Registering your clients' or company's trademarks and service marks in foreign countries with a single application.

• Author: Jenkins, Matthew R.

Companies engaged in or developing an internet or international business should consider filing under the Madrid Protocol to protect their marks in foreign countries.

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Trademarks and service marks are used to identify and distinguish a company's goods and services, respectively, from those of others. Historically, only large U.S. companies that could afford to market and distribute their goods and services outside the U.S. bothered with registering their marks abroad. The Coca Cola Company, for example, which offers its beverage products throughout the world, owns what many consider to be the world's most recognizable trademark: Coca-Cola[R]. It has registered its famous mark in many foreign countries.

Today, the Internet and widespread availability of public and private distribution channels have torn down many of the barriers to entering international commerce. Now, even the smallest, one-person company can create a Web site and immediately begin marketing and distributing its goods and services around the world.

Consequently, it is more important than ever for companies engaged in either Internet or international commerce to consider protecting their marks on a worldwide basis, especially in those foreign countries where they are deriving revenue from the sale of goods and services.

Traditional Protection for Marks

Registering a trademark or service mark in any country has several significant benefits. For example, a registration puts subsequent users on notice of the registrant's ownership of the mark and prevents subsequent users from registering the same or a confusingly similar mark for the same or similar goods and services.

Another significant benefit of the registration of a mark is that it is a valuable intangible asset that can be extremely important when a company is being sold to another company. For example, several questions that should be asked when performing due diligence investigation during a corporate transaction include: What are the acquired company's marks? Where are they used? Are they being used properly? What registrations exist in the U.S. and abroad for protecting those marks? Obviously, marks that are registered in the U.S. and in the foreign countries in which the acquired company is doing business are stronger than marks that are not registered.

Traditionally, a company would protect its valuable marks by registering them first in the U.S. Next, it would attempt to register its marks outside the...