4 ways US In-House Counsel can improve their international trademark registration process

Nadaline Webster,

As every student of law quickly learns, there is a vast gulf of difference between the theory of law and its application in practice. The Madrid System of filing for international trademark registrations is a prime example. In theory, the Madrid System administered by the World Intellectual Property Office (WIPO) in Geneva offers a simplified and lower cost solution to managing international trademark registrations. There can be little doubt that compared to the previous system which often involved hiring local counsel in every country, many improvements have been achieved with undoubtedly, more to come. However, ‘simplified’ remains a relative term and complications still abound for the unwary!

The pressure to ‘do more with less’ has met with an increasing trend for companies to bring more of their trademark work in house. This pressure also applies to hiring local counsel and reducing searching costs whilst still requiring ever more robust processes that adequately protect the company and support its goals. From an international trademark viewpoint, this is a big ask. So what can you do to assess and improve?


1 Understand the basic processes involved clearly across the countries in which you do business:

Unlike the EU, which offers a truly unitary system in force across 28 regions simultaneously, applications under the Madrid System can be thought of as a collection of national registrations with a single application point. While you will apply through WIPO, each application to each region will be subject to the practices of the IPO of that region including goods and services descriptions, differing ‘publication for opposition’ timetables and use requirements. Identifying the key differences between each of the regions desirable to your company and the US system is critical.

While you may, in theory, be able to do away with the need for local counsel in various regions by using the Madrid System, it does not always follow that you should or that it is beneficial to your company in the long term to do so. Taking some time to attend some expert webinars or perhaps consulting with local counsel can do a lot to help you assess your risk level in each region and set your comfort zone.


2 Understand the nature of your own trademark portfolio:

Not all trademarks are the same and across regions and industries, the type of trademark will differ dramatically. This will impact your process decisions significantly. For example, in cases where the trademarks you wish to protect internationally are:

  • Leaning towards the descriptive end of the scale;
  • Are subject to a selection of disclaimers;
  • Are very particular or limited in terms of goods and services;
  • Have challenges in terms of use requirements

Then continuing to use the services of local counsel on a region by region basis may still be the better option.


3 Become an expert on international requirements for goods and services descriptions across regions of interest:

Issues with goods and services descriptions can be considered far and away the biggest factor in issues with international trademark registrations. While virtually every region has a requirement for ‘clear and precise’ descriptions, how that is defined and used in practice varies wildly. Mary Shapiro writing for the INTA Bulletin gives a fantastic example of the potential challenges:

“For example, an IR encompassing key chains under Class 6 may be accepted by WIPO, but when the USPTO examines a request for extension of protection for those goods it will likely require that the applicant specify the material of which the goods are made—that is, are the key chains made of metal (Class 6), precious metal (Class 14), imitation leather or leather (Class 18) and/or plastic or other non­metal, non­leather materials (Class 20). Thus, the USPTO could specify only key chains made from metal (though not precious metal), under Class 6.”

While the example above illustrates a challenge for those seeking protection in the US, it works the other way also. In the above example, a US registration in classes 6, 14 and 18 may experience challenges in seeking protection under all 3 classes in other regions. Your basic application must match your international application and cannot be altered. Advance expertise or advice at the stage of formulating the US application for both the USPTO system and that imposed in regions of interest can go a very long way to mitigate expensive challenges when later seeking to extend the scope of your protection.


4 Start thinking about international registrations earlier in the process: 

Traditionally, companies worried about their domestic region first and then began considering the international implications at a later time. A number of factors have contributed to this. Not least of which has been legacy search vendors with per result/region/class costs. It is a big expense to undertake if you are not yet certain that international registrations will be required. Newer legal technology developments offering unlimited and fixed price solutions  have transformed the thinking in this regard. But there are other reasons too:

  • Increasing globalisation means that the need for companies to expand their business model to other regions is growing in many industries;
  • Strategic international thinking at the time of your domestic filing and even in the development of your new brand can do much to mitigate against expensive problems later - such as discovering that an entirely different brand will be required in different regions or that there are insurmountable issues with the goods and services in your existing registration
  • Most important to realise is this - even if you don’t intend to extend the scope of your protection outside the US, your domestic mark can still be impacted or even cancelled by a prior similar mark from another region seeking to extend their scope of protection to the US through WIPO where they can claim priority. In the future, as the number of such incidents rise, a basic clearance across multiple regions will become a necessity to ensure protection even at home.


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