November 19, 2018
Originally posted 2018-11-19 11:21:30
By Ann Marie Sallusti | amdlawgroup.com
Unlike most countries, the United States follows the first to use rule when protecting trademark rights. This rule states that the trademark rights belong to the first party who uses the trademark of a certain product or service in commerce. In the United States, federal registration of a mark is not mandatory but can save time, money and prevent future infringement problems. Most countries enforce the first to file rule, which protects the trademark rights of the first party to file an application and receive registration for a certain product/service.
After a party files an application in the United States and receives registration for the trademark of a product or service, that registration is only valid in the United States, unless the party files for an international application in accordance with the Madrid Protocol or files specifically in other countries. A party should file in each country they wish to use the trademark for their products or services because trademarks are territorial and only valid in the places where a party files. Also, a party should register their marks in all countries relating to developing, marketing, and manufacturing their products or services.
The Madrid Protocol is an international trademark filing treaty created by the World Intellectual Property Organization (WIPO), which protects trademarks of products and services described in an international application submitted by a party. The United States along with ninety-one other countries are members of the Madrid Protocol. The international application under the Madrid Protocol is a single application, which will protect a party’s mark in any or all of the countries that are members to the Madrid Protocol. If a party has already federally filed in the United States and has registration of their mark for their product or service, they can use their basic application filed with the USPTO to create their international application.
With all international applications, the USPTO has to certify the application and send it to the WIPO. Then, the WIPO will determine whether to issue an international registration. If the WIPO issues an international registration, the WIPO will send the international registration to each country the party named in the international application. Then each country uses their discretion to determine whether, the party is entitled to an extension protection under that country’s trademark law. If a country decides the mark is in accordance with their trademark law and grants the party an extension protection, the international registration will be extended to that country.
Even though the United States utilizes the “first to use” rule, most other countries do not and require actual filing of a trademark registration. Therefore, a party will mostly likely have to individually file in each country it wishes to seek protection. The party can do this by filing an international application in accordance with the Madrid Protocol or file individually in any country.
1. PowerPoint created by the Office of External Affairs at the United States Patent and Trademark Office on filing basic and international applications for trademarks
Trademarks – United States Patent and Trademark Office
2. PowerPoint created by the United States Patent and Trademark Office on protecting trademarks
3. Madrid Protocol information