International Trademark Registration: Advantages & Disadvantages of International Registration (IR) Through the Madrid Protocol


Live Broadcast on September 21, 2017

Trademarks are often among a company’s most valuable intellectual property, essential to its branding, business development, and financial valuation. Many companies seek protection through U.S. trademark registration. While U.S. trademark registration, alone, may be sufficient for some marks, it is inadequate for those seeking international mark protection. Many trademark owners erroneously believe that U.S. Trademark registration provides global mark protection. Global mark protection can be achieved using the Madrid Protocol and individual country-by-country trademark registrations.

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, the Madrid Protocol does not cover all international jurisdictions and it contains certain other provisions that may weigh in favor of the more onerous country-by-country trademark registration option.

This CLE webinar will provide a comprehensive overview of (1) international trademark registration under the Madrid Protocol; (2) advantages and disadvantages of the Madrid Protocol; and (3) practical considerations in deciding whether to use the Madrid Protocol; and (4) alternatives to obtain international trademark protections.

This course is co-sponsored by Wolters Kluwer.

Key topics to be discussed:

•   Overview of Madrid Protocol
•   Advantages and Disadvantages of Madrid Protocol
•   Considerations for U.S. Trademark Owners
•   Alternatives to Madrid Protocol

Date / Time: September 21, 2017

•  3:30 pm – 5:30 pm Eastern
•  2:30 pm – 4:30 pm Central
•  1:30 pm – 3:30 pm Mountain
•  12:30 pm – 2:30 pm Pacific

Choose a format:

•  Live Video Broadcast/Re-Broadcast: Watch Program “live” in real-time, must sign-in and watch program on date and time set above. May ask questions during presentation via chat box. Qualifies for “live” CLE credit.
•  On-Demand Video: Access CLE 24/7 via on-demand library and watch program anytime. Qualifies for self-study CLE credit. On-demand versions are made available 7 business days after the original recording date and are view-able for up to one year.


Kathleen C. Chavez, Esq. is a founding partner of Foote, Mielke, Chavez & O’Neil, LLC.

Ms. Chavez earned her Juris Doctor degree in 1998 from Northwestern University Pritzker School of Law and a Bachelor of Science degree in Finance from Northern Illinois University in 1995. She was admitted to the Illinois bar in 1998 and is admitted in the United States District Court for the Northern District of Illinois, United States District Court for the Central District of Illinois, the United States District Court for the Southern District of Illinois, the Seventh Circuit Court of Appeals, the Federal Trial Bar, Federal Court of Claims and has been admitted pro hac vice in cases nationwide.

Ms. Chavez is an accomplished trial attorney who has extensive complex civil litigation experience (including class, multi-plaintiff, mass tort and individual), including multi-district litigation (“MDL”), federal and state civil litigation, administrative proceedings and arbitration. She frequently serves in leadership roles, on committees and as a team member in some of the most challenging and transformative complex civil litigation nationwide. Her practice areas include a range of complex matters, involving competition law, consumer fraud and unfair trade practices law, environmental law, technology law, intellectual property and trademark law, qui tam law, civil rights law, contract law, Racketeering Influenced and Corrupt Organizations Act (“RICO”) law, labor and employment law and hour, insurance and other state and federal statutory and common law claims.

Ms. Chavez has utilized her diverse experience and unique background to consistently provide invaluable contributions in cases that require the cooperation and collaboration of multiple plaintiffs’ counsel. Whether as a leader or a team member, Ms. Chavez consistently offers an unparalleled level of advocacy, energy, enthusiasm and commitment to her clients. Recoveries from the cases in which she has been involved (including verdicts, judgments and settlements) exceed $7 billion dollars and involve a diverse range of complex civil claims.

