Key Differences Between National and International Trademark Registration in the USA

Brand owners in the United States often face a crucial decision when it comes to trademark protection: whether to file a national trademark application with the United States Patent and Trademark Office (USPTO) or opt for international trademark registration under the Madrid Protocol. While both options provide legal protection, they come with distinct requirements, benefits, and limitations. Here, we explore the key differences between national and international trademark registration for U.S. brand owners.

1. Eligibility for Trademark Registration

A national trademark application in the U.S. can be filed by any company or individual, whether domestic or foreign, provided they meet the USPTO requirements.

In contrast, to file an international trademark application under the Madrid Protocol, a company or individual must first have an existing U.S. trademark application or trademark registration. The international trademark application is then submitted through the USPTO to the World Intellectual Property Organization (WIPO) as the Office of Origin.

2. Timeframe for Trademark Registration

The timeframe for obtaining a trademark in the U.S. varies, typically taking between 8 to 14 months, depending on potential objections, opposition, or office actions. If there are no complications, trademark registration can be completed within this timeframe.

For international trademark applications, the process can take 12 to 18 months. The application undergoes an initial review by WIPO and is then sent to designated countries, where each national intellectual property (IP) office conducts its own trademark examination, which can extend the timeframe.

3. Single vs. Multi-Class Application

In the U.S., applicants can file a single trademark application covering multiple classes of goods and services, but the USPTO charges fees per class.

With international trademark registration under the Madrid Protocol, applicants can file a single application covering multiple classes and multiple countries simultaneously. However, each designated country will charge additional fees for class and processing.

4. Documents Required for Trademark Application

For a U.S. national trademark application, applicants need to provide a specimen of the mark (if filing based on actual use) and may need to submit a declaration of use.

For international trademark applications, the documentation requirements vary by country, but the initial application is based on the U.S. trademark filing and does not require additional specimens or declarations at the outset.

5. Jurisdiction of Trademark Opposition

National trademark registration in the U.S. is subject to opposition from third parties during the USPTO's publication period. The process is handled by the Trademark Trial and Appeal Board (TTAB).

International trademark applications face scrutiny not only from WIPO but also from each designated country's trademark office, where the application may face opposition based on local laws.

6. Cost of Trademark Registration

The cost of a U.S. trademark registration varies based on the number of classes and filing basis. The USPTO charges government fees, and additional legal fees may apply.

International trademark registration can be more cost-effective if seeking protection in multiple countries, as WIPO allows centralized filings. However, each designated country will impose its own fees, making international registration potentially more expensive in the long run.

7. Terms of Payment

In the U.S., fees are paid at the time of filing, with additional costs incurred during the trademark registration process, such as responding to office actions.

For WIPO applications, all fees must be paid upfront, and refunds are generally not available if the application is refused in a designated country.

8. Classification of Goods and Services

Both the USPTO and WIPO follow the NICE Classification system for goods and services. However, some countries may require more specific descriptions than those acceptable in the U.S.

9. Requirement of Trademark Agents

In the U.S., applicants can file directly with the USPTO but may benefit from hiring a trademark attorney.

For international trademark registration, while the U.S. applicant files through the USPTO, designated foreign countries may require a local agent to handle any objections or disputes.

10. Trademark Search Database

A U.S. trademark search through the USPTO database requires payment if done through professional services but can be conducted for free through the USPTO's online search system.

WIPO provides a free global trademark search database, but individual countries may have their own search fees.

11. Applicability of Laws

U.S. trademark registration is governed by the Lanham Act and the rules set by the USPTO.

International trademark applications must comply with the laws of each designated country, leading to potential differences in examination and enforcement.

12. Risk of Central Attack

A U.S. national trademark registration is independent, meaning an opposition or cancellation in one jurisdiction does not affect other trademark filings.

For international registrations under the Madrid Protocol, if the base U.S. trademark application or registration is canceled within five years, the entire international registration is jeopardized (a concept known as "central attack").

13. Time Frame for Responding to Rejections/Oppositions

In the U.S., applicants typically have six months to respond to office actions.

For international trademark applications, response timeframes vary by country, with some allowing only a few weeks to address objections.

14. Trademark Portfolio Management

The USPTO does not provide a centralized portfolio management system for registered trademarks.

WIPO, however, offers an international trademark portfolio management system, making it easier to track and renew trademarks across multiple countries.

Conclusion

Both national and international trademark registrations have advantages and disadvantages. For U.S. brand owners seeking trademark protection domestically, filing directly with the USPTO offers stronger control over the process. However, for those looking to expand globally, the Madrid Protocol provides a streamlined, cost-effective solution. Careful consideration of each option is essential, and consulting with a trademark attorney can help navigate the complexities of trademark law and ensure optimal protection for your brand.