A trademark owner may be able to use its USPTO trademark application or registration as the basis for obtaining trademark protection in other countries through the Madrid Protocol, a treaty formally known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. It allows trademark owners to apply for registration in any of the member countries (or intergovernmental organizations), through the filing of a single “international application.” The Madrid System is administered by the World Intellectual Property Organization (WIPO).
To utilize the Madrid System, the trademark owner first applies for or obtains a trademark registration in a country that is a member of the Madrid Protocol and which the owner is a national of, or is domiciled in, or in which the trademark owner has a real and effective industrial or commercial establishment. That application or registration can then serve as the basis (called the “basic application” and the “basic registration”) on which an international Madrid application can be filed.
The trademark in the international application must be the same as the one in the basic application or basic registration, and the goods or services identified in the international application must be the same as, or narrower than, the goods identified in the basic application or basic registration.
When preparing the international application, the trademark owner identifies (“designates”) the country or countries that are Madrid members and in which it wishes to obtain protection, and submits the required fees.
Although WIPO administers the Madrid System, the trademark owner submits its international application directly to the trademark office that issued the basic registration or is reviewing the basic application. That trademark office certifies the international application to verify that the applicant, the trademark, and the associated goods or services in the international application are consistent with those in the “basic” documents and then forwards it to WIPO. WIPO, in turn, examines the application for compliance with certain formality requirements, an "international registration" is created, and WIPO then forwards a request for extension of the protection of the international registration to whichever countries the trademark owner identified in the application.
Those countries then examine the application according to their own laws. If they find that the trademark is entitled to protection, they will issue an "extension of protection" of the international registration in their country. These extensions of protection have the same effect as if they were national registrations but which can be renewed simply by renewing the international registration at WIPO.
Note that if the basic application or registration is abandoned, canceled, or expires at the national trademark office within five years from the date of the international registration, the international registration and all of the extensions of protection will be canceled in each of the countries in which it was in effect. The date of the international registration is either:
- The date the national trademark office received the international application from the trademark owner, if WIPO receives it within two months of the date the national office receives it, or
- The date WIPO receives the application, if it receives it more than two months after the national office received it.
If you wish to file an international application via the Madrid System based on a USPTO application or registration, and to use that application to request protection in any other member of the Madrid Protocol, an online application is available in the Trademark Electronic Application System (TEASi).
For more information, see the USPTO's Madrid Protocol webpage.