How Does the Madrid Protocol Work for a U.S. Trademark Owner?

The Madrid Protocol does not create a worldwide trademark. It creates a single international application, filed through the USPTO and recorded by the World Intellectual Property Organization (WIPO), that each country you designate then examines under its own law. You get one filing, one language, one set of fees in Swiss francs, and one renewal date. In exchange, your foreign rights depend on your U.S. application or registration for five years, and the goods you can claim abroad are capped by what your U.S. filing covers. The Madrid Protocol and international registration work we do at Capitol Law Partners starts by testing whether that trade-off fits the client’s markets.

Who can file through the USPTO and on what basis

To use the USPTO as your office of origin, you must be a U.S. national, be domiciled in the United States, or have a real and effective industrial or commercial establishment here. A Delaware entity with no U.S. operations does not automatically qualify on the establishment ground, so confirm the basis before relying on it.

You also need a basic mark: a pending U.S. application or an issued U.S. registration, in the same owner’s name, for the same mark. The international application may list goods and services no broader than the basic mark, and because U.S. identifications tend to be narrower than those accepted abroad, the international filing inherits that narrowness. That is one of the main reasons to consider direct national filings in some countries, a comparison we lay out in Madrid or direct filing.

Step by step: from the USPTO to WIPO to each country

1. File the international application through the USPTO’s electronic system, designating the countries you want and paying the USPTO’s certification fee plus the WIPO fees.
2. The USPTO checks that the mark, owner and goods match the basic mark and certifies the application to WIPO. If WIPO receives it within two months of the USPTO’s receipt, the international registration date is the date the USPTO received it.
3. WIPO examines for formalities only, records the international registration, publishes it in the WIPO Gazette and notifies each designated office.
4. Each designated office examines the mark under its own law. It has 12 months, or 18 months for countries that have opted for the longer period, to issue a provisional refusal. Silence within that period means protection is granted.
5. If an office issues a provisional refusal, you respond under that country’s procedure, usually through local counsel we engage and supervise. A refusal in one country has no effect in the others.

Each country then treats the extension as the equivalent of a national registration, subject to its own use requirements and its own rules on oppositions by local parties.

Dependency, central attack and transformation

For five years from the international registration date, the international registration depends on the U.S. basic mark. If the U.S. application is refused or abandoned, or the U.S. registration is cancelled or restricted during that period, the international registration falls to the same extent, and so does every designation that relied on it. This is called central attack, and it is the Madrid system’s main structural risk. A competitor who wants to clear your mark from several countries at once can do it by attacking the one U.S. filing.

The fallback is transformation. Within three months after the international registration is cancelled, you may file a national application in each affected country that keeps the original date. Transformation preserves priority but costs a full national filing in every country, so it is an expensive rescue rather than a free one. The practical defense is to clear the U.S. mark carefully before filing abroad; our trademark search and clearance review is where a Madrid strategy should begin.

After registration: renewals, additions and changes

The international registration lasts ten years and is renewed centrally through WIPO for all designations at once. You can add countries later by subsequent designation, which is useful when a business expands market by market. Changes of ownership, name and address are recorded once with WIPO and flow to every designated office, provided the new owner is itself entitled to use the Madrid system.

Two maintenance points are easy to miss. The U.S. basic registration still has its own Section 8 and Section 9 deadlines, described in when a Section 8 declaration is due, and letting it lapse inside the five-year dependency period triggers central attack. And several countries require use within a set period after registration, often three to five years, or the local registration becomes vulnerable to cancellation for nonuse. Central renewal keeps the registration alive; it does not satisfy local use rules.

Costs and whether Madrid fits

The fees are a basic fee, a per-country fee that is either a standard complementary fee or an individual fee set by that country, and a supplementary fee for extra classes in some cases. WIPO publishes a fee calculator; check it rather than relying on figures in any article. Because no local counsel is needed unless a refusal issues, Madrid is usually cheaper than separate national filings when you designate several countries and the mark is not likely to draw refusals.

Madrid fits less well when your key market is not a member, when you need broader goods descriptions than the U.S. basic mark allows, or when the basic mark itself is vulnerable. Businesses with more than a few foreign filings generally manage the combination of Madrid and national registrations through our IP portfolio management service so that dependency dates, local use deadlines and renewals sit on one docket.

If you are planning to extend a U.S. mark abroad, Capitol Law Partners can confirm your eligibility, align the goods description, select the countries and file the Madrid Protocol application through the USPTO. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our Madrid Protocol and international trademark registration page or schedule a consultation.