Outbound Madrid Protocol application process

To file using the Madrid Protocol through the United States Patent and Trademark Office (USPTO), you must ensure that the USPTO can be your office of origin. Read about the specific requirements on the outbound applicants page.

Most importantly, you’ll need an existing U.S. trademark registration or pending U.S. trademark application and the corresponding registration or serial number. This will be referred to as your “basic” registration or application. 

If you’re using a pending U.S. trademark application as the basis for your international application, we strongly recommend you wait to file your international application until you receive your 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 our tips for filing an outbound application for more information and recommendations to consider before you file. 

Multiple basic registrations or applications

You can use multiple U.S. applications or registrations as basics for a single international application. This could be helpful if you want to combine all the goods or services that your trademark covers in the United States into a single international application. 

The following must be identical in all basic applications and registrations:

• Owner information
• Trademark
• Trademark description
• Color claim (if the trademark is in color)

Priority filing date

You can claim a priority filing date if you file your international application within six months of filing your basic trademark application. The effective filing date of your international application will be the date you filed your basic application at the USPTO only if your international application is received by the International Bureau within two months of filing it. See our tips for filing an outbound application for more information. 

You must use the Trademark Electronic Application System International (TEASi) to file your international application form.  

Entering your information in the form

The information you enter into the TEASi form must be identical to the basic application or registration information in our Trademark Status and Document Retrieval (TSDR) system—even a minor difference or misspelling will result in your international application being denied certification.  

Using the prepopulated form

The easiest way to ensure your information matches is to choose the “prepopulated” form option in TEASi. If you don’t change any prepopulated text, we’ll automatically certify your application. If you make changes, it will trigger a manual review.  

You can't use the prepopulated form if you are:  

• Using more than one basic application or registration for your international application.
• Your basic application has not been fully loaded into USPTO systems yet. It may take up to 10 days for a newly filed U.S. trademark application to be loaded into our computer systems.
• You recently filed a new assignment that is not yet reflected in the record.

Manually entering your information

If you can’t use the prepopulated form, you must file using the free-text version of the international application form. Fill out the form using only the information in TSDR for your basic application or registration. Do not use the information in the trademark search because it is formatted differently and doesn’t reflect how it should be entered into the international application.

Designating countries for extension of protection

In the international application form, you must designate at least one country to extend protection of your international registration. You can extend protection to more countries later with subsequent designations, but only after your international registration issues.  

Meeting deadlines during an outage

If you must file today to meet a deadline, but a USPTO system outage is preventing you from filing your application through TEASi, you may use an alternative filing method.

Including required email addresses

The International Bureau requires email addresses for all applicants and their representatives. If these are not in your international application, your registration will be delayed until they are included.

You must pay two different fees with your international application: 

• A certification fee, calculated in U.S. dollars
  You must pay the certification fee immediately to the USPTO when you file. It isn’t refundable.

• An international fee, calculated in Swiss francs
  We recommend paying the international fee directly to the International Bureau in Swiss francs after the application has been certified and forwarded to the International Bureau. You can also pay it through the USPTO in U.S. dollars when you file. 

See the Madrid fee payment options for detailed information. 

After you submit your international application and pay the certification fee, we review your application to certify that it matches the information in your basic application(s) or registration(s). If we find no differences, we certify the international application and forward it to the International Bureau. If we find any differences, we issue a denial of certification. If you paid the international fee through the USPTO when you submitted your application, we'll refund it to you. We won’t refund the certification fee.

What to do if you get a denial of certification notice 

If you receive a denial of certification notice, and you still want to pursue international registration through the Madrid Protocol, you can: 

• File a new international application that corrects the outstanding issues. 
• File a Petition to Director to review denial of certification to request that the denial be reversed. A petition fee is required, and there is no guarantee that the petition will be granted. It should be filed as soon as possible.

The International Bureau reviews your application to make sure all required information has been provided. If they find problems, they issue a notice of irregularity. You must respond to the notice and correct the problems before they can issue your international registration. 

We encourage you to review the information on avoiding mistakes and responding to notices of irregularity. 

When you have corrected all problems, the International Bureau issues you an international trademark 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. Learn more about each country's rules and laws on its WIPO Madrid member profiles page.

Many Madrid member trademark offices require you to be represented by a local attorney licensed to practice law within their jurisdictions. The USPTO can’t help you in any Madrid matters with foreign trademark offices.

After receiving your international registration, you can file subsequent designations to extend protection of your international registration to additional Madrid members. 

If you already have a registered extension of protection in a particular Madrid member, you can use subsequent designations to seek protection for additional goods or services that are included in your international registration but were not in your initial request for extension of protection.

Subsequent designations can be filed directly with the International Bureau or through the USPTO, but you avoid a USPTO transmittal fee by filing directly with the International Bureau. You will go through the same process in Step 6 for each designated member in the subsequent designation form.

Your basic trademark registration or application and international registration are tied together for five years after the issue date of your international registration. During this time, called the dependency period, pay close attention to the maintenance requirements and deadlines for your basic registration. You must file the maintenance documents for your basic registration with the USPTO. If the basic registration is canceled during the dependency period, your international registration and all your extensions of protection will also be canceled. Similarly, if your basic application abandons during the dependency period, your international registration and all your extensions of protection will be cancelled.

You must file renewals for your international registration and all your extensions of protection with the International Bureau. Any additional maintenance requirements for your registered extensions of protection, such as proof-of-use filings, must be filed directly with the trademark office in each designated Madrid member.

See the outbound post registration page for complete information.