Summary. This guide takes a U.S. trademark owner through an international application under the Madrid Protocol, from choosing the basic mark to renewing the international registration ten years later. It begins with the decisions to make before filing: eligibility, whether Madrid suits the target countries, which U.S. application or registration to rely on, the Paris priority window, and the goods and services specification. Twelve numbered steps then cover building the specification, choosing designations, computing fees in Swiss francs, preparing the USPTO's TEAS international application, answering USPTO and WIPO irregularity notices, docketing the registration, handling provisional refusals through local counsel, surviving the five-year dependency period, and managing subsequent designations, changes, replacement, and renewal. Separate sections address foreign owners extending protection to the United States and third parties who want to oppose a designation or mount a central attack. A timeline and cost table, a worked example following a skincare company's filing, common mistakes, an FAQ, and takeaways close the guide.

Dana Okafor runs Tidewater Botanicals, a Charleston skincare company that sells BRINEWELL sea-salt scrubs, soaps, and body oils. A Toronto retailer wants to stock the line, a Tokyo distributor has asked for samples, and a London pop-up starts in the spring. Her U.S. application for BRINEWELL was filed four months ago. Her lawyer says she can protect the brand in all three countries, plus the EU, Australia, Korea, and Mexico, with one application, one set of fees paid to Geneva, and one renewal date. The lawyer also says that if she files in the next two months, every one of those countries will treat her filing as if it had been made on the day she filed in the United States.

Both statements are true. They come with conditions. The international application must match the U.S. filing exactly, it will be examined separately in every country, and for five years every foreign right depends on the survival of the U.S. application. This guide walks through the process in order, with the decisions that matter at each step.

For the legal background (territoriality, the treaty system, Abitron, and squatting), see Protecting a Trademark Abroad: The Madrid Protocol, Territoriality, and Abitron v. Hetronic. For the strategic choice of countries and routes, see the International Trademark Filing Strategy Checklist: A Practical Checklist. For the filing matrix, priority calendar, and local counsel instruction letter used below, see the Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs.

The short answer

  • You need a U.S. basic mark. A U.S. national, domiciliary, or business with a real and effective U.S. establishment files the international application through the USPTO, based on a pending U.S. application or an issued registration (15 U.S.C. § 1141a).
  • The international application must mirror the basic mark. Same owner, same mark, and goods and services identical to or narrower than the U.S. filing. The USPTO certifies the match (15 U.S.C. § 1141b).
  • File within six months of the U.S. filing to claim priority. The Paris Convention priority period, implemented in 15 U.S.C. § 1126(d), lets every designation claim the U.S. filing date.
  • Fees are paid to WIPO in Swiss francs. A basic fee, plus either standard per-country fees or country-specific "individual fees," plus a small USPTO certification fee per class. Use WIPO's online fee calculator for every filing.
  • Each country examines on its own. Designated offices have 12 or 18 months to issue a provisional refusal. Responses usually require local counsel in that country.
  • Five years of dependency. If the U.S. basic mark is refused, abandoned, or narrowed within five years of the international registration date, the foreign protection falls with it, subject to a three-month right to transform each lost designation into a national application.
  • Renew every ten years at WIPO, and keep up U.S. and local use requirements separately.

Before you start: decision points

Are you eligible to file through the USPTO?

The applicant must be a U.S. national, be domiciled in the United States, or have a real and effective industrial or commercial establishment here, and it must own the U.S. basic application or registration (15 U.S.C. § 1141a; 37 C.F.R. part 7). A foreign parent company that owns the U.S. registration but has no U.S. establishment cannot use the USPTO as its office of origin; it must file through its home office, if that country is a Madrid member. Ownership must be exact. If the U.S. application names "Tidewater Botanicals LLC" and the company converted to a corporation last year, record the conversion or assignment with the USPTO under 15 U.S.C. § 1060 before filing. See Recording a Trademark Assignment: A Practical Checklist.

Is Madrid the right route for these countries?

