The Madrid Protocol

To file an international application through the USPTO, an applicant must have filed a U.S. application, called a "basic application" or received a U.S. registration, called a "basic registration." The mark and the owner of the international application must be the same as the mark and the owner of the basic application or registration. The international application must include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. The international applicant must pay the U.S. certification fee of $100 to the USPTO at the time of submission and identify at least one Contracting Party in which an extension of protection (that is, registration of the trademark) is sought. Fees are also payable to the International Bureau of World Intellectual Property Organization (WIPO) in Geneva. The International Bureau of WIPO requires payment of fees based on the particular Contracting Parties designated in the international application and the number of classes of goods and/or services specified in the international application.

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. The International Bureau of WIPO does not examine the application for substantive matters such as distinctiveness or likelihood of confusion. It requires compliance with only minimum formalities before transmitting the international application to each national office designated by the applicant. 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 issue a registration for the mark in that country, thereby avoiding the expense of retaining foreign counsel. The protection of the mark is the same as if the mark had been registered directly with the national office as of the date of the international filing. Only in the event that the Contracting Party finds that the application does not meet the requirements for registration in that country, does foreign trademark counsel need to be retained, in order to respond to the refusal to register.

Designations of protection to additional member countries may be made after registration; as such, the system facilitates the expansion of trademark rights as the trademark owner expands into new markets. An international registration is subject to renewal ten (10) years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau. Renewal of the ten year term is accomplished in a single step with a single fee. This process represents a savings in time and effort, as it is not necessary to instruct foreign representatives in individual countries to complete renewals.

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