International Trademarks

International Trademark Protection with the Madrid Protocol

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 Protocol.

What is the Madrid Protocol?

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 registration system.

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 the USPTO.

What is the cost for filing an international application through the USPTO?

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 Bureau.

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 countries?

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 Bureau.

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 or registration.