Madrid is efficient when you want many countries, the U.S. specification is broad enough, and you can tolerate the dependency period. It is weaker when:

  • The country is not a member. Argentina, Taiwan, Hong Kong, South Africa, and several others have historically been outside the system. Check WIPO's member list on the day you file.
  • The U.S. specification is too narrow for the foreign business. The international application cannot be broader than the basic mark.
  • The U.S. basic mark is fragile. An intent-to-use application facing a likely descriptiveness or likelihood-of-confusion refusal is a risky foundation.
  • Local requirements favor a national filing. In China, a national filing tailored to the CNIPA's subclasses, with a Chinese-character mark filed alongside, is often worth the extra cost. A Chinese-character version cannot ride on a Latin-script U.S. basic mark, because the mark in the international application must be the same as the basic mark.

Most portfolios combine Madrid for breadth with national filings for depth. The comparison is laid out in the International Trademark Filing Strategy Checklist: A Practical Checklist.

Which basic mark?

If you own both a registration and a pending application, or several applications for the same mark, choose deliberately. An international application can rest on more than one basic mark if the owner and mark are identical, but each basic mark is a separate point of failure. A registration that has been on the register for years is a safer base than a fresh intent-to-use application. But waiting for registration may cost the Paris priority date, and in fast-moving markets the date usually matters more.

What is the deadline?

Two deadlines govern timing.

Clock Rule Consequence of missing it
Paris priority Six months from the U.S. filing date (Paris art. 4; 15 U.S.C. § 1126(d)) Designations take the international registration date, not the U.S. date; intervening filings abroad may take priority
Two-month rule If the International Bureau receives the application within two months after the USPTO receives it, the international registration date is the USPTO receipt date (Protocol art. 3(4)) The international registration date becomes the date the Bureau receives the corrected application

Practically, file the international application early enough in the priority window that any USPTO certification problem can be fixed and still keep the date.

What will the mark look like?

The mark in the international application must be identical to the basic mark. A U.S. standard-character application supports a word mark abroad in standard characters. A special-form U.S. application supports only that design. A color claim in the international application requires a color claim in the basic mark, and a color reproduction triggers a higher WIPO basic fee. Owners who need both a word mark and a logo abroad generally need two U.S. basic marks and two international applications. If the mark has a non-English meaning or non-Latin characters, the application must give a transliteration and, where applicable, a translation.

What is the budget?

Build the budget in three layers: filing (USPTO certification fee plus WIPO fees), prosecution (local counsel for provisional refusals, which some designations draw and others do not), and maintenance (renewals, local use filings, and U.S. maintenance for the basic registration). The cost table below gives the method.

Step 1: Secure the basic mark

What to do. Confirm that the U.S. basic application has been filed (it can be filed the same day as the international application, but it must exist first) or that the basic registration is live. Confirm owner name, entity type, citizenship or state of organization, and address. Pull the current identification of goods and services from the USPTO record, not from your own draft.

Why. The USPTO certifies the international application only if it matches the basic mark, and WIPO records the international registration only if the USPTO certifies it.

Authority. 15 U.S.C. §§ 1141a-1141b; 37 C.F.R. part 7. For the U.S. filing itself, see How to File a Trademark Application with the USPTO and, for intent-to-use filings, Intent-to-Use Trademark Applications: A Practical Guide.

Pitfalls. A mismatch in the owner's name or entity type. A basic application that has been amended after filing (the international application must track the current identification). A basic registration that is about to lapse because a Section 8 declaration is due under 15 U.S.C. § 1058.

Timing and cost. Same day to a few days. No separate cost if the basic mark is in order.

Step 2: Fix the priority claim and filing date

What to do. Calculate the six-month priority deadline from the U.S. filing date and set the international filing target at least four to six weeks earlier. Decide whether to claim priority (almost always yes if the window is open).

Why. The priority claim lets every designation take the U.S. filing date. A priority claim is cheap insurance against squatters who watch U.S. filings and trade-show listings.

Authority. Paris Convention art. 4; 15 U.S.C. § 1126(d). For incoming requests to extend protection to the United States, 15 U.S.C. § 1141g supplies the parallel priority right.

Pitfalls. Counting from the wrong date (the priority runs from the first filing anywhere for the same mark and goods, not necessarily the U.S. filing if the owner filed earlier abroad). Missing the window by days because a certification problem surfaced late.

Timing. Within six months of the U.S. filing; ideally within four.

