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For trademark lawyers, it’s an event on par with a Hollywood movie premiere or the release of a new Harry Potter book. The United States on November 2 officially joined the Madrid Protocol, a treaty that allows trademark owners to file a single application to register a trademark in dozens of countries. The system has been touted as a way to save lots of money and speed up trademark registration overseas. But lawyers say the procedure has some disadvantages, and it’s unclear whether it will live up to its hype. “It is definitely creating a stir,” says Sally Abel, the partner in charge of the trademark practice at Fenwick & West in Palo Alto, California. “It remains to be seen whether it delivers the promise of true international registration for a fraction of the cost of filing in each individual country.” Sixty-one countries are currently signatories to the Madrid Protocol, which was adopted in the Spanish capital in 1989. After years of wrangling, Congress finally passed legislation to implement the treaty in the United States. President Bush signed the measure into law in August. The treaty allows a U.S. company to submit a single international trademark application to the U.S. Patent and Trademark Office. The applicant checks off the countries in which it wishes to register the mark, and the PTO forwards the application to the World Intellectual Property Organization (WIPO) in Geneva. Each designated country then examines the application and approves or rejects it. The PTO had previously announced that it would be accepting the applications in electronic form. But the agency announced in late October that it would accept only paper applications until further notice, which surprised many in the intellectual property community. The International Trademark Association, which lobbied for the treaty, estimates that filing a single application will save more than 62 percent in total filing and attorneys fees. Individually registering a mark in the United States and 10 other countries, for example, would cost $15,000, with the cost dropping to $5,800 under the Madrid Protocol. But many trademark lawyers say the disadvantages of using the Madrid system may outweigh potential cost savings, leaving trademark owners to evaluate the best approach to take. Under the treaty, the WIPO filing fee is 73 Swiss francs (about $47). But member countries have the option to charge their own fee. Fenwick’s Abel says 38 of the 61 member countries have chosen to do so. She adds that applicants could also face additional costs if a foreign trademark office rejects their application, which could force them to hire outside counsel. Mark Steiner, who heads Townsend and Townsend and Crew’s trademark and copyright practice in San Francisco, says the European Commission’s trademark system might be preferable to the Madrid Protocol for companies seeking to register their marks in Europe. An application approved under the EC system covers all member countries of the commission � which will increase from 15 to 25 members in May. By contrast, he says, each member country of the Madrid Protocol examines the application. Lisa Martens, a partner in Fish & Richardson’s San Diego office, says her firm is counseling clients to go through the EC rather than using the Madrid Protocol to get their marks registered in Europe. Trademark lawyers say companies also might prefer to file in individual countries if they want to obtain broader coverage of their mark. The U.S. trademark office requires a narrower description of goods and services in its applications compared to other countries. Under the Madrid Protocol, the base application — which must be filed where a company has offices — is what the other protocol member countries receive. In Europe, one can file an application just for computer software, says Martens, while U.S. examiners require an applicant to specify what the software does and how it operates. “If you can live with the United States’ narrow descriptions, then the Madrid Protocol is a huge cost savings,” she says. Bruce MacPherson, director of external relations at the International Trademark Association, says the Madrid accord offers the greatest savings in the management of a trademark portfolio. If a company has its mark covered in 20 countries under an international registration, he says, it would only have to renew the application in one location and pay one fee. “A lot of it has to do with the strategy of the trademark owner,” says MacPherson. “It’s not a slam dunk for everybody. In dealing with intangible assets you need to do your homework.”

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