Ms. Chavez is a member of the American Bar Association (“ABA”), the Chicago Bar Association (“CBA”), the Federal Bar Association (“FBA”), the National Employment Lawyers Association (“NELA”) and the Kane County Bar Association (“KCBA”) and the Womens Bar Association of Illinois (“WBAI”). She is a frequent speaker at conferences and seminars, and has received numerous recognitions and distinctions, including certification as an American Arbitration Association (“AAA”) Employment Panel Arbitrator; Leading Women Lawyers; and Top Employment Lawyers for Employees, Chicago Lawyer Magazine; Top Women Lawyers, Top 10 % of Lawyers in the USA, Lawyers of Distinction; Chicago Lawyer Magazine; and inclusion in selective and peer-reviewed organizations such as: Leading Lawyers, Esteemed Lawyers of America® and Lawyers of Distinction.

Elizabeth C. Chavez, Esq. is an Associate Attorney at Foote, Mielke, Chavez & O’Neil, LLC. Ms. Chavez received her juris doctor from Loyola University Chicago School of Law after graduating with a Bachelor of Arts from the University of Wisconsin-Madison. In 2016, she was licensed to practice in the State of Illinois, the United States District Court for the Northern District of Illinois, and the United States District Court for the Central District of Illinois.

Ms. Chavez practices in the areas of complex civil litigation, civil rights and labor and employment law. She has experience representing employees in front of administrative agencies (the Equal Employment Opportunity Commission, the Illinois Department of Human Rights and the Illinois Department of Labor) and state and federal courts. Ms. Chavez recently obtained a $6.45 million jury verdict on behalf of two plaintiffs who brought claims against their former employer and alleged the employer subjected them to a hostile work environment because of their sex. Davis, et al. v. Packer Engineering, Inc. (Case No. 11-cv-07923, United States District Court for the Northern District of Illinois).

Ms. Chavez is a member of the American Bar Association (“ABA”), the Chicago Bar Association (“CBA”), the Federal Bar Association (“FBA”), and the Kane County Bar Association (“KCBA”). She is also a member of the National Employment Lawyers Association (“NELA”) and the Women’s Bar Association of Illinois (“WBAI”). Ms. Chavez most recently spoke at the Kane County Bar Association Employment and Labor Law Seminar.

CLE Accreditation:
mylawCLE seeks approval in all states except VA.

CLE 2.00 – AK
CLE 2.00 – AL
CLE 2.00 – AR
CLE 2.00 – AZ
CLE 2.00 – CA
CLE 2.40 – CO
CLE 2.00 – DE
CLE 2.40 – FL
CLE 2.00 – GA
CLE 2.00 – HI

CLE 2.00 – IA
CLE 2.00 – ID
CLE 2.00 – IL
CLE 2.00 – IN
CLE 2.00 – KS
CLE 2.00 – KY
CLE 2.00 – LA
CLE 2.00 – ME
CLE 2.00 – MN
CLE 2.40 – MO

CLE 2.00 – MP
CLE 2.00 – MS
CLE 2.00 – MT
CLE 2.00 – NC
CLE 2.00 – ND
CLE 2.00 – NE
CLE 2.00 – NH
CLE 2.40 – NJ
CLE 2.00 – NM
CLE 2.00 – NV

CLE 2.40 – NY
CLE 2.00 – OH
CLE 2.40 – OK
CLE 2.00 – OR
CLE 2.00 – PA
CLE 2.00 – PR
CLE 2.40 – RI
CLE 2.00 – SC
CLE 2.00 – TN
CLE 2.00 – TX

CLE 2.00 – UT
CLE 2.40 – VI
CLE 2.00 – VT
CLE 2.00 – WA
CLE 2.40 – WI
CLE 2.40 – WV
CLE 2.00 – WY

Accreditation Policy
myLawCLE will seek credit where attending attorneys are primarily licensed for all of its live webinars and live teleconferences, except in states which allow for reciprocity (see reciprocity section below). Credit for CLE in a self-study format is sought for in most states; however, some states do not allow for CLE credit to be earned in a self-study format (see the self-study section below). Many states typically decide whether a program qualifies for MCLE credit in their jurisdiction 4-8 weeks after the program application is submitted. For many live events, credit approval is not received prior to the program. Credit hours granted are subject to approval from each state.

