International and national trademark registration: understanding the differences

The decision of whether to register your trademark just within the state or internationally depends on the scope of your business and the future plans of expansion. If you are sure that you will be staying local, you may want to choose to file for a trademark registration with your state. If you want to stay within the bounds of the USA, knowing that you won’t be going international, registering with the USPTO will provide you with federal trademark protection. If you are going international, the process of registration is simplified by the Madrid Protocol which allows you to apply for trademark registration in each of the 131 member countries of the Madrid System.

To file for a trademark with the state, you will need to contact the trademark office of the state in which you want your trademark to be registered. The processing of your application will be done by the state’s Trademark Office and will protect your trademark within the bounds of the state. For more information on how to register your trademark on a state level, check out USPTO’s page with state trademark information links.

The application for trademark registration with the USPTO, for which we have a full guide here, will register your brand’s identifying mark within the US, across all states. It will also serve as the basis for filing for your international trademark registration if you choose to do so.

To file for an international trademark registration, make sure the USPTO can accept your application. Read the requirements on the outbound applicants page to understand what you need. You'll need an existing U.S. trademark registration or a pending U.S. trademark application with its registration or serial number. This is called your "basic" registration or application.

If you're using a pending U.S. trademark application for your international application, it's best to wait until you get your first USPTO office action. This will tell you if there are any reasons why your trademark can't be registered in the U.S., which could affect your international registration. You can use more than one U.S. application or registration as the basis for a single international application. Just make sure that all basic applications and registrations have the same owner information, trademark, description of the trademark, color claim (if the trademark is in color), and priority filing date.

You can claim a priority filing date if you file your international application within six months of your basic trademark application. Your international application will have the same filing date as your basic application at the USPTO if you send it to the International Bureau within two months of filing.

To file your international application, you need to use the Trademark Electronic Application System International (TEASi). When filling out the TEASi form, make sure all your information matches exactly what's in our Trademark Status and Document Retrieval (TSDR) system. Even small differences or typos can lead to your international application being rejected. The simplest way to ensure accuracy is to select the "prepopulated" form option in TEASi. If you don't change any prepopulated text, we'll automatically certify your application. Making changes will prompt a manual review.

You can't use the prepopulated form if:

  • You're using more than one basic application or registration.
  • Your basic application isn't fully loaded into USPTO systems yet (this can take up to 10 days).
  • You recently filed a new assignment that hasn't been updated.

If you can't use the prepopulated form, you'll need to fill out the free-text version of the international application form. Only use the information from TSDR for your basic application or registration. Don't rely on trademark search data as it's formatted differently. In your international application, you must choose at least one country to extend protection. You can add more countries later, but only after your international registration is issued. The International Bureau requires email addresses for all applicants and representatives. If these are missing from your application, it will be delayed until they're included.

When filing your international application, you'll need to cover two fees: certification fee — this fee is calculated in U.S. dollars and must be paid to the USPTO right away upon filing. Please note that this fee is non-refundable, and the international fee which is calculated in Swiss francs. This fee can be paid directly to the International Bureau after your application has been certified and sent to them. Alternatively, you can pay it through the USPTO in U.S. dollars at the time of filing.

Once you have paid the fees, the USPTO checks if the international application form matches the basic application/registration form. If it does, the form will be sent to the International Bureau for review. If it does not, you will receive a denial of certification and a refund of the international fees.

Once you've submitted your application, the International Bureau carefully reviews it to ensure all necessary information is provided. If they spot any issues, they'll send you a notice of irregularity, prompting you to address and correct these concerns before proceeding with your international registration.

After you've rectified any issues, the International Bureau will grant you an international trademark registration and publish it in the WIPO Gazette of International Marks. They'll then forward your requests for an extension of protection to all the individual Madrid members you designated in your application.

Next, each Madrid member country examines your requests for extension of protection based on their respective trademark laws. You can find detailed information about each country's regulations on their WIPO Madrid member profiles page. Keep in mind that many Madrid member trademark offices require you to be represented by a local attorney licensed to practice law within their jurisdictions. Please note that the USPTO cannot assist you with any Madrid-related matters involving foreign trademark offices.

Still have questions? Contact us! We are a team of trademark attorneys who will help you pave your way through the trademark registration process and answer all your questions. From registering your brand to defending it against infringement, our team ensures your intellectual property is in safe hands. Let us help you navigate the complex world of trademarks, so you can focus on what you do best – growing your business. Contact us today for peace of mind and legal protection for your brand! Or choose one of our packages that guarantees results for a guaranteed budget with a full refund if the trademark we deemed registrable gets rejected!

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Paul Davidescu