Trademark rights are territorial. A US federal registration protects your brand in the United States and nowhere else, which comes as an unwelcome surprise to businesses that discover a distributor or competitor has registered their name abroad.
There is no such thing as a single worldwide trademark. What exists is a system for filing efficiently across many countries at once, and it suits some situations better than others.
How the Madrid Protocol Works
The Madrid Protocol is an international filing system administered by WIPO. Rather than filing separately in each country, you file one international application through your home trademark office and designate the member countries where you want protection.
For US applicants, this means filing through the USPTO based on an existing US application or registration — your basic mark. WIPO processes the international registration and forwards it to each designated country, where local examiners apply their own national law.
The key point often missed: this does not produce one international trademark. It produces a bundle of national rights obtained through a single filing procedure. Each designated country can still refuse protection under its own rules.
What It Costs
Madrid filing involves several fee layers, and budgeting country by country is more accurate than assuming a flat rate.
- A USPTO certification fee for processing the international application
- A WIPO basic fee, which varies depending on whether the mark is in colour
- Individual or complementary fees for each designated country, which differ substantially between territories
- Local attorney costs in any country that issues a refusal requiring a response
- Renewal fees every ten years, payable centrally through WIPO
The Dependency Period
For the first five years, the international registration depends on your home application or registration. If the basic US mark is abandoned, cancelled or restricted during that period, the international registration is affected correspondingly — a mechanism known as central attack.
There is a remedy: you may transform the affected designations into direct national applications, retaining the original date, though this involves national fees and procedures. Still, the dependency is a genuine reason to make sure the US application is solid before building an international portfolio on top of it.
When to File Directly Instead
Madrid is efficient when you want protection in several member countries with the same mark and the same goods. It is less suitable in a few situations worth recognising.
If a target country is not a Madrid member, direct national filing is the only route. If your goods and services description needs to differ by country — and some jurisdictions are considerably more particular about wording than the USPTO — direct filing gives flexibility that Madrid's single description does not.
If your US basic mark is narrow or vulnerable, building on it may be unwise. And where a single important market is the whole objective, a direct national filing is often simpler than routing through the international system.
Prioritising Markets
Protecting everywhere is not a realistic budget for most businesses, so sequence matters. Start with markets where you currently sell or have concrete expansion plans within a few years.
Add countries where your products are manufactured, since that is where counterfeit production often originates, and jurisdictions known for opportunistic registration of foreign brands. Consider also the major regional systems — a single European Union filing covers all member states, which is frequently better value than designating them individually.
One timing note worth acting on: many countries operate first-to-file systems where rights go to whoever registers first, regardless of who used the mark first. In those jurisdictions, waiting until you enter the market can mean finding your own brand already registered by someone else.
The Foreign Applicant Requirement in the US
Working in the other direction, businesses domiciled outside the United States seeking US trademark protection must be represented by a US-licensed attorney. This has been the rule since August 2019 and it applies to applications, Office Action responses, maintenance filings and TTAB proceedings alike.
The requirement is based on domicile — an individual's permanent residence or an entity's principal place of business. Filings made without qualified US counsel where it is required will draw an Office Action requiring appointment of an attorney, and failure to comply leads to abandonment. A trademark consultation is a useful first step in either direction, at home or abroad.
