How the Madrid system works.
The Madrid System for the International Registration of Marks is administered by the World Intellectual Property Organization (WIPO) and governed by the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989), to which the United States acceded on November 2, 2003, together with the Common Regulations under the Madrid Agreement and the Madrid Protocol. The earlier Madrid Agreement (1891) remains technically in force but is not the relevant treaty for U.S. practice.
The mechanics: an applicant files an international application through the office of origin — the national trademark office where a basic application or registration exists. The office of origin certifies the international application and forwards it to the WIPO International Bureau. WIPO examines for formalities and, on acceptance, records the international registration. Each designated contracting party then examines the designation under its own substantive law, with a refusal period of twelve months (or eighteen months, depending on the country's declaration under Article 5(2)). The international registration remains a single instrument, valid in each designated country, renewable centrally every ten years from the date of international registration under Article 7 of the Protocol.
Outbound: U.S. clients designating jurisdictions abroad.
For a U.S. client expanding internationally, Madrid is one of two vehicles for foreign trademark protection. The other is direct national filing in each country of interest. Which is appropriate depends on the portfolio, the countries, and the strategic considerations below.
The basic application requirement
A U.S. applicant filing through Madrid must have a U.S. application or registration as the basis — the international application is, in effect, an extension of the U.S. filing. The scope of the international registration is bounded by the scope of the basic application: the mark must be the same, the goods and services cannot exceed those in the basic application, and the applicant must be the same entity. The USPTO serves as office of origin and certifies the international application before it goes to WIPO.
The five-year dependency period and central attack
For five years from the date of international registration, the international registration is legally dependent on the underlying U.S. basic application or registration under Article 6 of the Protocol. If the U.S. basic application is refused, withdrawn, cancelled, restricted, or otherwise ceases to be in force during that five-year period — for any reason, including grounds unrelated to the Madrid filing — the international registration falls or is restricted to the same extent across every designated country.
This is known as central attack, and it is the most consequential strategic feature of the Madrid system. A successful opposition or cancellation against the U.S. basic application in years one through five cascades through the entire international portfolio. Mitigation depends on the case: file Madrid designations only after the U.S. basic application is reasonably stable; defend U.S. refusals and challenges zealously during the dependency window; and, for marks at material risk, consider direct national filings in priority countries instead of (or in addition to) Madrid designations.
Transformation under Article 9quinquies
If central attack succeeds and the international registration is cancelled in whole or in part, the holder has three months from the date of cancellation to convert — to transform — the affected designations into national applications in each designated country, under Article 9quinquies. The transformed national applications preserve the priority date of the original international registration, which is the principal benefit of transformation. The cost is significant: transformation fees apply in each country, plus the legal work of converting the cancelled designations into stand-alone national filings. Transformation is the safety valve for central attack, not a strategy.
Country selection strategy
Madrid is efficient for portfolios designating multiple contracting parties from a single application. It is less efficient for single-country filings, for jurisdictions with high refusal rates that drive substantial local prosecution work, and for matters where local counsel relationships have independent strategic value. Three considerations recur.
The European Union. A designation of the European Union through Madrid produces a registration with the European Union Intellectual Property Office (EUIPO) — the European Union Trade Mark (EUTM), formerly the Community Trade Mark. The alternative is filing directly with EUIPO outside the Madrid system. Madrid is usually cheaper and procedurally simpler for adding the EU to a multi-country international application; direct EUIPO filing is sometimes preferable where the EU is the only foreign jurisdiction of interest or where EUIPO-specific strategic considerations apply.
High-refusal jurisdictions. China, India, Brazil, and several Latin American jurisdictions have meaningfully higher refusal rates on Madrid designations than on direct national filings, often because Madrid identifications of goods do not satisfy local specificity requirements. In these jurisdictions, expect office actions and budget accordingly. Sometimes direct national filing produces a smoother prosecution despite the higher up-front cost.
