Summary. This checklist turns the decision of where and how to protect a trademark outside the United States into a sequence of concrete tasks. It starts with mapping where the business makes, sells, and licenses its products, then covers foreign clearance and linguistic checks, the choice between Madrid, national, and regional filings, and the six-month Paris priority window. Further phases address specifications and classes (including China's subclass system), translations and local-script marks, budgeting, contract terms that keep distributors and manufacturers from filing the brand, customs recordation at home and abroad, and the watch and maintenance program that keeps the portfolio alive. Red-flag boxes mark the situations that call for immediate filing or escalation, and a deadlines table collects the clocks that matter. A short worked example and a list of common failure points close the checklist.

A brand's foreign protection is usually decided in a single meeting, often too late, and often by default: someone files a Madrid application designating "the usual countries" because that is what was done for the last brand. This checklist replaces the default with a decision. It is written for in-house counsel, outside trademark counsel, and founders who need to know what to ask before money is spent.

How to use this checklist

Work through the phases in order for each new brand, and again whenever the business enters a new market, appoints a new distributor, or moves manufacturing. Each item is a task with its governing authority and a short practical note. Items marked Red flag require immediate action. The doctrine behind the tasks is in Protecting a Trademark Abroad: The Madrid Protocol, Territoriality, and Abitron v. Hetronic. The filing mechanics for a Madrid application are in Filing an International Trademark Application Under the Madrid Protocol: A Practical Guide. The filing matrix, priority calendar, and letters referred to below are in the Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs.

Two premises run through every phase. First, trademark rights are territorial: a U.S. registration and U.S. sales give no rights abroad, and foreign use gives none here (Person's Co. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990)). Second, U.S. courts will not fix foreign infringement under the Lanham Act after Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023). Foreign rights must be obtained, and enforced, abroad.

Phase 1: Map the business

  • List every country where the product is or will be manufactured, assembled, or packaged. Note: the factory country is often more important than any sales market, because a local registrant there can block exports, and in some countries can record its registration with customs to stop the owner's goods at the port.
  • List every country where the business sells now, and where it plans to sell in the next three to five years. Note: include online sales that ship to a country, marketplace storefronts, and distributor territories. A three-to-five-year horizon matches most local non-use periods, so filings beyond it risk cancellation.
  • List every licensee, distributor, sales agent, and franchisee by territory. Note: these are the people most likely to file the brand in their own name. See Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors.
  • Identify upcoming public disclosures. Trade shows, crowdfunding launches, press coverage, marketplace listings, and investor announcements. Note: squatters monitor these. Schedule filings before them.
  • Identify which marks need protection. Word mark, logo, product names, slogans, packaging (trade dress), and any local-language names the market already uses. Note: prioritize the house mark and the products that generate revenue.
  • Confirm the U.S. position. Is there a U.S. application or registration, who owns it, and what does it cover? Note: a Madrid filing depends on it (15 U.S.C. § 1141a). Fix ownership errors by recording assignments under 15 U.S.C. § 1060 before filing. The Trademark Ownership Audit Checklist: A Practical Checklist walks through the ownership review.

Red flag: a distributor or manufacturer has already asked "who should register the brand here?" Treat the question as a warning. File in that country now, and send the contract amendments in Phase 8.

Phase 2: Clear the mark abroad

  • Run knock-out searches in each priority country. Note: use national registers and WIPO's Global Brand Database for a first pass. A clean U.S. search says nothing about Japan. For search method, see How to Conduct a Comprehensive Trademark Clearance Search and the Trademark Clearance Search Checklist: A Practical Checklist.
  • Commission full local searches for the most important countries. Note: local counsel can read local-language registers, assess local similarity standards, and flag unregistered rights in common-law countries.
  • Check whether the mark is already registered by a squatter. Note: search for the exact mark, near variants, and likely transliterations. Finding a squatter's registration before launch is far cheaper than finding it at the port.
  • Run a linguistic check in each language market. Note: confirm the mark has no offensive, vulgar, or unfortunate meaning, and is not descriptive or generic in the local language.
  • Assess distinctiveness locally. Note: a suggestive English word may be descriptive to an English-speaking examiner in the UK or Australia, and a coined word may resemble a common word in another language.
  • Check geographic and regulatory restrictions. Note: some product categories (pharmaceuticals, alcohol, food with geographic indications) face local naming rules that a trademark search will not reveal.

