USPTO to Hold Seminar on Using the Madrid Protocol

Alexandria, Virginia – On Wednesday, October 23, 2013, the U.S. Patent Office (“USPTO”) will hold a one-day seminar on using the Madrid Protocol for filing an international application and maintaining an international registration. 

The target audience is practitioners who are already familiar with and have used the Madrid Protocol.  The purpose of the seminar is to provide practical information on common issues that arise during the processing of the application, as well as maintaining and managing the resulting international registration.  Seminar highlights include: resources of the World Intellectual Property Organization; issues to consider when preparing to file and actually filing an international application; the USPTO review process for certification of the international application; International Bureau review of the international application; and issues related to changing and renewing the international registration.  A detailed agenda will be provided at a later date.

The event will be held in the Global Intellectual Property Academy at the USPTO campus in Alexandria, Virginia from 9 a.m. to 5 p.m. (with a lunch break).  To attend in person, please send your name to no later than close of business Friday, October 18, with the subject line “Madrid Protocol advanced training.”  The seminar will also be webcast.  Webcast instructions and an agenda will be posted on the USPTO website in advance of the event.  There is no need to register if you only plan to view the webcast.  If possible, the USPTO will attempt to make a version available for viewing at a later time.

Practice Tip: The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“the Madrid Protocol”) is one of two treaties comprising the Madrid System for international registration of trademarks.  The protocol is a filing treaty and not a substantive harmonization treaty.  It provides a cost-effective and efficient way for trademark holders – individuals and businesses – to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the application.  While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted.  Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it.  The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau.  The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members.

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