USPTO. The Madrid Protocol allows for international filings and has been accepted by many nations worldwide, including the United States, so you may use it to file for your trademarks globally. The Madrid Protocol allows worldwide trademark owners to apply for trademark registration in many countries by making a single application with WIPO (World Intellectual Property Organization), rather than completing separate applications with each jurisdiction separately.
This means that if you already have an international registration under the Madrid Protocol Agreement, you can apply to extend protection to other countries that are part of this agreement with a single application rather than submitting individual applications in each country where protection is desired or needed in order to avoid potential conflicting rights issues or claims being made against someone else who also owns an identical or similar mark with no protection.
As an international trademark holder, you can utilise a Madrid Protocol application to file for US trademark registration while also extending protection to other nations that are signatories to the Madrid Protocol Agreement.
The Madrid method allows you to submit all of your trademarks in any language with a single worldwide filing office. You do not need to translate or prepare separate applications in each nation where you want your mark to be protected because these countries will allow filing by reference (“by Office”).
Inernational Trademark Registration Procedure.
The International Bureau of WIPO (the World Intellectual Property Organization) sends your international registration application to each designated location within 30 days of receipt. Within 30 days of getting a copy of your foreign application, each assigned office contacts you to let you know what they need to do next!
However, if you do not already have a registered trademark in your nation and are filing for a US trademark, you may be unable to submit under the Madrid Protocol.
The Madrid Protocol is an international convention that allows you to seek trademark protection in numerous countries with a single application and filing cost. To be eligible for a US trademark registration, you must satisfy the following criteria:
You must have a valid registration in your home country; your mark must be identical or confusingly similar to the mark of another party that has filed an application or registration within six months of yours; you must submit a copy of each other’s applications/registrations along with their names and addresses (this can be done by using the TEAS Form TM-90B); and, most importantly… If you do not already have a registered trademark in your country, you will not be qualified to file under the Madrid Protocol since it only applies if you already have rights someplace else!
Directly with the USPTO, you may file an application to register your trademark. Your application must adhere to US substantive requirements and formalities, as well as foreign application filing norms and procedures.
Please contact our company right away if you have any queries regarding how to effectively defend your trademarks in the United States.
You must sign a declaration stating that you are using or intend to use your mark in commerce on or in connection with all of the goods/services included in your application. You must also show that: you intend to use the mark at some point in the future; you have not abandoned the mark (which means it hasn’t been used for three years); and the party applying for USPTO Trademark Filing is not a “abandoner,” which means they are still using their trademark despite having let it lapse into public domain.
If you live outside the United States, you can designate an attorney who either lives in the United States or is registered to practise before the United States Patent and Trademark Office (USPTO). They will be sent official letters regarding your trademark application.
The attorney will be in charge of contacting with the USPTO on your behalf and answering any queries or difficulties that occur throughout the trademark filing procedure in the United States.
It makes no difference where you reside if you use your brand in trade. The USPTO is unconcerned with where you live or your nationality. The USPTO will enable you to use the trademark as long as you intend to use it in a legal company.
If you have no intention of utilising the mark in commerce and cannot demonstrate that others are aware of it, your US trademark registration may be jeopardised. It is preferable to file an Intent-To-Use Application (ITU) rather than a Use-It-Or-Lose-It application since it allows for more time for prosecution if something goes wrong with prosecution later on!
We hope this guide has helped you understand how to file a trademark application in the United States. As an international mark owner, you can utilise a Madrid Protocol application to file for US trademark registration while also extending protection to other Madrid Protocol Agreement nations. However, if you do not already have a mark registration in your home country and are filing for a US trademark, you may be unable to submit under this agreement. If it is more convenient for you, you can file an application directly with the USPTO.