Phase 3: Choose the filing routes

  • Confirm Madrid membership for each target country. Note: check WIPO's current member list. Historically, Argentina, Taiwan, Hong Kong, South Africa, and Venezuela, among others, have been outside the system.
  • Decide country by country between Madrid, national, and regional filings. Use the matrix below.
Factor Favors Madrid Favors national filing
Number of countries Many One or two
Strength of U.S. basic mark Registered or well past examination Fresh intent-to-use application facing likely refusal
Breadth of U.S. specification Adequate for the foreign business Too narrow; foreign goods not covered
Country practice Accepts U.S.-style identifications Has its own subclass system or terminology (China)
Need for local-script mark No Yes (Chinese characters, katakana, Arabic)
Budget Lower upfront Higher upfront, more tailored
Ongoing management Central changes and renewals Separate renewals and recordals
  • Assess the dependency risk. Note: for five years, every Madrid designation depends on the U.S. basic mark, and a refusal or cancellation in the United States can cancel the international registration (15 U.S.C. § 1141c). If the U.S. mark is fragile, consider national filings in the key countries.
  • Decide on regional rights. Note: the EU trade mark covers all EU member states in one right but can be blocked by an earlier right in any one of them. Benelux and the African Intellectual Property Organization (OAPI) are regional systems too. The UK must be covered separately since January 1, 2021.
  • Decide whether to file in China nationally. Note: a direct CNIPA filing lets counsel draft the specification to the Chinese subclasses and file a Chinese-character mark at the same time. Many owners file China nationally even when they use Madrid elsewhere.
  • Decide whether to use Paris priority with national filings. Note: national filings in non-Madrid countries can also claim the U.S. date if filed within six months (15 U.S.C. § 1126).

Phase 4: Lock in priority and timing

  • Calculate the six-month Paris priority deadline from the first filing anywhere. Note: Paris Convention art. 4; 15 U.S.C. § 1126(d). Docket it on the day the U.S. application is filed.
  • Set an internal filing target four to six weeks before the priority deadline. Note: leaves time to fix USPTO certification problems and meet the two-month rule that preserves the international registration date.
  • File before the first trade show, launch, or distributor appointment in first-to-file countries, if you can. Note: priority protects against intervening filings only if the foreign application is actually filed within the window. Filing earlier than the window is better still.
  • For a logo or product name without a U.S. filing, decide whether to file in the United States now so a Madrid application can follow. Note: each new U.S. filing opens its own six-month priority window.
  • For a foreign client coming to the United States, plan the U.S. filing route. Note: Section 44(e) based on a home registration, Section 44(d) with priority, or a Madrid designation under 15 U.S.C. § 1141f. Foreign fame alone is a poor substitute: compare Grupo Gigante SA de CV v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004), with ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007).

Red flag: the priority deadline is less than three weeks away. File national applications in the most important first-to-file countries now, even if the Madrid application is not ready. A late Madrid filing loses priority; a national filing within the window keeps it.

Phase 5: Build the specification and choose classes

  • Start from the U.S. identification and list what the business will sell abroad. Note: a Madrid application cannot be broader than the basic mark (15 U.S.C. § 1141b). If the foreign business needs more, file nationally or file a new U.S. application.
  • Check each term in WIPO's Madrid Goods and Services Manager. Note: terms marked as accepted by the target offices reduce refusals.
  • Confirm classification under the Nice Classification. Note: 37 C.F.R. part 6. See USPTO Trademark Classes: A Guide to the Nice Classification and Identifying Goods and Services and Trademark Classification: A Practical Checklist.
  • Map China filings to CNIPA subclasses. Note: Chinese examiners compare marks subclass by subclass. A filing that omits a subclass leaves related goods open to a squatter.
  • Include retail and online store services where the business sells directly. Note: many offices treat retail services as a separate class 35 right; e-commerce often needs it.
  • Consider defensive classes carefully. Note: filing in classes the business will never use costs fees and invites non-use cancellation. Some countries (and some EU and UK case law on bad faith in over-broad specifications) penalize filings made without any intention to use.
  • Use country-specific limitations where a conflict is known. Note: limiting goods in one designation can avoid a refusal without narrowing the others.

