Filing Options
1 min read
National Applications
Filed in Countries Outside the USA
Filed in Countries Outside the USA
A national application is a standard trademark application filed through local legal counsel that we retain in a particular foreign country. Typically, local counsel will perform a preliminary trademark search prior to filing. Local counsel can also provide unique insights into whether a proposed mark may have a negative connotation in a local language, and can recommend how to best describe goods/services in an application for that country.
WIPO/Madrid Protocol Extensions of Protection
Many countries are members of the Madrid Protocol or Treaty. Using a system available from the World Intellectual Property Organization (WIPO), individuals and companies can file trademark applications in participating countries using a streamlined and centralized filing system. When filing applications in many different countries, this system can have a significant cost savings over filing national applications. But there are a number of things to consider before choosing to file through WIPO.
- Typically lower cost than national applications
- Foreign filings are linked to a national filing in your home country
- Dependency period for 5 years after registration: any limitation or cancellation or your home application or registration flows to each foreign country application
- If home application/registration refused or cancelled, limited time to convert to foreign filings to national applications to avoid abandonment
- If preliminary refusal issues for any reason, will likely need to retain local counsel in jurisdiction
- No benefit of advice of foreign counsel regarding inherent registerability of mark or potential third-party conflicts
