Welcome to the Madrid Protocol US filers resource page, provided by Oppedahl Patent Law Firm LLC. In coming months we hope to add articles to this web site which help to explain Madrid Protocol issues to US practitioners. Contributions are welcome. We also hope to provide links to articles and resources on other web sites which help to explain Madrid Protocol issues to US practitioners.

Here is the first Madrid Protocol REP to have been published in the Official Gazette.

If you want to e-file a Madrid Protocol application in the US as the Office of Origin, this is the place: MiTEAS system for e-filing of Madrid Protocol applications.

One year of the Madrid Protocol, an article discussing numbers and trends of Madrid Protocol filings into and out of the US during that first year.

How many US Madrid Protocol filings have there been? Where are the REPs coming from?

The Final Rules promulgated by the USPTO provided that Madrid Protocol applications filed with the USPTO as Office of Origin were required to be filed electronically. When the release date arrived, however, the USPTO announced a "temporary" suspension of this requirement (from November 2, 2003 to January 2, 2004) so that filers would be able to file on paper. You can see an article "How to file a Madrid Protocol trademark application on paper with the USPTO" which is intended to explain how to do paper filings correctly. The article refers to an editable PDF form MM2 which is the preferred way to do such a filing. The Trademark Office has also posted an article USPTO Tips For Filing On Paper on this subject.

• WIPO resources
  • How to set up a deposit account at WIPO
  • Highly recommended! Guide to the International Registration of Marks Under the Madrid Agreement and the Madrid Protocol (this is a 700-kb file and is 188 pages in length)
  • Forms
  • Fees and fee calculator
  • links to the text of the Madrid Agreement, the Madrid Protocol, the regulations, and the administrative instructions
  • WIPO's Madrid Express database
  • Twenty Questions About the Madrid Protocol (PDF)

  • WIPO publication no. 418 -- The Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement: Objectives, Main Features, Advantages	General information
    Introduction Objectives Who May Use the System? The International Application Refusal of Protection Effects of the International Registration Dependence on the Basic Mark Subsequent Designation Changes in the International Register; Cancellation Duration of Registration; Renewal Advantages of the System	Introduction Who May Use the Madrid System? Where can a mark be protected? Filing an international application The International Registration Effects in Designated Countries; Refusal Dependence on Basic Registration or Application Term of Registration; Renewal

  • Information Notice No. 15/2003 - Accession by the United States of America (August 6, 2003)
  • List of member countries
  • WIPO Gazette of International Marks - Statistical Supplement for 2002 (shows numbers of Madrid filings, broken down by country)
  • WIPO's web page on the Madrid System
• US resources
  • Trademark Standard Character Set
    • Table of supported and unsupported standard characters
    • Federal Register notice of September 23, 2003 about standard characters
    and
  • Modification to Temporary Postponement of Electronic Filing and Payment Rules for Certain Madrid Protocol-Related Rules (dated November 7, 2003)
  • Madrid Protocol e-filing forms on USPTO web site
  • The Madrid Protocol: Frequently Asked Questions by U.S. Trademark Owners Seeking International Rights (posted October 31, 2003)
  • Tips for paper filers (posted October 31, 2003)
  • Electronic forms for submitting Madrid-Protocol related documents are unavailable (posted October 31, 2003)
  • Exam Guide No. 1-03 -- Changes Affecting All Applications and Registrations (posted October 31, 2003)
  • Exam Guide No. 2-03 -- Guide to Implementation of Madrid Protocol in the United States, October 28, 2003
  • Temporary Postponement of Electronic Filing and Payment Rules for Certain Madrid Protocol-related Rules (dated October 17, 2003, posted October 20, 2003, published in Federal Register October 24, 2003)
  • Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act; Final Rule (September 26, 2003)
  • USPTO Notice of Proposed Rulemaking: Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act (March 28, 2003) (HTML and PDF) and Comments thereto (June 9, 2003)
  • Madrid Protocol Implementation Act (Pub. L 107-273), 116 Stat. 1758, 1913-1921 (November 2, 2002) (PDF)
  • Press release: United States Joins the Madrid Protocol (August 14, 2003)

Email discussion group. We have set up an email discussion group for Madrid Protocol trademark filers. The event that prompted setting up this discussion group is the United States having filed its instrument of accession to the Protocol. This means that trademark filers in the United States suddenly have reason to learn how to do Madrid Protocol filings.

Who should join this discussion group:

• Anyone around the world who has experience with Madrid Protocol filings is invited to join the discussion group, as you may have opportunities to help us US practitioners to learn from you!
• Trademark practitioners and corporate filers in the US are invited to join, as you may have an opportunity to learn more about Madrid Protocol rules and practice.

The assumption is that anyone who participates in this discussion group is already experienced with filing and prosecution of ordinary (non-Madrid-Protocol) trademark applications.

Several topics are specifically not appropriate for this discussion group:

• Basics of trademark law such as what is a trademark, how to draft trademark applications, etc.
• Requests from non-lawyers for legal advice

It should also be noted that the Madrid Agreement is not the same thing as the Madrid Protocol. The US has acceded to the latter but not the former. Thus for most participants in this discussion group, topics relating to the Madrid Agreement are likely to be of interest only insofar as they also relate in some way to the Madrid Protocol.

To join the discussion group:

• Compose mail to Majordomo@lists.oppedahl.com
• In the body of the email enter: subscribe madrid-L
• Send email
• (No subject needed)

To post a message, send email to madrid-l@lists.oppedahl.com.

Frequently asked questions

• How many Madrid registrations are there? What are the most common countries of origin?
• What do the numerical codes mean in the search results in the Madrid Express database?
• What types of incoming MP work is a US trademark practitioner likely to receive from outside the US?
• What steps do I follow to prepare and file an MP application in the US?
• What is "one-click" filing?
• What does a letter mean at the end of a Madrid registration number?

Links to articles about MP

• TTAB Practice and the Madrid Rule Changes, John L. Welch and Ann Lamport Hammitte, Intellectual Property Today, February 2004, page 38.
• Practical Considerations of Using the Madrid Protocol, P. Jay Hines, Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
• "One-click" Filing of Madrid Protocol Trademark Applications in the USPTO, Carl Oppedahl, Intellectual Property Today, October 2003, page 20.
• USPTO Suspends TEAS and Fee Payment Rules: What should you do if the TEAS system is down?, Hanno Rittner, Greenblum & Bernstein, P.L.C., October 22, 2003
• Madrid Bound: The United States Approaches Ratification of the Madrid Protocol, by John L. Welch (part 1, part 2) (2000)

Last updated: February 25, 2007