International trademarks

International trademarks

Before filing for an international trademark application, you will need to have a pending U.S. trademark application. Once you have your pending U.S. trademark application, you have several options for filing for international trademark protection. There are different reasons for choosing each option, and you should consult with a trademark attorney before proceeding.

• Within 6 months of filing date
• After 6 months from filing date, but before registration
• Filing after registration

Filing within 6 months of the filing date- If you file either an international trademark application using either the Paris Convention or Madrid Protocol within 6 months of your U.S. filing date, your international trademarks will have the same filing date as your U.S. application (this is often called a priority date.) This priority date will ensure that you have the earliest possible filing date abroad.

After 6 months from filing date, but before registration- You can still file trademark applications abroad after the 6 month filing deadline. This 6 month filing deadline is so that your foreign trademark application has the same filing date as your application in the United States. You can still file a Madrid Protocol application, which will reference your underlying U.S. trademark application. Your international trademark applications will have the filing date of your Madrid Protocol application. It is always good to file a trademark application in another country when your business expands to that country- either by providing services or selling products. The Madrid Protocol application will allow you add more countries later.

Filing after registration- Once you have received a U.S. trademark registration, you can file an application which relates back to your U.S. registered trademark. You will have to provide a copy of your U.S. registration. Review of this type of trademark application may proceed quicker than other applications, in light of the registration in the U.S.

For all international trademark applications, you will first need a valid pending U.S. trademark application. We advise using the services of a trademark attorney to prepare this application. If you have any errors in your U.S. application, you can encounter further problems when filing international trademark applications.