The International Trademark Registration
In order to apply for an International Trademark Registration under the Madrid Agreement, you must first have a valid registration or application for registration, and a presence, in one of the member countries. So that a U.S. business that has applied for or gained U.S. registration of its trademark applies for International Registration through the U.S. Patent and Trademark Office (USPTO), which becomes the "originating office." The role of the USPTO in the process is to certify that the applicant's U.S. application or registration exists and is valid, and to notify the International Bureau of any changes in its status. The validity of the International Registration and its force in each other country depends strictly on the registration or eventual registration in the originating country and its continued validity.
An International Registration is not automatically valid in all of the participating Madrid countries. Under the Madrid System for the International Registration of Marks administered by the World Intellectual Property Organization of the United Nations, you specify in your application only those countries in which you want to "extend protection" of your trademark. You pay the official fees for registration for each named country plus an administration fee to the "International Bureau," which makes sure your application is complete and in compliance with the rules, and then issues a registration that designates each country in which protection of your mark is to take effect. Each designated country then has 18 months to approve or refuse registration or protection in that country. When registration is approved by each country -- or not refused within 18 months -- the registration then becomes effective within that country. In many countries, the registration may still be open to third-party challenges to its validity for up to five years from its effective date. In most Madrid countries, the International Registration itself becomes effective in that country, subject to its renewal every ten years, and no separate national certificate is issued. Some Madrid countries, including the United States, issue certificates of registration the validity of which is dependent on the International Registration and its renewal, but which themselves must be maintained and renewed according to the rules of each particular issuing country. (Yes, it gets complicated, and for that reason you do best having the entire process looked after by a competent trademark professional.)
The savings realized from an International Trademark Registration derive from your not having to file separate applications, and pay for separate legal representation, in each of those countries in most cases. The only time you will need the advocacy of a local representative is when your registration is provisionally refused or opposed locally. Another benefit of the International Registration system is that you may apply again, at any time, to further "extend" protection of your trademarks to more of the participating countries and realize the same cost benefits.
As more countries join the Madrid System, International Trademark Registration will become more valuable. For now, 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
Because the United States participates in the Madrid System, non-U.S. businesses may apply for extension of trademark protection into the U.S. from an International Registration, and this has the same benefits in the U.S. for such applicants that U.S. applicants receive in other countries under the Madrid System. While there are cost benefits to using the Madrid system, as long as your application is not refused or opposed, there are conditions under which it will be more to your advantage to apply directly to the U.S. Patent and Trademark Office, and you should consult with a trademark professional in your country to help you decide which course to follow.
First, there are roughly three million registered trademarks in the United States. Having a search done at least of the U.S. registry, if not of the U.S. market, is a prudent first step just to be sure your application to the U.S. will not likely be refused or opposed. The reason for searching beyond the U.S. federal registry before making your branding decisions for the U.S. market is that each U.S. state has its own trademark registry, and state registrations can bar your entry into state markets.
The second consideration is whether your mark may be considered "descriptive" in the United States or may be refused for other reasons. (See "Marks That Cannot Be Registered.") The most common basis of refusal is descriptiveness. Most countries refuse registration of descriptive marks. Some countries, including the United States, allow descriptive marks to be registered after they have "acquired distinctiveness" by their use in that country's market, and the United States, going further, maintains a separate registry, the Supplemental Register, on which descriptive marks can be registered prior to their acquiring distinctiveness in the U.S. market, but there are restrictions to access to the Supplemental Register. In the first place, the Supplemental Register is not available for marks submitted through the Madrid System, even if your mark has been used in the U.S. and has become well known. In the second place, a mark must be in use in the U.S. to gain registration on the Supplemental Register, unless your application is based on a valid registration in your country. So, if there is a chance that your mark is or may be considered descriptive, you will do best to apply directly in the United States, rather than through the Madrid System, and if you don't yet have registration in your country, and there is any question about whether you will get your domestic registration, you will do best to wait until you have your domestic application approved or your registration in hand before applying in the U.S.
Finally, you need to consider whether or when you will actually use your mark in the U.S. market. The United States requires that marks registered in the United States be in use in the United States -- that is, be used on goods and services actually sold in the United States -- but will register marks that are registered in another country on the U.S. Principal or the Supplemental Registers without a declaration or showing of use. So your application through the Madrid System or directly in the U.S. relying on your domestic registration, if approved, will gain U.S. registration whether or not you are selling goods or providing services in the U.S., but you will be required to make a legal Declaration of Use in the U.S. before six-and-a-half years after the U.S. registration is granted in order to maintain the registration in effect. Mere renewal of your International Registration or domestic registration will not suffice. And registrations of marks that are not in use in the U.S. are subject to cancellation if attacked.