Protecting Trademarks Abroad: Madrid Protocol vs. National Filing Directly in Foreign Jurisdiction

Recording of a 90-minute CLE webinar with Q&A

Conducted on Tuesday, February 28, 2017
Recorded event now available

This CLE webinar will provide guidance to counsel for trademark owners regarding trademark registration strategy outside the U.S. The panel will take an in-depth look at the advantages and disadvantages of using the Madrid Protocol, and filing national application through local counsel in the foreign jurisdiction. The panel will examine the factors that U.S. trademark applicants should consider when determining where to file and offer guidance regarding the mechanics of making such filings.


To protect a trademark outside the U.S., registration may be necessary or advisable. The question often facing trademark owners is where and how to file. Trademark owners doing business outside the U.S. should consider differences in how other countries govern and administer IP rights.

The Madrid Protocol provides a mechanism by which trademark applicants can seek protection in all Madrid Protocol and Agreement countries (almost 100 contracting parties). However, while there are some benefits, such as cost savings and multi-class registrations in countries which only allow single class applications, counsel must also be aware of the disadvantages and risks.

Risks include limitations on the identification of goods and a five-year dependency period (period of uncertainty), which may make filing directly in individual jurisdictions the better option.

After identifying each country in play, applicants must weigh advantages and disadvantages of filing under the Madrid Protocol as opposed to filing directly in foreign jurisdictions.

Listen as our authoritative panel examines the pros and cons of the Madrid Protocol vs. filing directly in the foreign jurisdiction(s). The panel will examine the factors that U.S. trademark applicants must consider when determining where to file and will offer guidance for making the determination of how to file.


  1. Pros and cons of filing under Madrid Protocol
    1. Filings
    2. Renewals
    3. Assignments
    4. Multi-class registrations
    5. Dependency period
  2. Pros and cons of filing directly in individual countries
    1. Scope of identification of goods/services
    2. Amendments
    3. Translations
    4. Renewals
    5. Replacements
    6. Cost of local counsel
  3. Considerations for determining whether to file under the Madrid Protocol or directly in the foreign jurisdiction(s)
  4. Guidance for making the filing determination


The panel will review these and other key issues:

  • What factors should be considered when determining where to register a mark outside the U.S.?
  • What are the advantages and disadvantages of filing under the Madrid Protocol?
  • What are the pros and cons of filing directly in foreign jurisdictions?


Olivia Maria Baratta, Partner
Kilpatrick Townsend & Stockton, Atlanta

Ms. Baratta concentrates her practice in the areas of international and domestic brand strategy, portfolio management, multi-jurisdictional dispute management, enforcement, social media, and domain name disputes. She serves clients in the communications, accounting, aluminum, pharmaceutical, medical device, automotive, and alcoholic beverage industries.

Sheila Fox Morrison, Partner
Davis Wright Tremaine, Portland, Ore.

Ms. Morrison provides trademark and brand protection services with significant industry intelligence in the food and beverage, restaurant, healthcare, entertainment, and technology industries. Her practice provides efficient counsel to support the domestic and foreign trademark maintenance, clearance, registration, strategic brand protection and enforcement, and licensing needs of her clients.


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All of the speakers had a wide range of knowledge.

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General Mills

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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



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