U.S. trademark law expands.

In the past, companies wishing to register their trademarks in other countries to protect them against piracy and assure their availability for the company's use, generally had to apply directly to the national trademark office in each country. This usually meant having U.S. trademark counsel employ local agents or attorneys in each country to prepare or translate materials into the local language and satisfy local filing requirements. This, in turn, meant that the process was time consuming and expensive, so that U.S. companies often found initial filing costs running between $1,000 and $3,000, with more costs to follow over the next one to five years as each country examined its local application under its own local process. Foreign companies faced comparable costs in registering their marks in the U.S., and this often discouraged smaller foreign companies from filing or protecting their marks in the U.S.

Under the newly established Madrid Protocol, however, U.S. companies that have an existing federal trademark application or registration may file an International Application with the USPTO requesting an International Registration that can then be extended to some or all of the other member countries. By filing with the USPTO in English, U.S. companies can avoid translation and foreign agent fees at the outset, cutting initial application fees by more than half in many cases. And since the treaty imposes strict deadlines on the processing of applications, and a uniform registration and renewal period, applications may be processed faster and maintained and renewed at less expense in many instances. Thus, the Madrid Protocol may help reduce overall costs for U. S. businesses seeking protection abroad; but the same is true for foreign businesses wishing to apply here in the U.S., so local businesses may find international competition to secure brands increasing.

A New World of Trademark Protection

While the Madrid Protocol is not a perfect solution, and many countries have yet to join, a new world of trademark protection is headed our way. The historic recall election and the changes in California are undoubtedly foremost on the minds of most Californians at present. But for California businesses, now is a good time to talk with their trademark counsel about this important change in federal law to make sure that they consider Madrid in developing and protecting names, logos, slogans and trademarks from here forward.

David Hayes is a Partner in Dorsey's Southern California office. Frank Hiscox is a Partner in Dorsey's Palo Alto office.