This is a page explaining the Madrid Extension for Trademarks under the Madrid Protocol. The Madrid Protocol is an agreement between Countries which allows Trademark Owners and Filers to select multiple countries in which to file a trademark application.
This site is designed to be an informative site for trademark practitioners who have filed an International Trademark Application using the Madrid Protocol. Below are headings which when clicked provide additional information for the trademark practitioner when after filing the International Trademark Application.
The Madrid Extension is the extension of the application of a trademark into another state (country) and is governed under the Madrid Protocol. The Madrid Protocol is the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. This is an international treaty that allows a trademark owner to seek a trademark registration in any of the countries that have joined the Madrid Protocol ("Contracting Party") by filing a single application, called an "international application." The International Bureau of the World Intellectual Property Organization (WIPO), in Geneva, Switzerland administers the international registration system.
Once the International Bureau registers the mark, the International Bureau will notify each Contracting Party (state/country) designated in the international registration of the request for an extension of protection to that country. Each designated Contracting Party will then examine the request for an extension of protection in the same manner as it would a national application under its laws. If the application meets the requirements for registration of that country, then the Contracting Party (state/country) will grant protection of the mark in its country. If not, then it will issue and office action rejecting the application and then inform the applicant.
There are strict time limits for refusing to grant an extension of protection (a maximum of 18 months). If a Contracting Party does not notify the International Bureau of any refusal of an extension of protection within the time limits set forth in Article 5(2) of the Madrid Protocol, the holder of the international registration is automatically granted protection of its mark in that country.
Yes. The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties. A subsequent designation may also be used to extend protection to goods or services that were not originally extended to the previously designated Contracting Parties. For example, if a trademark owners sought international registration of five classes of goods and services, but limited the initial designation to only one class of goods to the identified Contracting Parties, the holder of the international registration can later designate any or all of the goods/services covered by the international registration to both those countries previously identified or to new countries designated in the subsequent designation.
Antigua and Barbuda .
Bosnia and Herzegovina
Democratic People's Republic of Korea
Iran (Islamic Republic of)
Republic of Korea
Republic of Moldova
Sao Tome and Principe
Syrian Arab Republic
The former Yugoslav
Republic of Macedonia
United States of America
Yes. If the holder of an international registration is a national of, has a domicile in, or has a real and effective business or commercial establishment in the United States and the international registration is based on a U.S. application or registration, then the subsequent designation may be submitted to the USPTO using either the electronic form provided or on paper. A USPTO transmittal fee is required in either case. The holder also has the option of filing a subsequent designation directly with the International Bureau.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter ("Office Action") explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. Only attorneys licensed to practice in any state of the United States are authorized to file responses to Office Actions. Therefore, non-US attorneys must associate with a U.S. trademark attorney to continue pursuit of a registration. This site's sponsor Collard & Roe, P.C. has substantial experience in handling these types of applications. The applicant's response to the Office action must be received in the Office within six (6) months of the mailing date of the Office action, or the application will be declared abandoned. If you would like further information or assistance please contact Collard & Roe, P.C. at email@example.com