The Madrid Protocol
went into effect in the United States on November
2, 2003. On November 2, 2003, U.S. trademark
owners will be able to submit an international
application to the USPTO to forward to the International
Bureau in Geneva, Switzerland. Below is answers
to frequently asked questions about the Madrid
What is the
The Protocol Relating to
the Madrid Agreement Concerning the International
Registration of Marks (Madrid Protocol) is an
international treaty that allows a trademark
owner to seek registration in any of the countries
that have joined the Madrid Protocol by filing
a single application, called an "international
application." The International Bureau
of the World Property Intellectual Organization,
in Geneva, Switzerland administers the international
What countries are
members of the Madrid Protocol?
As of November 2003, 61 countries
including the U.S. have joined the Madrid Protocol.
These countries are called "Contracting
Parties." A current list of the Contracting
Parties is available online at the World Intellectual
Property Organization (WIPO) website: http://www.wipo.int/madrid/en.
Who can submit an
international application through the USPTO?
Any trademark owner with
an application filed in or a registration issued
by the USPTO and who is a national of, has a
domicile in, or has a real and effective industrial
or commercial establishment in the United States
can submit an international application through
What is the cost
for filing an international application through
An international applicant
must pay fees to the USPTO and to the International
Bureau. The USPTO charges a fee for certifying
international applications and transmitting
them to the International Bureau, called a "certification
fee." The certification fee is $100.00,
per class, if the international application
is based on a single U.S. application or registration.
The certification fee is $150.00, per class,
if the international application is based on
more than one U.S. application or registration.
What happens after
the international application has been submitted
to the USPTO?
If the international application
meets the requirements of 37 C.F.R. §7.11(a),
then the USPTO will certify that certain information
in the international application is the same
as the information in the U.S. basic application
or registration and forward the international
application to the International Bureau.
If the international application
does not meet the requirements of 37 C.F.R.
§7.11(a), then the USPTO will not certify
the international application. The USPTO will
notify the international applicant of the reasons
why the international application cannot be
certified. The certification fee is not refundable.
The international applicant may promptly resubmit
a corrected international application based
on the same U.S. application or registration.
The certification fees must be included with
the new submission.
Will the International
Bureau automatically register the mark in an
international application once it has been certified
by the USPTO?
No. Certification by the
USPTO is only to ensure that the international
application is properly based on a U.S. application
or registration and to validate the date of
receipt of the international application by
the USPTO. The International Bureau must still
review the international application to determine
whether it meets the Madrid Protocol filing
requirements. If the requirements are met and
the fees paid, the International Bureau will
then register the mark, publish it in the WIPO
Gazette of International Marks (WIPO Gazette),
send a certificate to the international applicant,
now called "holder of the international
registration", and notify the Offices of
the Contracting Parties designated in the international
application. The WIPO Gazette may be purchased
from the WIPO Electronic Bookshop on the WIPO
web site at: http://www.wipo.int/ebookshop?lang=eng.
If the Madrid Protocol filing
requirements have not been met, the International
Bureau will send a notice to both the USPTO
and the international applicant that explains
the problems with the application. These notices
are commonly referred to as "irregularity
notices or letters." Responses to irregularity
notices must be received by the International
Bureau within the time period indicated in the
irregularity notice. Receipt by the USPTO will
not satisfy this time requirement. If the irregularities
are corrected within the prescribed time, the
International Bureau will register the mark.
What is the date
of the international registration?
The date of the international
registration is the date of receipt of the international
application in the USPTO provided that the International
Bureau receives the international application
within 2 months of the date of receipt in the
USPTO. If the International Bureau does not
receive the international application within
2 months of the date of receipt in the USPTO,
the date of the international registration will
be the date of receipt by the International
Can an international
applicant claim a priority filing date based
on a U.S. basic application?
Yes. A claim of priority
in an international application may be based
on a U.S. application in accordance with Article
4 of the Paris Convention even if the filing
date of the basic application precedes the implementation
date of the Madrid Protocol in the United States.
The international application must both (1)
assert a claim of priority and (2) be filed
in the USPTO within six months after the filing
date of the basic application that forms the
basis of the priority claim.
What happens after
the International Bureau registers the mark
in the international application?
Once the International Bureau
registers the mark, the International Bureau
will notify each Contracting Party designated
in the international registration of the request
for an extension of protection to that country.
Each designated Contracting Party will then
examine the request for an extension of protection
the same as it would a national application
under its laws. If the application meets the
requirements for registration of that country,
then the Contracting Party will grant protection
of the mark in its country.
There are strict time limits
for refusing to grant an extension of protection
(a maximum of 18 months). If a Contracting Party
does not notify the International Bureau of
any refusal of an extension of protection within
the time limits set forth in Article 5(2) of
the Madrid Protocol, the holder of the international
registration is automatically granted protection
of its mark in that country.
After the mark in
an international application registers, can
the holder of the international registration
request an extension of protection in additional
Yes. The holder of an international
registration may designate additional Contracting
Parties in a subsequent designation. A subsequent
designation is a request by the holder of an
international registration for an extension
of protection of its international registration
to additional Contracting Parties.
Can a subsequent
designation be submitted through the USPTO for
forwarding to the International Bureau?
Yes. If the holder of an
international registration is a national of,
has a domicile in, or has a real and effective
business or commercial establishment in the
United States and the international registration
is based on a U.S. application or registration,
then the subsequent designation may be submitted
on paper to the USPTO. The holder also has the
option of filing a subsequent designation directly
with the International Bureau.
What is the duration
of an international registration?
An international registration
lasts for ten years from the date of registration
and may be renewed for additional 10-year periods
by paying a renewal fee to the International
If the U.S. Application or
registration that forms the basis of the international
registration is abandoned, cancelled or expires,
will the international registration be cancelled?
Possibly yes. For the first
5 years, the international registration is completely
dependent on the U.S. basic application or registration.
This means that, during the first 5 years of
the life of the international registration,
if the U.S. basic application or registration
is refused, withdrawn, cancelled or restricted,
in whole or in part, then the International
Bureau will cancel the international registration.
A refusal or cancellation of a basic application
or registration after the end of the 5-year
period will also result in the cancellation
of the international registration, if the action
that caused the refusal or cancellation began
within that 5-year period. However, after the
5-year period has ended, the international registration
becomes independent of the basic application