Yes, there is something called an
International Trademark Registration
recognized in fewer than half the countries of the world.

On November 2, 2003, the U.S. became party to the Madrid Agreement Concerning the International Registration of Marks. Under this Agreement, registration of trademarks may be obtained in any or all participating countries from a single application filed in the home country of the applicant. U.S. participation in the Madrid "Protocol" means that U.S. trademark owners who apply for, have applied for, or have obtained U.S. registration of their marks are able to "extend" protection of them into any of the participating Madrid countries -- currently numbering 74.

Where countries that participate in the Madrid Agreement are of interest, International Trademark Registration can greatly reduce for U.S. businesses the expense of registration outside the U.S. Presently absent from the list of Madrid countries are Canada, all Central and South American nations, and most African nations.

U.S. participation also means that non-U.S. trademark owners will have easier and less expensive access to U.S. registration. The International System is discussed later in this page.

With respect to countries that are not party to the Madrid Agreement, the general situation is as follows:

In General

Trademark registration is a national matter. That is, your U.S. registration carries no weight in South Korea and less in Libya. However, the government of Libya would be happy to take your money and consider your application for registration of your trademark there.

The cost of registration in each country, in terms of official fees, varies from less than a hundred dollars, U.S., to several thousand dollars. In addition, your U.S. attorney will be required to work through a domestic representative, usually an attorney, in each country of interest. Presently, only Canada has an arrangement with the United States under which an attorney of one country may practice before the Trademark Office of the other country. As a practical matter, however, even with regard to Canada, the differences in laws and procedures recommend domestic representation in each country.

In general terms, the idea of trademark registration and protection is the same throughout the world, and the progress toward a practical global marketplace is slowly bringing more commonality to the various rules and regulations. In specific terms, history, nationalism, and differing political ideas about how commerce should be conducted keep the details of process and procedure sometimes vastly different.

In addition, national laws governing what may and may not be registered and protected as a trademark differ. Some countries, for example, don't recognize trademark registration and protection of slogans, as the U.S. has done for many years. Also, many countries don't have registration and protection under trademark laws of what the U.S. calls trade dress (the shape of the Coke® bottle). Outside the United States, protection of the distinctive packaging and shape of goods may be governed under a separate concept usually referred to as Industrial Design.

That's the bad news. The good news is that the United States is party to several international conversations about trademarks, primarily in the Paris Convention for the Protection of Industrial Property, that includes almost all countries of the world and permits some basic mutual recognition of trademark rights among them. In practical terms, what that mutual recognition amounts to is the ability of an applicant for registration in one country to cut in line closer to the front in other countries. That is, the most universal reciprocal arrangement is that, if you file an application for trademark registration in the United States, then, when you file an application in any of most other countries of the world within six months of filing your U.S. application, your application in the other country will be treated as if it were filed on the date you filed the U.S. application. (And, being reciprocal, vice versa, meaning that sometimes a U.S. applicant will also find his application suddenly junior to a foreign applicant whose U.S. application was actually filed later.)

The other most universal practical benefit of the Paris Convention and other mutual understandings that the U.S. has with other nations is that, once registered in the U.S., your trademark does not usually have to be in actual use in another country to obtain registration there. It will have to be put into use eventually in that country, usually some years later, but not prior to registration. (And also vice versa.)

In general, too, the elements of the process are similar throughout the world: You apply for registration, paying the local filing fees. The local authority searches its own registry to be sure there is no conflict with already established local trademarks. Someone will examine your application and trademark to be sure they comply with local laws. Your trademark will be published so that others may object to its local registration. And then registration -- sometimes, however, involving additional registration issuance fees.

In Particular

There is no pat answer to the question, "How much will it cost to register my trademark throughout the world?" There are on the order of 200 sovereign nations in the world, depending on who is counting, and the cost of true "worldwide" registration is enormous. When thinking about registration outside of the United States, you need a plan. You need to think about the specific countries in which you operate, or intend to operate, or to which you export, or intend to export. You need to think about the order in which you may open those markets, about the value of each of those markets, and about the importance of protecting your branding investments in each those places.

Then you need to find out the rules, the costs, and the procedures in each country of interest. A competent U.S. trademark attorney will have relationships with representatives in other countries through which currently valid information can be gathered and evaluated with regard to your needs. Your U.S. attorney will also have established channels through which funds can be transferred to pay for fees and services.