Additionally, some states allow for credit to be granted on a 1:1 reciprocal basis for courses approved in another mandatory CLE jurisdiction state. This is known as a reciprocity provision and includes the following states: AK, AR, CO, FL, ME, MT, ND, NH, NJ, NY, PR, and SD. myLawCLE does not seek direct accreditation of live webinars or teleconferences in these states.

On-demand CLE
myLawCLE will seek on-demand approval in all states except Virginia and Arkansas (outside reciprocal provisions stated above).

myLawCLE Credit Guarantee
myLawCLE offers a program and credit approval guarantee. If a registered attendee is unhappy with a CLE program they have attended, myLawCLE will offer that attended access to another complimentary CLE or a full refund in order to insure the attendee’s satisfaction.

Additionally, on all online CLE programs application for approval will be made in all states where attending attorneys are primarily licensed in. If a registered attorney does not receive credit from their state for any reason, a full refund will be granted.

Section I. Overview of the Madrid Protocol for International Trademark Registration
a) The Madrid System for the International Registration of Marks is governed by two treaties
        i. Madrid Agreement Concerning the International Registration of Marks (1891)
        ii. Protocol Relating to the Madrid Agreement, and its Common Regulations under the Agreement and Protocol (adopted in 1989, effective 1995, in operation 1996)
b) The Madrid Union is a special union consisting of the States that are members of the Madrid Agreement or the Madrid Protocol (Contracting Party)
c) The Madrid Protocol governs transactions between Contracting Parties and users for International Registration (IR) of trademarks
d) Requirements to Use Madrid System
e) IR Application Process
        i. Mark registered or application filed with the applicants’ home State’s trademark office (“Office of Origin”)
        ii. Office of Origin presents IR application for International Registration at the Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland
        iii. Required Contents of IR Application
        iv. IR application must designate the contracting party states in which it seeks mark protection
        v. IR Application can be filed in English, Spanish or French
        vi. Payment of IR application fees
        vii. Office of Origin Certifications- certification of the mark and certification of the date it received the applicant’s request for IR application
        viii. International Bureau reviews application for compliance with Madrid Protocol and Common Regulations, as well as the payment of fees
                1. Notice of irregularities
                2. Period of time to correct
        ix. Compliant IR applications are recorded in the International Register and published in the Gazette
        x. The offices of designated Contracting Parties examine the IR application and have 12-18 months to notify the International Bureau of a provisional refusal to grant protection to the mark
        xi. The International Bureau records the provisional refusal, publishes it in the Gazette and transmits a copy to the holder of the international registration
        xii. Subsequent procedures, after provisional refusal, are conducted between the office of designated Contracting Party and the IR Mark holder
        xiii. Before the expiration of the refusal period, the office of designated Contracting Party must notify the International Bureau whether
                1. Protection is granted to the mark
                2. Protection is partially granted to the mark, or
                3. Protection is refused
        xiv. The International Bureau will publish in the Gazette and transmit a copy to IR Mark holder
f) Effects of International Registration
        i. Scope of protection of the Mark
        ii. Duration of protection and renewals

Section II. Advantages and Disadvantages of Filing Under the Madrid Protocol
a) Single Application: centralized filing, registration and renewal
b) Costs and administrative efficiencies
c) Renewals and use requirements
d) Dependency period
e) Multi-jurisdiction coverage
f) National examination
g) Central Attack
h) Restrictions on transferability of IRs to a business or purchaser from a non-Madrid Protocol country
i) Permissibility of variants in the mark or its specification of goods and services
j) No protection in non-Madrid Protocol countries
k) IR only applies to a single owner and cannot be used to cover multiple companies

Section III. Guidance and Considerations for United States Businesses in Registering and Protecting Trademarks
a) Business structure (both existing and anticipated) of trademark holder
b) Use and anticipated use of the trademarks (variants of the trademark or the products and services description related to the trademark)
c) Countries in which trademark protection is sought
d) Costs and administration efficiencies
e) Potential issues in filing the Trademark in the United States

Section IV. Alternative Options for Global Protection of Trademarks