How to file a Madrid Protocol application in the US

Note: this is a draft document and is thus a "work in progress." Suggestions for improvement are welcome. This document should not be relied upon as authoritative nor as legal advice.

Get an identification code from WIPO. If you have not already done so, contact WIPO to obtain an identification code for use in MP filings.

Consider screening the proposed mark. WIPO provides a Madrid Express database which permits searching, free of charge, all Madrid registrations and pending applications. You might consider using this database to see if there are previous filings that would affect the decision to proceed with an MP filing.

Figure out if MP is for you. Check the list of countries to see if the countries you want belong to the Protocol. (Note that for a US filer it does not help if a particular country belongs to the Madrid Agreement and not the Madrid Protocol.) Are any countries that you care about missing from the Protocol? Examples: Algeria, Azerbaijan, Barbados, Belize, Benin, Bosnia and Herzegovina, Botswana, Brazil, Burkina Faso, Cameroon, Canada, Central African Republic, Chad, Colombia, Congo, Costa Rica, Côte d'Ivoire, Croatia, Dominica, Ecuador, Equatorial Guinea, Gabon, Gambia, Ghana, Grenada, Guinea, Guinea-Bissau, India, Indonesia, Israel, Kazakhstan, Kyrgyzstan, Liberia, Madagascar, Malawi, Mali, Mauritania, Mexico, New Zealand, Nicaragua, Niger, Oman, Papua New Guinea, Philippines, San Marino, Saint Lucia, Saint Vincent and the Grenadines, Senegal, Seychelles, South Africa, Sri Lanka, Sudan, Syrian Arab Republic, Tajikistan, Togo, Trinidad and Tobago, Tunisia, Uganda, United Arab Emirates, United Republic of Tanzania, Uzbekistan, Viet Nam, and Zimbabwe.

Choose your countries to designate. As of August 18, 2003, the countries to choose from are: AG Antigua and Barbuda, AL Albania, AM Armenia, AN Netherlands Antilles, AT Austria, AU Australia, BG Bulgaria, BT Bhutan, BX Benelux, BY Belarus, CH Switzerland, CN China, CU Cuba, CZ Czech Republic, DE Germany, DK Denmark, EE Estonia, ES Spain, FI Finland, FR France, GB United Kingdom, GE Georgia, GR Greece, HU Hungary, IE Ireland, IS Iceland, IT Italy, JP Japan, KE Kenya, KP Democratic People’s Republic of Korea, KR Republic of Korea, LI Liechtenstein, LS Lesotho, LT Lithuania, LV Latvia, MA Morocco, MC Monaco, MD Republic of Moldova, MK The former Yugoslav Rep. of Macedonia, MN Mongolia, MZ Mozambique, NO Norway, PL Poland, PT Portugal, RO Romania, RU Russian Federation, SE Sweden, SG Singapore, SI Slovenia, SK Slovakia, SL Sierra Leone, SZ Swaziland, TM Turkmenistan, TR Turkey, UA Ukraine, YU Serbia and Montenegro, and ZM Zambia.

Keep in mind that each time you add a country to the designation list you are increasing the filing fee that will need to be paid.

Figure out when to file the MP application. By waiting a while, you may be able to cover more countries in a single filing. Example: US filers will be able to file as early as November 2, 2003. Cyprus, however, only belongs effective two days later, November 4, 2003. Thus, by waiting until November 4, 2003 to file, you could add Cyprus to your list.

An MP application can claim priority under the Paris Convention. Thus it is prudent to consider filing the MP application within six months of the US basic application.

Things that you must do to prepare for the e-filing of the MP application:

• Ascertain the filing date and serial number of:
  • the basic application or applications and/or
  • the registration date and registration number of the basic registration or registrations.
• Make sure that the name and address of the international applicant are identical to the name and address of the applicant or registrant as they appear in the basic application or basic registration.
• Provide a reproduction of the mark that is identical to the mark in the basic application and/or registration and meets the requirements of 37 CFR § 2.52. If the mark in the basic application and/or registration is depicted in black and white, the mark in the international application must be black and white. If the mark in the basic application and/or registration is depicted in color, the mark in the international application must be in color.
• Figure out whether to make a color claim as set out in 37 CFR section § 7.12, if appropriate.
• Provide a description of the mark that is identical to the description of the mark in the basic application or registration, as appropriate.
• Provide an indication of the type of mark if the mark in the basic application and/or registration is a three-dimensional mark, a sound mark, a collective mark or a certification mark.
• Provide a list of the goods and/or services that is identical to or narrower than the list of goods and/or services in each claimed basic application or registration and classified by International Classification.
• Provide a list of the Contracting Parties designated for an extension of protection (i.e. a list of designated countries). If the goods and/or services in the international application are not the same for all Contracting Parties, the application must include a list of the goods and/or services in the international application that pertain to each designated Contracting Party.
• Be prepared to pay the certification fee required by 37 CFR § 7.6. This is the fee to pay the USPTO to certify to WIPO that the MP application has the same applicant, the same mark, and the same or fewer goods/services.
• Be prepared to pay the international application fees for all classes and designated Contracting Parties identified in the international application.
• Be prepared to make a statement that the applicant is entitled to file an international application in the Office, specifying that applicant:
  • is a national of the United States;
  • has a domicile in the United States; or
  • has a real and effective industrial or commercial establishment in the United States.
  Where an applicant’s address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment.
• Be prepared to provide an e-mail address for receipt of correspondence from the USPTO.

How to file an application that will bounce.

• Mistake: in the international application, ask for more goods or services than are listed in the basic application or registration. To avoid this mistake, copy and paste from the TARR record for the basic application or registration, into the international application. If you are narrowing the goods/services, then structure the wording to make crystal clear that there is a narrowing.
• Mistake: in the international application, apply for a mark that is not identical to the mark in the basic application or registration. To avoid this mistake, copy the mark exactly from the TARR record into the international application.
• Mistake: in the international application, applying with a name that differs from the name in the basic application or registration. To avoid this mistake, copy the name exactly from the TARR record into the international application.
• Mistake: filing an international application in the US if the applicant fails to have a real and effective industrial or commercial establishment in the US.

Other mistakes which one can make:

• Designating an ITU country if the applicant lacks an intention to use the mark in that country. Examples: Ireland, Singapore, and United Kingdom.
• Designating the US in an MP application filed in the US. The rules do not permit such a designation, and it seems safe to assume the USPTO will design its e-filing software to prevent an applicant from making such a designation.

The MP application form allows you to specify that less than all of the applied-for goods and services are desired for particular designated countries. One reason you might want to do this is the intent-to-use requirement. For example the MP application may recite pork and beans, yet as for Ireland the applicant may only have an intention to sell beans. This means the applicant would not be able to assert an intention-to-use as to all of the applied-for goods and services.

After the date of the international registration, you need to wait eighteen months to see if there are any refusals of protection. If there are any, then you need to decide what to do about them.

You also need to do whatever is needed to keep the basic application pending or registered, and to keep the basic registration in force, for at least five years after the date of the international registration. If you allow the basic application to go abandoned, or if you allow the basic registration to be canceled, then the USPTO will notify WIPO and the international registration will be canceled. You then have three months in which to file national applications in one or more of the designated countries, in which case the national application will be treated as having been filed on the date of the now-canceled international registration.

You will need to remember to renew the international registration every ten years from the date of registration. In addition, particular designated countries may have renewal or working requirements which must be complied with.