Applying for International Trademark Registrations: Using the Madrid Protocol through the USPTO
If you search for international trademark registrations, you will almost certainly come across the “Madrid Protocol” high up in your search results. The Madrid Protocol is the common name for the international trademark registration treaty that makes possible a convenient system of using one application to register a trademark in multiple countries.
For those based in the U.S., the Madrid Protocol can be used to apply for registrations in other member countries. This article provides more information about the requirements and process for U.S. based trademark owners seeking international registrations using the Madrid Protocol through the United States Patent and Trademark Office (“USPTO”).
A. Eligibility Requirements
To be eligible to file using the Madrid Protocol, the trademark owner must have either:
A federal U.S. trademark registration; or
A pending federal U.S. trademark application.
The USPTO strongly recommends those with pending U.S. trademark applications to wait to start the international application process until after receiving the first USPTO office action as office actions can indicate reasons why the trademark cannot be registered in the U.S. which can impact international registration.
In addition to a U.S. registration or application, the trademark owner must meet at least one of the following conditions:
Be a national of the U.S.;
Have a domicile address in the U.S.; or
Have a real and effective industrial or commercial establishment in the U.S.
If the trademark owner does not meet these requirements, they are not eligible to file for international registration through the USPTO but may still be eligible to file through a different Madrid Protocol member.
B. Process & Fees
In practice, the application follows the following process:
The applicant files through the USPTO’s electronic international filing system, identifies the desired Madrid member jurisdictions, and pays USPTO and WIPO fees;
The USPTO reviews the submission only for certification against the U.S. record; minor differences or misspellings will result in denial.
If certified, the application is forwarded to WIPO, which conducts its own formal review. Once approved, WIPO records the trademark in the International Register and publishes it in the WIPO Gazette of International Marks.
WIPO will then send the trademark owners a Certificate of Registration and notice the IP offices of all of the Madrid system members that were designated. These offices perform substantive examinations of the mark. WIPO will notify the trademark owner of each office’s decision and update the International Register accordingly.
There are two types of fees for the application:
USPTO: A fee for certifying the international application ($200 per class as of 2026); and
WIPO: A fee for registering the international application and for filing requests for extension of protection in the designated Madrid members, paid to WIPO.
The amount of the second fee depends on many factors including number of classes and number of designated Madrid members. This fee can be approximated on WIPO’s website.
C. Limitations
As alluded to above, the Madrid Protocol has participating members which cover 132 countries. The Madrid Protocol can be used to file for registration in only these countries.
Additionally, international registrations filed through the USPTO are dependent on the U.S. application or registration for five years after the international registration date. This means that if the U.S. registration is refused, abandoned, cancelled, or restricted during this period, the international registration may be limited or cancelled accordingly.
If you are based in the U.S. and need assistance with international trademark registrations using the Madrid Protocol, we can help. Contact us here or book a consultation for more information.