Adding designations later. A subsequent designation can be filed at any time after the international registration issues, under Rule 24 of the Common Regulations. Country selection at initial filing is not irreversible.
Inbound: foreign clients designating the United States.
The reverse direction: a foreign holder of an international registration designates the United States, and the USPTO examines the designation under U.S. substantive law. Both ends of this work fall within the practice's scope — U.S. prosecution of inbound Section 66(a) applications, including coordination with the foreign holder's home counsel where applicable.
Section 66(a) applications
When a foreign holder designates the United States through Madrid, the USPTO treats the designation as an application under 15 U.S.C. § 1141f — a Section 66(a) application. The application is examined under the substantive standards that govern any other U.S. trademark application: distinctiveness, likelihood of confusion under § 1052(d), descriptiveness under § 1052(e), and the rest. Foreign-domiciled applicants are required to be represented by a U.S.-licensed attorney for prosecution under 37 C.F.R. § 2.11.
U.S. office actions on Section 66(a) applications
Section 66(a) applications draw office actions at rates comparable to domestic applications, with two notable differences in the pattern. First, identification-of-goods objections are unusually common: Madrid filings frequently include broader identifications than U.S. specificity requirements permit under TMEP § 1402, requiring amendment to satisfy the examining attorney. Second, no specimen is required for a Section 66(a) application — the USPTO accepts the international registration as evidence of registrability without proof of U.S. use. Substantive refusals under § 1052(d) and § 1052(e) are otherwise handled as they would be for a Section 1 application; see the Office Action Responses page.
Maintenance of U.S. designations
A registered extension of protection — the U.S. registration that issues from a Section 66(a) application — has its own maintenance regime. A declaration of use under 15 U.S.C. § 1141k (a Section 71 declaration, the parallel to Section 8 for domestic registrations) is due between the fifth and sixth year after registration, and again at each renewal. Renewal itself is handled through WIPO every ten years from the international registration date — not through the USPTO and not on the U.S. registration's own schedule. Coordinating the WIPO renewal schedule with the Section 71 declarations is part of the maintenance work covered on the Portfolio Management page.
How this practice handles Madrid work.
The work is sequenced according to the direction of the filing and the stage of the matter.
For outbound work: country selection, basis assessment (which U.S. application or registration anchors the filing), and central-attack risk evaluation. For inbound work: review of the international registration and the U.S. designation as docketed by the USPTO.
Outbound: drafting of the international application, coordination with the USPTO as office of origin, certification, and transmission to WIPO. Inbound: appearance as U.S. counsel of record, file review, and initial assessment of registrability.
Inbound Section 66(a) prosecution is handled directly. Outbound refusals in designated jurisdictions are handled through coordinating local counsel in each country, with the practice maintaining the central docket and strategic direction.
Section 71 declarations docketed and filed for inbound registered extensions. Outbound renewals through WIPO every ten years. Subsequent designations added under Rule 24 as portfolios expand.
What to expect.
Timing. An outbound international application typically takes one to two months from drafting to WIPO acceptance, after which designated countries have twelve to eighteen months to issue refusals. Most designations clear in eight to twelve months absent refusals; those that draw refusals run longer depending on the country and the grounds. An inbound Section 66(a) application typically receives U.S. examination within eight to twelve months of the USPTO's receipt of the designation from WIPO, with prosecution timelines parallel to domestic applications thereafter.
Cost structure. Outbound costs include WIPO basic fees, complementary fees per class per designated country (or individual fees for countries that have opted into the individual-fee regime under Article 8(7) of the Protocol — the United States is among them), USPTO certification fees, and counsel fees scoped to the number of designations and the complexity of the basic application. Inbound costs follow the pattern of domestic U.S. prosecution: initial response work scoped at engagement, with office action responses scoped separately if they arise. Detailed fee structures, including current WIPO schedules, are reviewed in the initial strategy call.
Frequently asked questions.
