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Changes in Trademark Law and How to File

At the time the Madrid Protocol went into effect with the United States joining the International Bureau in 2003, some changes to the trademark law had to be made by amending legislation. The United States Patent and Trademark Office (USPTO) had to add new rules to the Trademark Rules of Practice for documents relating to the Madrid Protocol. The amended legislation is called the, “Madrid Protocol Implementation Act (MPIA). “

To get trademark protection beyond the United States the applicant needs to file with the USPTO for a United States trademark. Then, usually within six months of filing the US application, the applicant wishing to offer their goods or services in another country that is a member of the International Bureau can file an international application directly with the USPTO. Filing within the six month time period allows the applicant to maintain the priority date of the first filed application in other treaty countries. After the appropriate fees are paid the USPTO will then forward the application onto the International Bureau. The International Bureau will then review the application to make sure it meets their filing requirements. If there is a problem with the application, they will send the USPTO and applicant an Irregularity Notice which is basically the same as a Trademark Office Action. If there is no problem with the application then the International Bureau will register the mark, publish it in the WIPO Gazette of International Marks (WIPO Gazette), and send a certificate to the international applicant, now called the "holder of the international registration.”

The timeline from filing an application for an international trademark and getting the registration certificate is not much different than filing for a US trademark. After filing with the USPTO they forward the application to the International Bureau where it will take approximately 2 to 4 months to get the application reviewed by the International Bureau. After it is approved there is about a month for publication for opposition and if the mark is unopposed then about 2 months later the registration certificate will arrive in the mail. If the underlying application is lost or abandoned it will result in loss of the marks.

If you have any questions about registering your trademark internationally please contact trademark attorney George Leone to set up an appointment.

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Citadel Patent Law - Tacoma Intellectual Property Attorney
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Phone: (253) 256-5775 | Local Phone: (253) 682-0246.