Which Trademark Registrations Qualify for a VMC?
Direct Answer
To qualify for a trademark-backed VMC certificate, the registration must be active and issued by a recognized trademark office. Pending applications, expired registrations, and unregistered or common-law marks do not qualify. Jurisdiction can be a validation barrier if the registration comes from an office that the issuing CA does not accept.
Certificate authorities validate two things when reviewing a VMC application: that a qualifying trademark registration exists, and that the logo matches it. This article covers the first question — which registrations are accepted.
Trademark Registration Eligibility Table
| Trademark Office / System | Geographic Coverage | VMC Eligibility | Notes |
|---|---|---|---|
| USPTO | United States | Accepted | Primary accepted office; most commonly used |
| EUIPO | European Union (27 member states) | Accepted | One EUIPO registration covers all EU member states |
| UKIPO | United Kingdom | Accepted | Post-Brexit registrations separate from EUIPO |
| WIPO Madrid System | Multi-jurisdictional | Accepted (conditional) | CAs generally evaluate the granted national or regional designation, not the international filing alone. A granted US or EU designation satisfies eligibility for those jurisdictions. |
| CIPO | Canada | Accepted | Accepted by major VMC issuers |
| IP Australia | Australia | Accepted | Accepted by major VMC issuers |
| JPO | Japan | Accepted | Accepted by major VMC issuers |
| KIPO | South Korea | Accepted | Accepted by major VMC issuers |
| DPMA | Germany | Generally accepted | Accepted by major VMC issuers; confirm with the issuing CA |
| INPI | France / Brazil | Generally accepted | Accepted by major VMC issuers; confirm with the issuing CA |
| Other national trademark offices | Varies | CA-dependent | Recognition varies by issuer; not all national registries are on every CA’s accepted-office list — verify before applying |
| Pending application (not yet granted) | — | Not accepted | Registration must be confirmed |
| Lapsed, cancelled, or expired registration | — | Not accepted | The registration must be active at the time of VMC application and throughout the certificate validity period |
| Common law / unregistered marks | — | Not accepted for VMC | VMC requires a formal registration; a Common Mark Certificate (CMC) may be available as an alternative path |
Do not assume a trademark office qualifies simply because it is an official government registry. VMC validation depends on whether the issuing CA recognizes that office for Mark Certificate issuance. Lists of CA recognized trademark offices can vary by issuer and mailbox-provider policy. Always verify before applying, especially for less common jurisdictions.
Real-World Examples
Example 1 — USPTO Registration
- Trademark
- Figurative mark registered with the USPTO; registration confirmed and active
- Sending Domain
- US-based company operating a .com domain
- Likely Outcome
- Accepted — USPTO is a primary accepted office. Provided the logo matches the registered mark and the applicant entity relationship is clear, the registration itself presents no barrier.
Example 2 — EUIPO Registration
- Trademark
- Combined mark (logo + wordmark) registered as an EU trademark with EUIPO
- Sending Domain
- Company headquartered in Germany, sending from a .de domain
- Likely Outcome
- Accepted — a single EUIPO registration covers all EU member states. The company does not need a separate national registration in Germany or any other member state for VMC purposes.
Example 3 — WIPO Madrid Designation
- Trademark
- Mark originally registered with a national office, extended internationally via the WIPO Madrid System with active designations in the US and EU
- Sending Domain
- Company sending from a .com domain targeting US and European markets
- Likely Outcome
- Accepted — the CA evaluates the individual designations, not the Madrid application as a whole. A granted designation in the US (equivalent to a USPTO registration) or EU (equivalent to EUIPO) satisfies the eligibility requirement for those jurisdictions.
Example 4 — National Office Outside the Primary Three
- Trademark
- Mark registered with IP Australia; registration number confirmed and in force
- Sending Domain
- Australian company sending from a .com.au domain
- Likely Outcome
- Generally accepted — national offices in major markets are typically accepted by CAs. The applicant should confirm inclusion on the CA’s accepted office list before applying, as practice may vary.
Example 5 — Pending USPTO Application
- Trademark
- Application filed with the USPTO; currently under examination with no registration number issued
- Sending Domain
- US-based company ready to deploy BIMI
- Likely Outcome
- Not accepted — a pending application does not satisfy the registration requirement. The VMC process cannot proceed until the USPTO issues a registration number confirming the mark. See My Trademark Is Pending. Can I Still Get BIMI? for options during the waiting period.
What To Do Next
- Confirm your trademark registration is granted and active — locate the registration number at the issuing office before beginning a VMC application. A pending application number is not sufficient.
- If your registration is from a national office outside the USPTO, EUIPO, or UKIPO, verify that the CA you plan to work with accepts it. Most major national offices are covered, but regional or smaller offices may require confirmation.
- For WIPO Madrid registrations, identify which specific country or regional designations are granted — the CA validates the designation, not the international application.
- Once you have confirmed the registration qualifies, the next step is verifying that the logo in your SVG file matches the registered mark. See Will My Logo Be Approved for BIMI?
Frequently Asked Questions
Does my trademark need to be registered in the same country as my sending domain?
No. The trademark jurisdiction and the location of the sending domain are evaluated separately. A US trademark used by a company sending from a .de domain is not automatically disqualified. What matters is that the trademark registration is granted and active at an accepted office, and that the applicant has the right to use that mark for the relevant domain and email use case.
My trademark is registered under the WIPO Madrid System. Which registration does the CA evaluate?
The CA evaluates your individual country or regional designations, not the international application itself. If you hold a granted designation in the US (treated equivalently to a USPTO registration) or the EU (treated equivalently to an EUIPO registration), those designations satisfy the eligibility requirement. Designations that are still pending or that have been refused do not count.
Does the goods and services class of my trademark affect eligibility?
In most cases, no — the class of goods or services does not block eligibility on its own. However, if the registered class appears entirely unrelated to the applicant's business, a CA may request clarification during the validation review. Standard business trademark registrations covering the applicant's industry are not affected by this in practice.