IP Tech Knowledgy

To file trademark applications outside of the United States, there are two main options, each with benefits and detriments. One process is to file through the U.S. Patent and Trademark Office (USPTO) by designating those other countries to where the USPTO should send applications, using the Madrid Protocol.  The other is to file through local counsel in each country.

Filing through the USPTO allows the applicant to reach 130 countries quickly and with less initial effort.  Basically, the applicant identifies the countries and pays the filing fee for all countries to the USPTO.  The USPTO then forwards applications to each country.  If the mark clears through a country without objection, the applicant does not need local counsel.  But if a mark is refused or challenged in a country, local counsel in that country is needed to try to overcome the issues.  The more countries an applicant wants to enter, the more filing through the USPTO seems beneficial.  
Filing through local counsel initially allows the applicant to have a native lawyer assess the registrability and search to see if there are blocking marks that would cause issues.  This could save time and expense down the road.  This option creates a more personal touch and has someone local looking after the application and helping with docketing and filing renewals. 

In both instances, if the US application was filed less than six months before the foreign filing, the priority in the foreign filing dates back to the date of the US original filing.  

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw. com