By Cayden Perez. Cayden is a second-year law student at Sandra Day O’Connor College of Law at Arizona State University in Phoenix, Arizona. Cayden is a fellow of the McCarthy Institute’s Symposia branch and served as the TechTainment Committee Chair. Cayden wishes to pursue international intellectual property law upon graduating.
Introduction
Trademarks are words, symbols, or a combination of both that serve as brand identifiers for products, services, and companies.[1] Trademarks are helpful legal tools that allow the owner of the trademarks (mark owner) to prosecute unauthorized uses of their marks.[2] This type of protection is valuable in two ways: first, it helps consumers distinguish among brands; second, it creates brand recognition and mitigates reputational harm caused by unauthorized uses.[3]
In general, to receive federal trademark protections and enforcement, an applicant must make the proper filing to the United States Patent and Trademark Office (USPTO).[4] If all requirements for trademark eligibility are met, the USPTO grants ten years of protection that can be renewed every subsequent ten years.[5] Once a trademark has been granted, the mark owner has the exclusive right to that mark and can then sue an infringer for damages.[6] The caveat is that these protections exist solely within the United States.[7] Trademark law is highly jurisdictional; there is no universal set of laws governing trademark rights or how to enforce those rights internationally.[8] There are 193 United Nations-recognized countries, and American businesses operating overseas must contend with the reality that their mark(s) may be infringed outside the United States.[9] Luckily, there are some, albeit imperfect, mechanisms to enforce trademark rights abroad.
Obtaining Trademark Rights
A mark owner must establish rights in their mark before pursuing enforcement. Despite the highly jurisdictional nature of international trademark law, one constant is that rights in the mark are needed before enforcement options become available. There are two primary ways to obtain trademark rights in other countries: filing an application in each country where protection is sought or filing an international application through the World Intellectual Property Organization (WIPO).
Filing an Application in Every Country Where Business Operations Occur
Businesses and individuals have the option to file trademark applications in every country where they conduct business operations.[10] The mark owner will likely need to hire foreign counsel to submit that country’s specific trademark application, handle any challenges raised by the trademark office, pay for translations, pay fees, and pay for enforcement actions.[11] The process can become very unwieldy, especially if the mark owner wishes to get protection in multiple countries.[12]
However, there are times where this may be a good option, such as in the People’s Republic of China. If filing in China directly, an applicant and their counsel can conduct more thorough research on the requirements and necessary formalities.[13] The applicant can thus exercise more control over their application and avoid errors that may invalidate it. In jurisdictions like China, there are no office actions or chances to amend deficient applications which makes mistakes costly and very time-consuming.[14] Thus, the mark owner may want to consider filing locally for a potentially smoother process. Additionally, applying directly may help a mark owner’s chances of successfully pursuing enforcement.[15] China is merely one example; the specific requirements of each country’s process must be assessed by the applicant and counsel. Whether or not filing directly has a lot to do with the nature of the country’s process and the number of countries where trademark rights are sought.
The Madrid Protocol
The alternative to filing directly in each country is utilizing the Madrid Protocol. The Madrid Protocol of 1989 is an agreement administered by the World Intellectual Property Organization (WIPO) and is in force in 132 countries, including the United States.[16] Notable members of the Protocol include China, Great Britain, the European Union, and Japan.[17] Once the USPTO grants a trademark registration to an American individual or business, the mark owner can then file a single “international application” to the WIPO’s International Bureau.[18] The application is in English and paid for in Swiss francs.[19] Once approved, the mark is valid for ten years with opportunities to extend protections every ten years.[20]
Successfully obtaining a mark from the USPTO is the first step in the application process.[21] This USPTO mark will serve as the basis for the WIPO mark.[22] Once a valid USPTO mark is granted, the mark owner can begin the international application.[23] The mark owner will have to put in details about their mark and which Madrid Protocol member states they would like trademark rights in.[24] On top of the flat fees, the total fee increases depending on the number and selection of designated countries, as some countries have different rates.[25] The WIPO offers a free online calculator to determine what an application fee may cost.[26]
Once the application is complete, the WIPO will conduct a formalities review of the application in coordination with the USPTO.[27] Afterwards, the WIPO sends the application to the trademark offices of the countries the applicant selected.[28] The selected trademark offices have twelve to eighteen months from the date the WIPO application is received to deny it, grant it, or raise specific issues with it.[29] If issues or challenges are raised, the applicant or USPTO will be notified, and local counsel may need to be retained to handle the challenges.[30] Otherwise, the application is granted by the local office, and the mark owner now has trademark rights in that country.[31] Additionally, the WIPO publicly publishes the marks to the WIPO Gazette of International Marks.[32]
Enforcement of Rights Under Madrid
If a mark filed through the WIPO is infringed, the mark owner must retain counsel to pursue enforcement.[33] The mark owner has a few options when pursuing enforcement: they can do nothing, retain a domestic lawyer, retain a lawyer in the jurisdiction where the infringement occurred, or retain a multinational law firm with an office in the country where the infringement occurred.[34] Complicating enforcement is that some states have not ratified implementing legislation or simply do not have the judicial infrastructure to protect mark owners despite being parties in the Madrid Protocol.[35] This problem stems from the fact that trademark law is highly regional, and despite the international community’s strides to make the process more centralized, it is still fragmented. Enforcement may be further complicated since foreign governments and companies may not readily recognize a WIPO registration as sufficient proof of rights and refuse to act when infringement is alleged. For example, in China, WIPO trademark certificates are indeed valid proof of mark ownership under Chinese law, but government agencies and companies strongly favor Chinese trademark certifications.[36] Regardless of the challenges posed in international trademark litigation, a mark owner can generally pursue infringement claims if rights have been established, whether through the WIPO or directly with the country where infringement occurred.
