Madrid designations into the US, and their Office actions

The Madrid Protocol lets the owner of a home-country application or registration (the basic mark) file one international application through its own trademark office, administered by WIPO, and designate the countries where it wants protection. A designation of the United States is called a request for extension of protection. At the USPTO it is examined as an application under Section 66(a) of the Lanham Act (15 U.S.C. §1141f).

What it costs

The United States charges an individual fee of $600 per class for a §66(a) designation, collected by WIPO (USPTO fee schedule; 37 C.F.R. §2.6(a)(1)(ii)(A)). The fee is higher than the $350 per class for a direct US application. You pay it whether or not the designation is refused.

How the USPTO examines it

A §66(a) application is examined like any other US application, for the same refusals: likelihood of confusion, descriptiveness, failure to function and the rest (TMEP §1904.02(a)). A few differences matter.

• No proof of use before registration. No specimen is required to register. The holder must still have a bona fide intention to use the mark in US commerce.
• The basis cannot be changed. A §66(a) application cannot be converted to a use-based or §44 application.
• Classification is fixed by WIPO. The USPTO does not reclassify. Goods that the USPTO considers to belong in another class must be deleted rather than moved (TMEP §1904.02(b)).
• Identification must meet US standards, within the international registration's scope. Broad terms accepted at WIPO are often refused in the US as indefinite. You may clarify or narrow them, but not broaden them beyond the international registration (TMEP §1904.02(c)). This is the most common requirement in Office actions for Madrid designations.
• Translations and descriptions. Non-English wording needs an English translation (37 C.F.R. §2.32(a)(9)). Under the doctrine of foreign equivalents, that translation is what is tested for descriptiveness and confusion. See our commentary on KAHWA and foreign equivalents.

The Office action

If the examining attorney refuses or requires something, the USPTO sends a notice of provisional refusal to WIPO, which forwards it to the holder. The USPTO must do this within 18 months of WIPO's notification of the designation. If it does not, the designation cannot be refused on that ground (15 U.S.C. §1141h(c); TMEP §1904.03). The refusal is also posted in the US record in TSDR.

• Deadline: six months from the issue date, with no extension (37 C.F.R. §2.62(a)). Missing it abandons the US designation, unless a petition to revive succeeds (37 C.F.R. §2.66).
• Who must respond: a holder domiciled outside the United States must be represented by a US-licensed attorney to respond (37 C.F.R. §2.11(a)). The home-country attorney who filed the international application cannot answer the US Office action unless licensed in a US state. Allow time to find and instruct US counsel. Six months passes quickly once translation and review are included.
• Where to respond: directly to the USPTO, not through WIPO or the home office.

After registration

• Section 71 declarations. Between the 5th and 6th anniversary of the US registration date, and in the year before each 10th anniversary, the holder must file a declaration of use in US commerce, with specimens, for each class ($325 per class; 15 U.S.C. §1141k). There is a six-month grace period with a surcharge. Missing it cancels the US protection even if the international registration continues. In USPTO audits from November 2017 to April 2021, owners could not verify previously claimed use for 67 percent of audited §66(a) registrations (USPTO audit webinar, June 3, 2021). See keeping your registration alive.
• Renewal is through WIPO, every ten years from the international registration date (37 C.F.R. §7.41; Madrid Protocol, arts. 6(1), 7(1)).
• Dependency. For five years from the international registration date, the international registration depends on the basic mark. If the basic mark is cancelled or limited in that period, the US protection falls with it. The holder may then transform the US protection into a US national application within three months, keeping the original date (15 U.S.C. §1141j).

Madrid or a direct US filing?

Madrid is efficient when you want several countries and your goods are described in terms that will pass US examination. A direct US application under §1 or §44 lets you choose the basis. It allows a three-month extension to respond to Office actions (37 C.F.R. §2.62(a)), avoids dependency on a home-country mark, and lets you draft the identification for US practice from the start. Neither route avoids US examination or the US-counsel rule for foreign-domiciled owners.

Expect invoices from private companies that look official after your international registration is published. WIPO says that "trademark users are receiving invitations to pay fees that do not come from WIPO." It publishes examples (WIPO, warning about requests for payment). See spotting trademark scams.

When an attorney earns their fee

For foreign-domiciled holders a US attorney is required to respond (37 C.F.R. §2.11(a)). The fee is best spent early. Ask counsel to review the identification of goods for US practice before the international application is filed, so that the US designation does not inherit wording that must later be narrowed or deleted.

This guide is general information, not legal advice.