The Madrid Protocol registration process starts when a trademark owner files an international application through an office of origin, which is usually the intellectual property (IP) office of the country where they reside, are a citizen, or have a business, and where they initially filed their trademark application. The international application is reviewed by the International Bureau of the World Intellectual Property Organization (WIPO). If it meets their requirements, WIPO issues an international registration and publishes your registration in the WIPO Gazette of International Marks. Then, they forward your requests for extension of protection to all the individual Madrid members you designated in your international application. Individual Madrid members examine your requests for extension of protection according to their national trademark laws.
If the United States Patent and Trademark Office (USPTO) is your office of origin, you’re an “outbound” applicant who will file an international application with the USPTO.
Preparing to file using the Madrid Protocol
Establish your eligibility to file through the USPTO
Before you can start filling out your international application, you’ll need at least one of the following:
- A U.S. trademark registration
- A pending U.S. trademark application
Either of these can serve as the “basic” registration or application on which your international registration is based.
If you’re basing your international application on a pending U.S. application, we strongly recommend you wait to file the international application until after receiving the first USPTO office action. Your office action will tell you if there are reasons why your trademark can't be registered in the United States, which could impact your international registration. See tips for filing an outbound application to learn more.
In addition to having a U.S. registration or application, you must also meet at least one of the following conditions:
- Be a national of the United States
- Have a domicile address in the United States
- Have a real and effective industrial or commercial establishment in the United States
If you do not have a U.S. application or registration or have not satisfied one of the above conditions, you can’t file an international application through the USPTO. You may still be able file through another Madrid member in which you meet the requirements. See the International Bureau’s page on how the Madrid System works.
Fees
When you file an international application through the USPTO, there are two fees:
- A fee for certifying your international application, paid to the USPTO
- A fee for registering the international application and filing requests for extension of protection in your designated Madrid members, paid to WIPO
The fees for Madrid Protocol applications vary widely depending on the countries where you choose to apply. Before you file, see our Madrid Protocol filing fee payment options.
Attorney requirements
If you’re domiciled in the United States, you may file an international application through the USPTO without an attorney.
If you’re a foreign-domiciled applicant using a U.S. registration or application as your basic application, you need a U.S.-licensed attorney to file your international application through the USPTO.
Regardless of where you’re domiciled, after you obtain the international registration, you’ll likely need to hire an attorney licensed to practice law in each country that you seek to register your trademark. Many intellectual property offices around the world have longstanding attorney requirements for foreign trademark applicants. You can find these requirements on the Madrid member profiles database on WIPO’s website.
How to file
See the outbound application process for a step-by-step description of filing with the Madrid Protocol. You can also watch the recorded webinar Navigating the Madrid Protocol: USPTO as Office of origin.
To file your international application, use the online forms in our Trademark Electronic Application System International (TEASi). The TEASi online filing page has descriptions and links to the forms.
If a system outage prevents you from filing your application through TEASi, and you need to file today, see filing during an outage.
After you submit your international application, there will be additional stages in the process to obtain and maintain registrations with individual Madrid members.