Importation Controls
Another mechanism to enforce trademark rights internationally is through import controls. Certain companies, such as fashion, pharmaceutical, electronics, and wristwatch companies, may be especially susceptible to overseas counterfeiters importing these goods into the United States.[37] Counterfeit products not only confuse customers but may also tarnish the reputation of the mark owner, as these goods are often lower quality or less safe than the authentic product.[38]
United States Customs and Border Protection (CBP) allows American mark owners to electronically register their trademark with their Intellectual Property Rights Recordation system to combat counterfeit and infringing goods entering the United States.[39] The mark owner and CBP will work in conjunction with each other to detain and seize any counterfeit products.[40] To register, a mark owner needs to have a valid trademark registration with the USPTO and pay a $190 fee.[41] CBP offers an online portal allowing mark owners to submit allegations of IP theft through the E-Allegations portal which aids CBP seizing counterfeits.[42]
It is also possible for an American company or individual to control the importation of counterfeit goods into other countries. This process is extremely varied and is dependent on local laws, much like the rest of trademark law. A full breakdown of each country’s process to limit imports of counterfeit goods is well beyond the scope of this article. Generally, obtaining a valid trademark registration, whether through the WIPO or locally, is necessary to secure valid rights in the mark.[43] Next, there is a process of informing the local customs agency of the mark and exercising its authority to seize these goods before entering that market.[44]
Conclusion
The granularity of each country’s trademark laws and enforcement of trademark rights is beyond the scope of this article. There will inevitably be issues with enforcement despite the best efforts of the international community. Each case of foreign infringement must be evaluated individually. However, securing trademark rights and enforcement of those trademarks abroad is more than possible, and mark owners have various options to choose from. Options include filing directly in a foreign jurisdiction, using the centralized Madrid Protocol system, or pursuing customs-based import controls. Despite the regional nature of trademark law, today’s mark owners do have the options to protect themselves from infringers and mechanisms to pursue them.
[1] Ned Snow, Intellectual Property 18 (2nd ed. 2020).
[2] 15 U.S.C. § 1114(1).
[3] See Snow, supra note 1, at 17.
[4] See generally Snow at 121–24; United States Patent and Trademark Office, https://www.uspto.gov/trademarks/basics/why-register-your-trademark (last visited Feb.1, 2026) (Registration is not required under the Lanham Act to receive protections but does offer key advantages such as nationwide protection as opposed to geographic area protection, presumption of validity, priority over competing marks, and more).
[5] 15 U.S.C. §§ 1058–59.
[6] 15 U.S.C. §§ 1114, 1125; UNITED STATES PATENT AND TRADEMARK OFFICE, https://www.uspto.gov/trademarks/basics/why-register-your-trademark (last visited Feb.1, 2026).
[7] Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412, 417, 428 (2023); Ryan Swanson, Six Things to Know About Trademark Protection in Foreign Countries, Ryan, Swanson & Cleveland, PLLC (Mar. 29, 2023)https://ryanswansonlaw.com/six-things-to-know-about-trademark-protection-in-foreign-countries/.
[8] Catherine Cavella, Cross-Border Intellectual Property Infringement, IP Works (Apr. 15, 2025), https://ipworkslaw.com/cross-border-intellectual-property-infringement/.
[9] United Nations, https://research.un.org/en/unmembers/currentmembers (last visited Mar. 2, 2026).