Phase 6: Translations, transliterations, and local-script marks

  • Decide whether the brand needs a local-script version in each non-Latin market. Note: China (simplified Chinese), Taiwan and Hong Kong (traditional Chinese), Japan (katakana), Korea (hangul), the Gulf states and Egypt (Arabic), Russia and other Cyrillic markets, Thailand, and Israel. Consumers and media will create one if the owner does not.
  • For China, choose a Chinese name deliberately. Note: consider phonetic, semantic, and combined renderings, check meaning with native speakers, clear it, and file it in the same subclasses as the Latin mark. The long Michael Jordan and Qiaodan Sports litigation over "乔丹" (Qiaodan) is the standard cautionary tale; see the article for detail.
  • Register the local-script mark nationally. Note: a Madrid application must reproduce the basic mark, so a Chinese-character mark generally needs its own national filing unless the owner has a matching U.S. basic mark.
  • Provide transliterations and translations required by the application. Note: the Madrid application requires a transliteration for non-Latin elements and, for marks with meaning, a translation; inconsistencies with the basic mark record cause certification problems.
  • Keep a register of approved local-script versions. Note: distributors will invent their own. Approve one, own it, and require its use.

Phase 7: Budget

  • Run WIPO's Madrid fee calculator for the planned designations, classes, and color status. Note: WIPO fees are in Swiss francs; many major offices charge individual fees that vary by class and change over time.
  • Add the USPTO certification fee per class. Note: under the fee schedule incorporated in 37 C.F.R. part 7. Check the current amount.
  • Obtain written estimates from local counsel for national filings. Note: ask for official fees, professional fees, translation costs, and any legalization or power-of-attorney requirements separately.
  • Reserve for provisional refusals and oppositions. Note: prosecution often costs as much as filing. Ask local counsel which marks and goods commonly draw refusals.
  • Budget for maintenance. Note: WIPO renewals every ten years, U.S. maintenance for the basic registration under 15 U.S.C. § 1058 and § 1059, national renewals, and any local use declarations.
  • Budget for watching and enforcement. Note: a watch costs far less than an invalidation action. See Phase 10.
  • Phase the budget. Note: tier 1 (manufacturing and core sales countries) now; tier 2 (planned markets) within the priority window; tier 3 (opportunistic) by subsequent designation later.

Phase 8: Contracts with distributors, licensees, and manufacturers

  • Add an ownership acknowledgment. Note: the counterparty acknowledges that the brand owner owns the marks in every territory, including local-script versions, and that all use inures to the owner. See Drafting and Administering a Trademark License: A Practical Guide.
  • Prohibit filings by the counterparty. Note: no trademark, trade name, domain name, or social-media handle registrations containing the marks without written consent.
  • Require assignment of any registration the counterparty obtains. Note: include a power of attorney and an obligation to cooperate with recordal, and a liquidated or specific-performance remedy where enforceable.
  • Choose governing law and a forum that can actually compel compliance. Note: an arbitration clause with a seat in a New York Convention country is often more enforceable abroad than a U.S. court judgment.
  • Address what happens at termination. Note: return or assignment of registrations, domains, and accounts, and a sell-off period. Many squatting problems start when a distribution relationship ends badly.
  • For manufacturers, add overrun, mold, and packaging controls. Note: the factory should not keep spare packaging or molds bearing the marks.
  • Remember the treaty remedy. Note: Paris Convention art. 6septies gives the owner a remedy against an agent or representative who registers the mark without authorization, and many national laws (including China's Trademark Law art. 15) implement it. A contract that documents the relationship makes the remedy easier to prove.

For template clauses, see the Brand Ownership Toolkit: Assignment Agreements, Founder IP Clauses, and Ownership Evidence Files and the Brand Licensing Toolkit: License Terms, Quality Programs, and Audit Rights.

Red flag: the distribution agreement is silent on trademark filings, and the distributor is in a first-to-file country. File in the distributor's country immediately, then amend the agreement. Search the local register first; the distributor may already have filed.

Phase 9: Customs and border measures

  • Record U.S. registrations with U.S. Customs and Border Protection. Note: recordation under 19 C.F.R. part 133 lets CBP detain and seize infringing and counterfeit imports, under 15 U.S.C. § 1124 and 19 U.S.C. § 1526. Recordation requires a registration on the Principal Register. See the Customs IP Enforcement Checklist: A Practical Checklist.
  • Record foreign registrations with foreign customs where available. Note: China's customs recordation system and the EU's application for action under its customs enforcement regulation are the most used. Both require a local registration; neither accepts a U.S. registration.
  • Prepare product identification guides for customs officers. Note: authentic versus counterfeit features, authorized manufacturers and shipping routes, and contacts. Officers act on what they can recognize.
  • Consider gray-market protection. Note: where products differ materially by market, U.S. Lever-rule protection under 19 C.F.R. part 133 may be available. See Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion.
  • Check whether the factory country allows export enforcement. Note: export blocking cuts both ways. The owner's own registration in the factory country protects its exports and can be used to stop overruns.