Step 3: Build the specification

What to do. Start with the U.S. identification. Decide which goods and services to carry into the international application, and whether to limit the list for particular countries. Check each term against WIPO's Madrid Goods and Services Manager (MGS) to see whether the International Bureau and designated offices accept it.

Why. The International Bureau checks classification and the clarity of terms, and each designated office can refuse terms it considers vague. The U.S. identification is usually accepted, because the USPTO's standards are strict, but the specification can still trip refusals in offices that use different terminology. A specification that is precise and, where possible, built from terms the MGS marks as accepted by the target offices avoids most problems.

Authority. Nice classification under 37 C.F.R. part 6; the international application may not exceed the basic mark (15 U.S.C. § 1141b). See USPTO Trademark Classes: A Guide to the Nice Classification and Identifying Goods and Services and Trademark Classification: A Practical Checklist.

Country-specific limitations. The international application can limit the goods for particular designated parties. This is useful when a conflict is known in one country (limit the goods there rather than draw a refusal) or when the business will only sell some products in that market. A limitation can also be recorded later.

Pitfalls. Carrying a narrow U.S. intent-to-use list that omits products the company will sell abroad in two years. Including goods that are not in the basic mark (the USPTO will refuse to certify). Forgetting that the specification also sets the per-class fees.

Timing and cost. A few hours of drafting for a simple list. More for multi-class marks.

Step 4: Choose the designations

What to do. List the target countries and regional systems. For each, confirm Madrid membership, any special requirements, the fee type (standard or individual), and the refusal period. Decide whether to designate the European Union as a bloc or individual EU member states (rarely both), and remember that the United Kingdom is now separate.

Why. The designations determine where protection will exist, the fees, and the number of examinations the mark will face.

Special requirements. A few designated offices require something more than the standard application. The United States requires a declaration of bona fide intention to use the mark when it is designated (on WIPO's MM18 annex), but a U.S. applicant cannot designate the United States, its own office of origin. Some offices require a declaration of intention to use or other country-specific annexes; check WIPO's information on each member before filing. A designation can be accompanied by a limitation of the goods for that country.

The language. Madrid applications are filed in English, French, or Spanish. The USPTO accepts international applications in English only.

Regional options. The EU (one EU trade mark for all member states), the African Intellectual Property Organization (OAPI) for many francophone African states, and Benelux (for Belgium, the Netherlands, and Luxembourg) can be designated as single parties. Each regional right lives or dies as a whole in that region.

Pitfalls. Designating a country that is not a member. Overlooking the UK after Brexit. Designating China via Madrid without understanding that a local-script mark will not be covered and that CNIPA examines against its own subclasses. Designating countries where the company has no realistic plan to use the mark within the local non-use period (often three or five years), which wastes fees and exposes the registration to cancellation.

Step 5: Compute the fees

What to do. Use WIPO's Madrid fee calculator with the actual number of classes, designations, and the mark's color status. Add the USPTO certification fee. Decide how to pay WIPO (a WIPO current account, credit card, or bank transfer, as WIPO's payment instructions allow).

How the fees work. WIPO fees are set in Swiss francs and are of four kinds:

Fee What it covers Amount (WIPO schedule in force since 1 February 2023)
Basic fee The international application 653 CHF for a black-and-white mark and 903 CHF for a mark in color; reduced for applicants from least-developed countries
Complementary fee Each designated party that does not charge an individual fee 100 CHF per designation
Supplementary fee Each class beyond three, for designations that do not charge an individual fee 100 CHF per class
Individual fee Set by each designating office that elects to charge one, often per class Varies widely; many major offices (including the EU, the UK, Japan, Korea, Australia, Canada, and the United States) charge individual fees

Individual fees change when offices adjust them or when exchange rates move, which is why the calculator is the only reliable source. Some offices charge their individual fee in two parts, one at filing and a second on grant.

The USPTO charges its own fee for certifying the international application: $100 per class when filed electronically and based on a single basic application or registration, and $150 per class when based on more than one (paper filings cost more), under the fee schedule incorporated in 37 C.F.R. part 7. The USPTO revised many domestic trademark fees in its fiscal year 2025 fee-setting rule, but left these Madrid certification fees in place.