[10] Ryan Swanson, Six Things to Know About Trademark Protection in Foreign Countries, Ryan, Swanson & Cleveland, PLLC (Mar. 29, 2023), https://ryanswansonlaw.com/six-things-to-know-about-trademark-protection-in-foreign-countries/.
[11] Michael Hoisington, Coming to America: The Madrid Protocol, Higgs Fletcher & Mack, LLP (May 2002), https://higgslaw.com/coming-to-america-the-madrid-protocol/.
[12] See id.
[13] Fred Rocafort, Register Your China Trademarks in China, not Madrid, Harris Sliwoski LLP (Apr. 14, 2019), https://harris-sliwoski.com/chinalawblog/register-your-china-trademarks-in-china-not-madrid/ (China’s trademark application process is described as highly “mechanical” and the different “subclasses” of trademarks tend to punish both broad and narrow trademark applications).
[14] Id.
[15] Id.
[16] World Intellectual Property Organization, https://www.wipo.int/en/web/madrid-system/members/index (Last accessed Feb. 1, 2026).
[17] World Intellectual Property Organization, https://www.wipo.int/treaties/en/docs/pdf/madrid_marks.pdf (Last accessed Feb. 1, 2026).
[18] Brian Farkas, My Trademark Is Being Infringed Outside of the United States: What Should I Do?, Nolo, https://www.nolo.com/legal-encyclopedia/my-trademark-is-being-infringed-outside-of-the-united-states-what-should-i-do.html.
[19] World Intellectual Property Organization [WIPO], Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, at 54, 129 (Nov. 1, 2024).
[20] World Intellectual Property Organization, Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Nov. 12, 2007, TRT/MADRIDP-GP/001.
[21] Hoisington, supra note 11.
[22] Id.
[23] Id.
[24] Id.
[25] World Intellectual Property Organization, https://www.wipo.int/en/web/madrid-system/fees/sched (Last accessed Feb.1, 2026); World Intellectual Property Organization, https://www.wipo.int/en/web/madrid-system/fees/ind_taxes (Last accessed Feb.1, 2026).
[26] World Intellectual Property Organization, https://madrid.wipo.int/feecalcapp/ (Last accessed Feb.1, 2026).
[27] See Mewburn Ellis, Madrid System – The Basics, https://www.mewburn.com/law-practice-library/madrid-system-the-basics (Last accessed Feb. 1, 2026).
[28] Id.
[29] Mewburn Ellis, https://www.mewburn.com/law-practice-library/madrid-system-the-basics (Last accessed Feb. 1, 2026); World Intellectual Property Organization [WIPO], Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, at 91–92 (Nov. 1, 2024).
[30] Id.
[31] See Swanson supra note 10.
[32] World Intellectual Property Organization [WIPO], Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, at 123–25 (Nov. 1, 2024).
[33] Farkas, supra note 18.
[34] Id.
[35] Mewburn Ellis, supra note 27.
[36] Rocafort, supra note 13.
[37] See United States Customs and Border Protection, https://www.cbp.gov/newsroom/stats/intellectual-property-rights-ipr-seizures (last accessed Feb. 1, 2026) (Refer to IPR dashboard for 2024).
[38] Fred Rocafort, Safeguarding Your Intellectual Property in China: A Guide to China Customs IP Recordation, Harris Sliwoski LLP (Oct. 22, 2024) https://harris-sliwoski.com/chinalawblog/safeguarding-your-intellectual-property-in-china-a-guide-to-china-customs-ip-recordation/; United States Customs and Border Protection, https://www.cbp.gov/newsroom/stats/intellectual-property-rights-ipr-seizures (last accessed Feb. 1, 2026).
[39] United States Patent and Trademark Office, https://www.uspto.gov/trademarks/protect/customs-and-border-protection (last visited Feb.1, 2026); UNITED STATES CUSTOMS AND BORDER PROTECTION, https://www.cbp.gov/trade/priority-issues/ipr/protection (last accessed Feb. 1, 2026).
[40] UNITED STATES CUSTOMS AND BORDER PROTECTION, https://www.cbp.gov/trade/priority-issues/ipr/protection (last accessed Feb. 1, 2026).
[41] UNITED STATES CUSTOMS AND BORDER PROTECTION, https://iprr.cbp.gov/s/ (last accessed Feb. 1, 2026).
[42] UNITED STATES CUSTOMS AND BORDER PROTECTION, https://eallegations.cbp.gov/s/?language=en_US (last accessed Feb. 1, 2026); UNITED STATES CUSTOMS AND BORDER PROTECTION, https://iprr.cbp.gov/s/ (last accessed Feb. 1, 2026).
[43] E.g. Rocafort, supra note 38.
[44] Id.