The Madrid Protocol is a treaty adopted to improve the trademark registration system. The United States is a party to the Protocol. For the basic workings of how to file a trademark application through the Madrid Protocol review our web page entitled, International Trademark Filings. The international application must include the filing date and serial number of the U.S. application or the registration date and registration number if the Madrid filing (international application) is based on a U.S. registration.
The owner of the international application must be the same as the owner of the U.S application or registration. If it is not the United States Patent & Trademark Office ("USPTO") will check the Assignment Branch records to determine whether an assignment affecting title was recorded. If assignment records do not show a clear chain of title to the international applicant, the application will not be able to be certified. An international applicant could attach a copy of the assignment with the international application, if the assignment was recently filed, but not yet recorded.
If the information contained in the international application is consistent with the details of the U.S. application or registration, The USPTO will certify the international application and forward it to the International Bureau ("IB") of the World Intellectual Property Organization ("WIPO") in Geneva Switzerland. The Madrid Protocol Unit will notify the international applicant if the application was certified. If the application cannot be certified, the applicant will be notified as well and the USPTO will refund any international fees paid, but the certification fee will not be refunded. If an applicant believes the refusal to certify the international application was in error, a petition to the Director can be filed and the refusal will be reviewed for error. For more details on filing a petition with the Director, see Trademark Manual of Examining Procedure §1902.03(a).
Once the IB receives the international application, it will be reviewed. If irregularities are discovered, then the USPTO and the international applicant are notified. Depending on the type of irregularity identified, some must be corrected by the applicant and others only by the USPTO. If the applicant is the party responsible for the correction, it can file a response either directly with the IB or through the USPTO electronically or on paper.
Once an international registration issues, the applicant or registrant can request a subsequent designation to extend protection of the international registration to additional Contracting Parties. This is an advantage of filing through the Madrid Protocol. However, a disadvantage is that an international applicant will be dependent on the U.S. application or registration remaining valid for a period of five years from the date of the international registration. The date for the international registration is determined by the following: (1) if the IB receives the application within two months of the date of receipt in the USPTO, then the registration date is the date of receipt in the USPTO; and (2) if the international application does not reach the IB within this two month period then the date of registration is the date of receipt by the IB.
The USPTO has an obligation to notify the IB if the U.S. application or registration is restricted, abandoned, cancelled or expired in connection with some or all of the goods listed in the international registration within five years of the registration date or if the action that resulted in either restriction, abandonment, cancellation or expiration commenced before the end of the five year period. The IB will cancel (or restrict) the international registration in accordance with the USPTO's notification.
Once the IB takes action to cancel or restrict, the registration cannot be reinstated. If this occurs the international registrant can take action to transform the international registration to a national application in the offices of the Contracting Parties where protection was extended. This transformation request must occur within three months from the date of cancellation of the international registration. The transformation request is filed directly with the designated Contracting Party and is reviewed as a national application under the laws of that Contracting Party. The advantage of transformation is that the applicant can maintain the date of the original international registration.
Before deciding to file a national application or an international application through the Madrid Protocol, we recommend consulting with trademark counsel. There may be strategic reasons why an applicant may choose one method of filing over another. We would be happy to provide you with a courtesy consultation if you are considering seeking trademark protection outside the U.S.