A method for the budget. Estimate WIPO fees with the calculator; add the USPTO certification fee; add a reserve for provisional refusals equal to the expected response cost in each country where refusals are common for this type of mark and specification (local counsel's estimate); add a reserve for translation and local requirements; and add counsel's time to prepare and docket the filing. For a single-class word mark in eight to ten major jurisdictions, total government fees often fall in the low thousands to the high thousands of U.S. dollars, depending heavily on which offices charge individual fees; prosecution costs for refusals can equal or exceed the filing fees. Do not give a client a fixed number without running the calculator.

Pitfalls. Underpaying, which triggers an irregularity and can delay the international registration date. Forgetting the second part of an individual fee. Budgeting only for filing and not for refusals.

Step 6: Prepare and file the international application

What to do. File the USPTO's TEAS international application form. The form collects the data that WIPO's official MM2 form requires and the USPTO transmits electronically.

What the form asks for.

  1. Applicant. Name, address, legal nature, and state or country of organization, exactly as in the basic mark.
  2. Entitlement. The basis for using the USPTO as office of origin (nationality, domicile, or establishment).
  3. Representative. The attorney or agent who will receive WIPO communications. Many U.S. owners appoint their U.S. counsel so that WIPO notices, including provisional refusals, come to one place.
  4. Basic mark. Serial or registration number and date.
  5. Priority claim. The office, date, and number of the first filing, if claiming priority.
  6. Mark. The reproduction, identical to the basic mark, with any color claim, mark type (word, figurative, three-dimensional, sound), description, disclaimer, transliteration, and translation.
  7. Goods and services. The specification, by class.
  8. Designations. The parties designated, with any country-specific limitations, and required annexes (for example, a declaration of intention to use for parties that require one).
  9. Fees. The USPTO certification fee is paid to the USPTO at filing. WIPO fees are paid to WIPO directly or through the USPTO as the current procedures permit.
  10. Signature and declarations.

Why. The USPTO compares the international application with the basic mark and certifies it, then forwards it to the International Bureau.

Authority. 15 U.S.C. § 1141b; 37 C.F.R. part 7 (updated to reflect current electronic filing systems in a USPTO rule revising references to electronic filing systems in the Madrid rules).

Pitfalls. A transliteration or translation that does not match the basic mark's record. A color claim missing from the basic mark. A specification that adds a single word not in the basic mark.

Timing and cost. One to two hours to prepare a clean single-class filing; more for multiple bases or classes.

Step 7: Answer USPTO and WIPO irregularity notices

What to do. Watch for two kinds of notices. The USPTO may refuse to certify the application or ask for corrections if it does not match the basic mark. After certification, the International Bureau may issue an irregularity notice about classification, unclear terms, fees, or other formal defects.

USPTO notices. If the USPTO finds a mismatch, it notifies the applicant. Correct promptly. The international registration date depends on the International Bureau receiving a certified application within two months of the USPTO's receipt; corrections that push certification past that window can cost the original date.

WIPO irregularities. The Common Regulations under the Protocol divide irregularities into three families:

Type Typical issue Who responds Time limit
Classification A term placed in the wrong class The office of origin may comment; the Bureau's proposal stands if no one objects successfully Three months from the notice
Indication of goods and services A term the Bureau considers too vague or incomprehensible The office of origin, often after consulting the applicant Three months from the notice
Other irregularities Fees, missing information, signatures Depending on the defect, the applicant or the office Three months from the notice

Because the USPTO is the office of origin, some responses to WIPO irregularities must go through the USPTO rather than directly to WIPO. Read each notice for who must respond and how. If fees are short, pay the balance directly to WIPO within the time limit.

Why. An unremedied irregularity can lead to the application being considered abandoned, the deletion of the offending terms, or a later international registration date.

Authority. Common Regulations under the Madrid Protocol (Rules 11 through 13); 37 C.F.R. part 7.

Pitfalls. Letting a WIPO notice sit because it arrived in a general inbox. Arguing a classification point that cannot be won instead of accepting the Bureau's proposal and paying the extra class fee.

Step 8: Receive, check, and docket the international registration

What to do. When the International Bureau records the international registration, it publishes it in the WIPO Gazette, sends a certificate to the holder, and notifies each designated office. Look the registration up in WIPO's Madrid Monitor, check every field against the application, and request correction of any Bureau error promptly.

Docket these dates.

