[SERVICE]International trademarks
Trademark rights stop at the border. We protect your brand abroad through the Madrid Protocol, one application covering up to 133 countries, or by filing country by country where that fits better.
Your attorneys
Andrew RapackeManaging Partner · Registered Patent AttorneyFormer Naval Engineering Officer. M.S. in electrical and electronics engineering.
Casey GoldenbergAttorney · Trademarks and Patent ProsecutionTrademarks and patent prosecution, from a scientific background.
Phillip HortonAssociate Attorney · Trademarks and IP LitigationTrademark clearance, prosecution and TTAB matters, plus IP litigation.[01]Who it's for
Most US companies think about foreign trademarks too late, after a distributor, a manufacturer or a squatter has already filed their name abroad. In most of the world, the first to file wins.
Launching in Europe, the UK, Canada, Asia or Latin America, online or through distributors.
Production in China or elsewhere, where a factory or partner could register your brand first.
Brand protection programs on marketplaces often rely on a registration in the market you sell in.
Filing before someone else registers your name abroad and asks you to buy it back.
[02]What Madrid covers
The Madrid System, run by the World Intellectual Property Organization (WIPO), has 117 members covering 133 countries. One international application, based on your US filing, reaches any of them you choose.
File abroad within six months of your US filing and you can claim the US date as your priority date in other Paris Convention countries, including through Madrid.
[03]How it works
A Madrid filing starts from your US application or registration, the basic mark, and runs through WIPO to each country you designate.
The USPTO's own guidance is clear that Madrid is optional. You can always file directly in individual countries, and sometimes that is the better choice. Protecting the product itself abroad works differently, through PCT patents.
[04]Choosing a route
Madrid is usually simpler, and often cheaper, when you want several member countries. Direct national filings are usually better when the US mark is still vulnerable, the country is not a member, or the goods need wording a local office will accept.
| Madrid Protocol | Direct national filing | |
|---|---|---|
| How you file | One international application through WIPO | A separate application in each country, usually through local counsel |
| Countries | Any of the 133 countries in the system | Any country, including those outside Madrid |
| Tie to your US mark | Depends on it for 5 years | Independent from day one |
| Goods and services | Limited to your US filing's scope | Written for each country's rules |
| Fees | One WIPO payment in Swiss francs, plus each country's fee | Each office's fee, plus local counsel in each country |
| Fits when | Several member countries, a solid US mark, central management | Non-member countries, a US mark at risk, or one key market |
One EU trade mark covers all 27 EU member states, through a Madrid designation or a direct filing with the EU Intellectual Property Office. Since January 1, 2021, it no longer covers the United Kingdom. The UK needs its own designation or a filing with the UK Intellectual Property Office, where registration costs at least £205 and protects the UK and the Isle of Man.
In China, the first to file generally owns the mark, whoever used it first. The US Commerce Department warns that this lets bad-faith applicants register a foreign brand and then hold it hostage. If you manufacture or sell in China, file early, in Chinese characters as well as English where it makes sense. A Chinese registration does not cover Hong Kong or Macao, which need their own filings.
Taiwan, Hong Kong, Argentina, South Africa and Peru are among the markets Madrid does not reach. Each needs a national application, filed through local counsel.
[05]How we file
We start with where your brand will be sold, made and copied over the next few years, then choose the route country by country. We handle the international application from start to finish, and coordinate with trusted local counsel abroad when a country's office raises a refusal.
It all starts from a strong US mark. If yours is not filed yet, start with trademark registration. For a dispute abroad, see trademark litigation.
[06]The main risk
For five years from the international registration date, your Madrid registration depends on your US basic mark. If the US application is refused, or the US registration is cancelled, in that period, protection falls in every designated country at once.
A competitor can use that dependency on purpose, by attacking the US mark to knock out the whole international registration. That is called central attack.
[07]Costs
It depends on the countries and the number of classes. A Madrid filing is one payment to WIPO made up of several fees, and our fee is quoted for the countries you choose.
| Fee | Amount | Paid to |
|---|---|---|
| WIPO basic fee | CHF 653, or CHF 903 if the mark is in color | WIPO |
| Country fees | Set by each designated country, often per class | WIPO, for each country |
| Supplementary and complementary fees | CHF 100 each, for some countries and for classes beyond three | WIPO |
| USPTO certification | $100 per class, or $150 per class if based on more than one US filing | WIPO, for the USPTO |
| Answering a refusal | Local counsel fees in that country, if an office objects | Local counsel |
WIPO's Madrid fee calculator shows the official fees for any set of countries. More on international trademarking and US trademark filing costs.
[08]Fees
International filings are priced by the countries and classes you choose. We quote our fee, and list the official fees, before any work begins.
01Start here
Free
No obligation
Before you launch abroad
Free, no obligation02Then
Quoted
By country
Before you file
Not covered by the guarantee03Then
Quoted
By country and class
Within 6 months of your US filing, ideally
Not covered by the guaranteeInternational filings are quoted by country and are not covered by The RLG Guarantee. WIPO, USPTO and national office fees are separate. How The RLG Guarantee works
[09]The process
What happens at each step and who does the work. Timing shown is typical, never a promised date.
International trademarkUS mark to protection abroad
[10]Questions
Planning to sell or manufacture abroad? Your first call is free and comes with a straight answer on where to file first.
Book A Free Strategy CallNo. Trademark rights are national or regional. The Madrid Protocol lets you apply for protection in up to 133 countries with one application, but each country still decides whether to protect the mark.
Most US brands file through the Madrid Protocol, an international application based on their US application or registration, designating the countries they want. The alternative is to file directly with each country's trademark office, which is necessary for countries outside the Madrid System.
The Madrid System has 117 members covering 133 countries, including the EU, the UK, China, Japan, India, Canada, Mexico, Brazil and Australia. Taiwan, Hong Kong, Argentina, South Africa and Peru are among the markets it does not cover.
It depends on the countries and classes. A Madrid filing has a WIPO basic fee of CHF 653, or CHF 903 for a color mark, plus a fee for each designated country and a USPTO certification fee of $100 per class. Our fee is quoted by country before any work begins.
Designated countries have 12 months, or 18 in countries that have declared the longer period, to refuse protection. Where there is no refusal, protection follows. Refusals add time, and are answered through local counsel.
You need a US application or registration for the same mark, owned by you. The international application can be filed while the US application is still pending, and claim its filing date if filed within six months.
No, not since January 1, 2021. The UK needs its own registration, through a separate Madrid designation or a filing with the UK Intellectual Property Office.
If you manufacture, source or sell there, usually yes, and early. China follows a first-to-file system, so someone else can register your brand before you do. A Chinese registration does not cover Hong Kong or Macao.
For five years from the international registration date, it depends on the US basic mark. If the US mark is refused or cancelled in that time, the international registration is cancelled too, but you can transform it into national applications within three months and keep the original date.
Yes. A subsequent designation extends an existing international registration to more Madrid countries, for that country's fee, without starting over.
Trademarks protect the name and logo. The invention itself is protected abroad with patents, usually starting with a PCT application within 12 months of your first US patent filing.
[11]Learning Center
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[12]Client reviews
4.7 across 614 public reviews on Google, Trustpilot and Avvo.
#1Top reviewed IP law firm*
Read client reviews“Extremely impressed with their fixed fee and timely approach.”
“They filed my trademark within a day.”
“Answered every question I had with a phone call directly.”
Reviews reflect individual client experiences. Quotes are excerpts. Prior results do not guarantee a similar outcome. *#1 top reviewed means the most public client reviews on Google, Trustpilot and Avvo of any US patent or trademark firm.
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