Getting a US trademark: What UK businesses need to know

If you sell products or services to consumers based in the US, you’re eligible to file for US federal trademark protection. But should you take advantage of the Madrid Protocol’s “one-stop-shop” to file an application or should you work with a US trademark attorney to file an application directly?

shutterstock_342232103Let’s take a look at what UK businesses need to know about filing a trademark application across the pond.

Understanding the Madrid Protocol

Businesses in the UK may be familiar with the “Madrid Protocol” (or The Madrid Agreement Concerning the International Registration of Marks) as an option available for filing foreign trademark applications. The Protocol, which covers 113 countries including the UK and the US, allows you to file a single application to seek trademark protection in any of the member countries.

To take advantage of the Madrid Protocol in the UK, you file an application through the Intellectual Property Office (IPO) and indicate that you desire International Registration. The IPO will then transfer your application to the World Intellectual Property Organization (WIPO) which will submit your Request for Extension of Protection (REP) to the country or countries where you’re interested in gaining trademark protection, including the United States.

One application doesn’t mean one approval

The Madrid Protocol aims to simplify the trademark process by allowing applicants to file one application that is accepted by many different countries. But don’t make the mistake of thinking that the approval process is as streamlined as the application process, or that you will be able to receive some sort of  internationally recognized trademark.

When you file a Madrid Protocol application, each country that receives your application individually reviews it, and approves or denies it based on their laws and standards. That means that even if your application is approved in Spain, it may be denied the US.

The pitfalls of the Madrid Protocol

If you’re interested in filing for trademark protection in a number of countries, including the US, the time- and cost-savings associated with filing a single application may be tempting. But if you’re serious about obtaining protection in the US as quickly and smoothly as possible, filing a Madrid Protocol application may end up being much longer and more time-consuming than you imagine.

To increase your chances of US trademark success on your first application, working with a US-based trademark attorney directly is your best bet. Here’s why:

The US routinely refuses Madrid Protocol applications for technical issues

A perfectly acceptable International Registration filing often requires additional information when it gets to the United States Patent and Trademark Office (USPTO). That’s because unlike many other countries that allow for somewhat broad descriptions of products or services, the United States requires a relatively granular level of specificity. For example, in Singapore it may be enough to describe your product as “clothing” in your trademark application, but in the US you need to specify what type of clothing, e.g. hat, t-shirt, pants.

Similarly, the USPTO is equally particular when it comes to technical deficiencies in applications, which tend to be more common in Madrid Protocol filings. Anything from a missing signature or the omission of required fees can trigger the USPTO to put your application on hold while it notifies that your application is technically deficient.

It’s easy to see how any savings gained by filing a single International Registration could quickly disappear if you have to hire a US-based attorney to correct errors in your Madrid Protocol application. Given this reality, a directly-filed US trademark application that meets the USPTO’s very specific requirements has a better chance of being reviewed and approved more quickly (and with fewer potentially costly and time-consuming errors) than Madrid Protocol filings.

A disputed Madrid Protocol filing cancels trademarks across the board

If you apply for trademark protection via the Madrid Protocol and your home country ends up cancelling your registration during the first 5 years, any other trademark protections awarded through the Madrid Protocol (including any US registrations) are also cancelled.

While it doesn’t happen very often, this situation—called a “central attack”—is catastrophic enough to want to avoid at all costs. And if this situation does occur, your only recourse is to file national applications in each of the countries in which you want trademark protection.

If you’re really interested in obtaining trademark protection only in the United States, or you want to reduce your business risk as much as possible, work with a trademark attorney to directly file your US application. By taking this approach, you can completely sidestep a potentially tragic legal situation.

Carefully consider your options

The United States has trademark application requirements that are widely considered some of the most stringent in the world. So if you’re considering using the Madrid Protocol to file applications in there, you may want to reconsider. The US routinely denies Madrid Protocol applications due to technical issues or lack of specificity, lengthening the process and increasing your costs. Additionally, filing an International Registration puts you in jeopardy of losing all of your protection in the event of a central attack. For the greatest peace of mind and chance of success on the first application, consider working with a US-based trademark attorney to file your US application.

By Josh Gerben, U.S. trademark attorney and principal of the Gerben Law Firm, PLLC