What is central attack, and how do we mitigate it?
Central attack is the legal dependency of the international registration on the underlying U.S. basic application or registration for five years from the date of international registration. If the U.S. basic application is cancelled, restricted, or otherwise terminated during that window — by opposition, cancellation, USPTO refusal, or voluntary withdrawal — the international registration falls or is restricted to the same extent across every designated country. Mitigation: delay Madrid designation until the U.S. basic application is reasonably stable; defend U.S. challenges zealously during the dependency period; and consider direct national filings in priority jurisdictions for marks at material risk.
When does Madrid make more sense than direct national filings?
Madrid is generally the more efficient vehicle for portfolios designating three or more contracting parties from a single international application, where the basic application is stable, and where the goods identifications are reasonably standard. Direct national filings often make more sense for single-country targets, for high-refusal jurisdictions where the local prosecution work is substantial enough to dominate the savings, and for matters where local counsel relationships have independent strategic value (acquisitions, licensing, enforcement coordination).
How does Madrid interact with the European Union Trade Mark?
A designation of the European Union through Madrid produces a European Union Trade Mark (EUTM) registration with EUIPO, valid in all twenty-seven member states. The alternative is filing directly with EUIPO outside the Madrid system, which produces the same EUTM but through a different procedural channel. Madrid is usually preferable when the EU is one of several jurisdictions in a multi-country international application; direct EUIPO filing is sometimes preferable when the EU is the only foreign jurisdiction of interest or when seniority claims against earlier national registrations in EU member states require careful handling.
Who handles refusals in designated countries?
Local counsel in each designated jurisdiction handle substantive refusals under that country's law. The practice maintains the central docket and strategic direction, briefs local counsel on the mark's history and the global portfolio considerations, and coordinates responses across multiple jurisdictions where the same refusal grounds arise. Clients with existing local counsel relationships can work with their own counsel; clients without can use the practice's coordinating contacts. Local counsel fees are paid directly to local counsel; this practice does not mark up local-counsel work.
Can additional countries be designated after the international registration issues?
Yes, through a subsequent designation under Rule 24 of the Common Regulations. A subsequent designation can be filed at any time after the international registration is recorded, for any contracting party not already designated, and adds that country to the existing international registration. The subsequent designation has its own fees and its own date of designation, but it is otherwise part of the same international registration and renews on the same WIPO schedule.
What if the U.S. basic registration is cancelled in year four?
Central attack: the international registration falls or is restricted across every designated country to the same extent the U.S. registration was cancelled. The holder has three months from the date of the international registration's cancellation to file transformation applications under Article 9quinquies in each designated country, converting the cancelled designations into national applications with the priority date of the original international registration preserved. Transformation is procedurally complex and expensive; whether it is economically sensible depends on which countries are at stake and what the alternatives look like.
How are Madrid registrations renewed?
Centrally through WIPO every ten years from the date of international registration, under Article 7 of the Protocol. A single renewal filing renews the international registration in every designated country simultaneously, with renewal fees calculated based on the countries designated and the class structure. The renewal does not follow the schedule of any underlying national registration — Madrid renewals are independent of U.S. Section 8 and Section 9 obligations, which apply only to the U.S. registration itself. Coordinating the two schedules is part of portfolio maintenance for clients with both Madrid and domestic registrations.
What's the difference between U.S. prosecution of a Section 1 application and a Section 66(a) application?
Substantive examination is the same: distinctiveness, likelihood of confusion, descriptiveness, and the rest under 15 U.S.C. § 1052. Procedurally, a Section 66(a) application requires no specimen (the international registration substitutes for the U.S. use evidence), the application cannot be amended to broaden the goods identification beyond what is in the international registration, and certain procedural mechanisms specific to Section 1 applications — such as amendment to allege use, division, and extension requests for Statements of Use — do not apply. Maintenance is under Section 71 (parallel to Section 8) rather than under Section 8 itself.