Madrid Protocol Trademark Application Attorney: Global Protection

The Madrid System, governed by the Madrid Agreement and the Madrid Protocol, offers a centralized filing mechanism administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. For commercial entities expanding beyond domestic borders, this system can reduce the need to prepare separate initial filings in each designated jurisdiction, allowing an applicant to file one international application through the USPTO for designation of multiple Madrid System members. Each designated jurisdiction independently determines whether protection will be granted under its own trademark law.

Under Article 2(1) of the Madrid Protocol, a company seeking to file through the USPTO as its office of origin must satisfy specific eligibility criteria and maintain an active basic US application or registration.

• Basic Application or Registration: The international application must identify the same mark and the same owner as the U.S. .asic application or registration, and its goods and services may not exceed the scope of the U.S. .asic application or registration.
• Jurisdictional Connection: The applicant must be a United States citizen, be domiciled in the United States, or maintain a real and effective industrial or commercial establishment in the United States.
• During the first five years, the international registration remains dependent on the U.S. .asic application or registration. If the basic application or registration is abandoned, cancelled, invalidated, or limited, the international registration may be cancelled or limited to the corresponding extent, subject to applicable procedures.

New York corporations and limited liability companies with established office locations satisfy the commercial establishment requirement, and SJKP's attorneys verify these statutory prerequisites before initiating international filings. For broader IP defense strategies across domestic and international markets, consult our insights on Brand Protection and Trademark Law and comprehensive Trademark Registration procedures.

The international registration procedure follows a sequential administrative pathway across the USPTO, WIPO, and individual foreign trademark offices.

• Step 1 (USPTO Filing & Certification): The applicant submits the international application electronically, and the USPTO certifies that all details correspond to the basic US record before transmitting the file to WIPO.
• Step 2 (WIPO Examination & Publication): WIPO examines the application for formal compliance and, if accepted, records the mark in the International Register, publishes it in the WIPO Gazette, and notifies the designated members. Each designated member then independently examines the request for protection under its domestic law.
• Step 3 (Foreign Country Examination): A designated member generally has 12 months to notify a provisional refusal, although some members have declared an 18-month refusal period. Certain exceptions may permit later notification in limited circumstances.

Designating target jurisdictions requires balancing commercial expansion goals against WIPO individual fee structures, and priority target markets for New York-based companies frequently include the European Union (EUIPO), the United Kingdom (UKIPO), Canada (CIPO), China (CNIPA), Japan (JPO), and South Korea (KIPO). SJKP assists corporate leadership in structuring designations efficiently, and for guidance on legal transfers or structural portfolio changes, review our overview of Trademark Assignments.

Filing international trademarks involves specific procedural requirements that require careful attention to preserve priority rights and maintain protection.

Six-Month Priority Claim: Applicants must file within six months of their basic US filing date under the Paris Convention to claim the original US priority date abroad.

Goods and Services Specification: Identifications must satisfy USPTO precision standards while remaining acceptable under international classification systems to avoid administrative refusals.

Provisional Refusals: Substantive objections issued by foreign offices require direct legal responses through local associate counsel within strict statutory response windows.