Event Date
International registration date Date the USPTO received the application, if the two-month rule was met
Priority date U.S. filing date, if claimed
Refusal deadlines 12 months from the date the Bureau notified each designated office, or 18 months for parties that have declared the longer period (later for opposition-based refusals if notice was given)
End of dependency Five years from the international registration date
First renewal Ten years from the international registration date
U.S. maintenance for the basic registration Between the fifth and sixth year after U.S. registration (Section 8), and every ten years (Sections 8 and 9)
Local use deadlines Often three or five years from grant in each designated party

Why. Each of these dates has a consequence, and the Madrid system does not send reminders for all of them.

Authority. U.S. basic mark maintenance: 15 U.S.C. § 1058 and § 1059. See Maintaining Trademark Registrations.

Pitfalls. Treating the WIPO certificate as protection everywhere. It is not; it means each designated office is now examining.

Step 9: Handle provisional refusals through local counsel

What to do. When a designated office issues a provisional refusal, it sends it to the International Bureau, which records it and forwards it to the holder (or its WIPO representative). Read the refusal for the ground, the deadline, and whether the office requires a local representative. Instruct local counsel promptly, using a written instruction letter that states the goal, the budget ceiling, and the authority to amend or limit the goods.

Grounds you will see. Conflicts with earlier marks (the most common), lack of distinctiveness or descriptiveness under local standards, unclear goods and services under local practice, and formal objections. In opposition systems, a provisional refusal may also be based on a third party's opposition.

Deadlines. Each office sets its own response period. Periods range from roughly one month to several months, some can be extended and some cannot, and some run from the date of the office's notice rather than from receipt. Docket the shortest plausible deadline on the day the refusal arrives, and confirm the actual deadline with local counsel.

Local counsel. Most offices require a locally qualified representative to respond to a refusal from a foreign holder. Local counsel will also tell you whether a refusal is a routine objection that a limitation will cure or a serious conflict worth a coexistence negotiation. For engagement terms and instructions, use the local counsel engagement checklist and foreign agent instruction letter in the Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs.

Outcomes. When the office's procedure ends, it sends a statement to the Bureau: a statement of grant of protection (often issued even without a refusal), a confirmation of total or partial refusal, or a withdrawal of refusal. Docket each, and update the portfolio record to show the goods protected in that country.

Pitfalls. Missing the deadline because the refusal went to a former representative. Arguing a refusal in one country without considering the effect on parallel refusals elsewhere. Letting a partial refusal stand without noticing that it removed the product the client most needs.

Cost. Local counsel fees for a routine response may run from a few hundred to a few thousand dollars per country; contested conflicts cost more. Ask for estimates in writing.

Step 10: Protect the basic mark during the five-year dependency period

What to do. Treat the U.S. basic mark as the foundation of the whole portfolio for five years. For an intent-to-use basic application, file the statement of use in time and respond to every office action. For a basic registration, defend any cancellation petition vigorously. Calendar the five-year anniversary.

Why. If, within five years from the international registration date, the basic application is refused, withdrawn, or abandoned, or the basic registration is cancelled or expires, in whole or in part, the USPTO must notify the International Bureau and the international registration is cancelled to the same extent. The same is true if the final decision comes later but results from an action begun within the five years (15 U.S.C. § 1141c). A competitor can therefore attack the U.S. basic mark through an opposition under 15 U.S.C. § 1063 or a cancellation under § 1064 and bring down the foreign designations with it.

Transformation. If the international registration is cancelled because the basic mark failed, the holder has three months from the date of cancellation to file national or regional applications in each formerly designated party, for the goods that were covered. Each transformed application keeps the international registration date and any priority. Transformed applications require national fees and usually local counsel, and they are examined under local law.

Pitfalls. Abandoning the basic intent-to-use application because the company changed its U.S. plans, without realizing the foreign protection depends on it. Narrowing the U.S. identification in response to an office action without considering the effect abroad. Missing the three-month transformation window.

Tactics. Where the U.S. office action could be cured by deleting goods, consider whether the deleted goods matter abroad. In some cases, it may be better to argue the refusal, or to file a separate national application abroad for those goods before the deletion is processed.