Finally, you need to consider how regional treaties and unions can help get the protection you need and affect your costs, including International Trademark Registration. The most prominent of the regional registrations is the European Community Trade Mark registration. A Community Trade Mark registration resulting from one application, examination, and publication process in the European Community's Office for the Harmonisation of the Internal Market is valid in all member nations of the European Union -- currently 25 nations. Similarly, there is an African Union trademark registration valid in 16 West African countries.

The International Trademark Registration

In contrast, an International Trademark Registration under the Madrid Agreement is not universally valid in all in the participating Madrid countries. Under the Madrid System administered by the World Intellectual Property Organization of the United Nations you specify in your application only those countries in which you want to register and pay the official fees for registration for each named country. Each designated country then has 18 months to refuse registration in that country. When registration is approved -- or not refused within 18 months -- by each country, the registration then becomes effective within that country. In many countries, the registration will still be available for third-party challenges to its validity for up to five years from its effective date, and those those registrations will have to be renewed periodically according to terms of registration that range from 5 to 20 years from country to country. In some of those, use in the country will have to be demonstrated or attested to on renewal -- just as non-U.S. registrants must do in the U.S.

The savings realized from the International Trademark Registration derives from your not having to file separate applications, and pay for separate legal representation, in each of those countries in most cases. Another benefit is that you may apply again through the Madrid System, at any time, to "extend" your registration to more of the participating countries and realize the same cost benefits.

As more countries join the Madrid System, it will become more valuable. For the present, its value depends on the nations in which you want or need to register your trademarks balanced against other registration opportunities.

Only when you are armed with all the information relevant to your particular needs can you make effective decisions about where you can, where you should, and where you should not seek to register your trademarks internationally.

U.S. Registration for Non-U.S. Businesses

As a participant in the Madrid System, non-U.S. business may apply for trademark protection in the U.S. from and International Registration, and this has the same benefits in the U.S. for such applicants that U.S. applicants receive in other Madrid countries under the System. (See the discussion of International Registration, above.) One drawback of entering the U.S. trademark system from an International Registration is that a mark refused registration in the U.S. for descriptiveness cannot be placed on the Supplemental Register, and a new U.S. application will have to be filed in order to gain that privilege. It is then a good idea to consult with a competent U.S. intellectual property attorney to determine whether this limitation will effect you before you apply from an Iternational Registration.

The United States currently has reciprocal agreements with 179 nations. Under all of these agreements, if you have filed for trademark registration in your country of origin within six months prior to filing in the United States, the date of your filing in your home country will be recognized as your effective filing date in the U.S. You will have that priority date whether you file on the basis of your intent to use your mark in the U.S., or on the basis of your use of your mark in the U.S.

You will have to appoint a U.S. representative, usually a U.S. attorney or law firm, who is authorized under U.S. law to practice before the U.S. Trademark Office, and designate a Domestic Representative upon whom legal notices and papers may be service. The same person or firm can fill both functions. You can hire your U.S. representation directly or through your local trademark attorney.

Your U.S. application will be treated in the U.S. Trademark Office just like any other application -- except for your priority of filing date, if you qualify for it. Your mark will have to comply with the U.S. laws governing marks that may be registered and protected. Your application will have to conform with U.S. regulations governing Trademark Office procedures. Your application will be published and subject to third-party opposition. After registration, you will have to comply with U.S. requirements for maintaining your U.S. registration and rights, and for renewing your registration for each successive ten-year term.

If you apply for registration on the basis of use in the U.S., you will have to submit specimens showing how the mark is actually used in the U.S. on your goods or in connection with your services. U.S. law provides for registration only after a mark is actually in use in the U.S. in interstate or international commerce, and applications examined on the basis of an intent to use the mark here are only allowed for registration for a limited time until actual use occurs.

However, under most of its international agreements concerning trademarks, the United States will grant a U.S. registration to non-U.S. trademark owners who have a valid trademark registration in their countries of origin. This is somewhat of an advantage over a U.S. business filing originally in the U.S., in that it allows the non-U.S. registrant up to six years before actual use in the U.S. must be shown (in order to maintain the U.S. registration). Furthermore, where a non-U.S. applicant has filed on the basis of an application filed in the country of origin, it will be assumed that the non-U.S. registration will ultimately issue, and the U.S. application can be suspended until then. This avoids the limitations and expense of the post-examination Allowance period.