Westchester Women's Bar Association

More on Madrid Protocol Filings

The Madrid Protocol Implementation Act amended the Trademark Act of 1946 to put into effect the provision of the Madrid Protocol in the U.S. This allows U.S. trademark owners to register trademarks in the member countries of the Madrid Protocol by submitting an international application through the United States Patent & Trademark Office ("USPTO") to the International Bureau of the World Intellectual Property Organization ("IB'). The IB administers the Madrid System, the international registration system. In addition, the owner of a trademark application or registration in a foreign member country can obtain an international registration from the IB and request an extension of protection of the mark to the U.S., see our web page entitled, Holders of International Trademark Registrations Extending Protection to the U.S.

Some of the basic information pertaining to Madrid filings can be reviewed at our web page entitled, Madrid Protocol Trademark Filings. This web page will address some of the more detailed matters pertaining to international applications and registrations. Regarding special format marks, if the drawing in the basic application or registration is in black and white and does not include a color claim, the image submitted for the international application must be in black and white. If the basic application or registration contains a color image, then the mark submitted for the international registration must be color as well. However, if the basic application or registration is depicted in black and white, but has a color claim, then both a color image and a black and white image must accompany the international application.

Regarding classification, the Madrid Processing Unit does not certify classification of the goods and services in an international application. The IB has the authority to make final determinations pertaining to classification in an international application. For guidance on this matter see the following website. If the basic application is old, and if it utilized the U.S. classification system, it is recommended that the applicant reclassify into international classifications. Regarding use, the contracting party may notify the IB it requires a signed declaration of an intention to use the mark in that country. For example, the U.S. does require a declaration of bona fide intention to use the mark in commerce. The verified statement of bona fide use will remain part of the international registration on file with the IB. However, use in U.S. commerce prior to registration is not required for an international registration. See 15 U.S.C. § 1141h(a)(3). Once the registration issues, use by the holder should occur in U.S. commerce within two years, since three years of nonuse will result in a presumption of abandonment.

When using the TEAS system, the fees for all classes and for designated extensions are due at the time of submission of the international application. There is a basic filing fee charged by the IB, a supplementary fee for each class of goods or services beyond three classes, a complementary fee for designation of each member country, and a transmittal fee charged by the USPTO to process the international application. Failure to pay a fee to the IB before the IB receives a form could result in the IB issuing a notice of irregularity.

The term of an international registration is ten years and it may be renewed for ten-year periods. Renewal must be completed with the IB, on the IB website. The USPTO does not process renewal requests for international registrations. If the international registration is not renewed, the IB will notify the USPTO, and the USPTO will cancel the registered extension of protection. In addition, the IB will record changes and other matters pertaining to the International Registration. Some of the other matters may include a change in ownership, a change in the holder's name or address, or its representative, a limitation or cancellation of the international registration, or recording of a license. Keep in mind; it is not possible to change the mark in the international registration at any time or to broaden the list of goods and services. If you have additional questions regarding Madrid Protocol filings, please contact the firm for a courtesy consultation.

Client Reviews
Nikki's commitment to clients is unparalleled with her devotion and attention to detail in every assignment and aspect of intellectual property law. Damien Germino
Nikki Siesel is the most profound trademark lawyer I have worked with and she has thoroughly empowered me with her knowledge. Maria Jacobs