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For trademark lawyers, it’s an event on par with a Hollywood premiere or the release of a new Harry Potter book. On Sunday the United States 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,” said Sally Abel, head of Fenwick & West’s trademark practice. “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 Madrid, Spain, in 1989. After years of wrangling, Congress finally passed legislation to implement the treaty in the United States, and in August, President Bush signed the measure into law. A U.S. company can now 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 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 last week, the agency said 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 attorney fees. Registering a mark in the United States and 10 other countries, for example, would cost $15,000, but just $5,800 under the Madrid Protocol. But many trademark lawyers say the disadvantages of using the Madrid Protocol system may outweigh potential cost savings, and trademark owners will have to evaluate what’s best for them. Under the treaty, the World Intellectual Property’s filing fee is 73 Swiss francs, or $47. But member countries have the option to charge their own fee. Fenwick’s Abel said 38 of the 61 member countries have chosen to do so. She said applicants could also face additional costs if a foreign trademark office rejects their application and they have to hire outside counsel. Mark Steiner, the head of Townsend and Townsend and Crew’s trademark and copyright practice, said 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 said, each member country of the Madrid Protocol examines the application. Lisa Martens, a partner in Fish & Richardson’s San Diego office, said her firm is counseling clients not to use the Madrid Protocol to get their marks registered in Europe but to go through the EC instead. Trademark lawyers said companies might also 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, Martens said, 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,” Martens said. Bruce MacPherson, director of external relations at the International Trademark Association, said the Madrid Protocol 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 said, 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,” MacPherson said. “It’s not a slam dunk for everybody. In dealing with intangible assets you need to do your homework.”

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