For forms, see the Border Enforcement Toolkit: Recordations, Seizure Responses, and Gray Market Programs.

Red flag: goods have been detained abroad on the strength of someone else's local registration. Escalate the same day. Instruct local counsel, collect evidence of the squatter's bad faith (filing patterns, relationship to the owner, trade-show timing), and evaluate invalidation, opposition (if still pending), and negotiation in parallel. Use the bad-faith response letters in the Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs.

Phase 10: Watch, maintenance, and enforcement readiness

Red flag: a watch report shows a third party's application for your mark in a tier 1 country. Calendar the opposition deadline immediately and instruct local counsel. In most systems, an opposition missed is a registration that must later be invalidated at greater cost and on narrower grounds.

Deadlines table

Clock Length Runs from Authority
Paris priority 6 months First filing for the mark and goods Paris art. 4; 15 U.S.C. § 1126(d)
Madrid two-month rule 2 months USPTO receipt of the international application Protocol art. 3(4)
WIPO irregularity response 3 months Notice from the International Bureau Common Regulations
Provisional refusal period 12 or 18 months Notification of the designation to each office Protocol art. 5; 15 U.S.C. § 1141h for the U.S.
Response to provisional refusal Set by each office; often 1 to 4 months Office's notice National law
Dependency period 5 years International registration date Protocol art. 6; 15 U.S.C. § 1141c
Transformation 3 months Cancellation of the international registration Protocol art. 9quinquies; 15 U.S.C. § 1141j for the U.S.
WIPO renewal Every 10 years, 6-month grace International registration date Protocol art. 7
U.S. Section 8 for basic registration Year 5 to 6, then every 10 years U.S. registration date 15 U.S.C. § 1058
U.S. Section 71 for incoming extensions Year 5 to 6, then every 10 years U.S. certificate of extension 15 U.S.C. § 1141k
China opposition 3 months Preliminary publication China Trademark Law art. 33
China invalidation on relative grounds Generally 5 years (no limit for bad-faith filing of a well-known mark) Registration China Trademark Law art. 45
EU opposition 3 months Publication of the EUTM application EU Trade Mark Regulation
Local non-use vulnerability Commonly 3 or 5 years Registration or grant National law; TRIPS art. 19 minimum 3

Foreign-law periods are stated as commonly applied; confirm each with local counsel before relying on it.

Short worked example

Halvard Audio, Inc., a Minnesota maker of studio headphones sold under HALVARD, plans to launch in Germany, the UK, Japan, and Korea next year, manufactures in Dongguan, and has signed a Brazilian distributor. Its U.S. application was filed five months ago.

  1. Phase 1. The map shows China as the factory country, Brazil as a distributor territory, and a Berlin trade show in seven weeks.
  2. Red flag. The priority deadline is four weeks away. Counsel files national applications in China (Latin mark plus a cleared Chinese name, mapped to subclasses for headphones and audio equipment) and instructs a Madrid application designating the EU, the UK, Japan, Korea, and Brazil, all claiming the U.S. date.
  3. Phase 2. Local searches in Korea show a similar mark for speakers; counsel limits the Korean designation to headphones and earphones.
  4. Phase 8. The Brazilian distribution agreement is amended to add an ownership acknowledgment, a no-filing covenant, and an assignment obligation. A search of Brazil's register shows no prior filing by the distributor.
  5. Phase 9. Halvard records its U.S. registration with CBP once it issues, and records its Chinese registration with Chinese customs once granted.
  6. Phase 10. A watch on the WIPO Gazette and Chinese, Japanese, and Korean registers starts the week of filing, including the Chinese name and katakana variants.

Total filing cost is a fraction of what a single invalidation action in China would cost.

Common failure points

  • Filing in sales markets but not the factory country.
  • Missing the six-month priority window because the Madrid application was not ready, when a national filing in the key country would have saved the date.
  • Relying on a narrow U.S. specification abroad.
  • Ignoring local-script marks.
  • Leaving distribution and manufacturing agreements silent on filings.
  • Basing a Madrid application on a fragile U.S. intent-to-use application without a contingency plan.
  • No watch, so oppositions are missed and squatter registrations mature.
  • Recording marks with U.S. customs but not with customs in the factory country.
  • Treating the WIPO renewal as a substitute for U.S. maintenance and local use evidence.

This checklist is general information, not legal advice for any particular situation; foreign law and treaty membership change, and the facts matter.

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