Step 11: Manage the registration: subsequent designations, changes, limitations, and replacement

Subsequent designations. To add countries later, file a subsequent designation, either through the USPTO (15 U.S.C. § 1141d) or directly with WIPO (MM4). The added designations take the date of the subsequent designation, not the original international registration date, and they expire with the international registration.

Changes in ownership. Record assignments with the International Bureau (MM5). The assignee must itself be eligible to hold an international registration, through a connection with a Madrid member; an assignment to a company in a non-member country cannot be recorded for the international registration. Record the same assignment with the USPTO for the basic mark, and update local records where required.

Name and address changes, limitations, renunciations, and cancellations. Record these centrally (MM9 for name or address, MM6 for limitations, MM7 for renunciations, MM8 for cancellations), and confirm that the designated offices update their records.

Licenses. Record licenses with WIPO where the designated party gives effect to Madrid license recordals; some offices require local recordal as well.

Replacement. If the holder already owns a national registration in a designated country for the same mark and goods, the international registration is deemed to replace it, without prejudice to the rights acquired under the earlier registration. The holder may ask the designated office to take note of the replacement in its register, which keeps the earlier date visible. WIPO amended the Common Regulations to allow partial replacement where the goods only partly overlap, and the USPTO conformed its rules, as reflected in its rule on partial replacement of an earlier national registration by an international registration. Replacement lets an owner consolidate national registrations into the international registration without losing priority. Do not let the national registration lapse until the replacement is noted and the goods are confirmed.

Pitfalls. Recording an assignment with WIPO but not with the USPTO, leaving the basic mark in the old owner's name. Adding countries by subsequent designation when an original designation within the priority period would have been cheaper and earlier.

Step 12: Renew, and keep using

What to do. Renew the international registration with WIPO every ten years from the international registration date. WIPO sends an unofficial reminder about six months before expiry, but the obligation is the holder's. Renewal can be filed online (e-Renewal) and is paid to WIPO; a six-month grace period applies with a surcharge. The renewal can cover all or only some of the designated parties.

Use requirements continue locally. Renewal at WIPO does not prove use. Each designated country applies its own non-use rules; many allow cancellation after three or five consecutive years of non-use. Keep evidence of use, by country, in a file that can be produced quickly.

After the dependency period. Once five years have passed without a ceasing-of-effect notice, the international registration is independent of the U.S. basic mark. The U.S. registration still needs its own maintenance under 15 U.S.C. § 1058 and renewal under § 1059, and its renewal dates will not match the WIPO renewal dates. See the Trademark Maintenance and Renewal Checklist: A Practical Checklist.

For foreign owners: extending protection to the United States

The system runs both ways. A foreign holder of an international registration that designates the United States is asking the USPTO for an "extension of protection," often called a Section 66(a) application.

  • Request and declaration. The request must include a verified declaration of bona fide intention to use the mark in U.S. commerce, which WIPO forwards with the designation (15 U.S.C. §§ 1141e-1141f). The filing date for priority purposes is the international registration date (or the subsequent designation date), or the earlier Paris priority date under § 1141g.
  • Examination. The USPTO examines the request on the same substantive grounds as any application and may refuse within the 18-month period, with opposition-based refusals possible later if notice was given in time (15 U.S.C. § 1141h). The U.S. requirement that identifications be specific is a common ground for refusal of Madrid designations from offices with broader practice.
  • U.S. counsel. A foreign-domiciled holder must be represented by a U.S.-licensed attorney to respond to a USPTO refusal, under the 2019 rule in 37 C.F.R. part 2 (section 2.11).
  • Effect. An allowed extension has the same effect as a Principal Register registration (15 U.S.C. § 1141i), and it can become incontestable (15 U.S.C. § 1141m). It can be assigned only to a person eligible to hold the international registration (15 U.S.C. § 1141l).
  • Use affidavits. The holder must file affidavits of use with the USPTO between the fifth and sixth years after the U.S. certificate of extension issues, and within the year before the end of each ten-year period after that (15 U.S.C. § 1141k). These are separate from, and run on a different clock than, the WIPO renewal.
  • Dependency. If the international registration is cancelled for some or all goods, the U.S. extension is cancelled to the same extent; if the international registration was cancelled at the request of the office of origin, the holder may transform the U.S. extension into a U.S. application within three months, keeping its date (15 U.S.C. § 1141j).
  • Priority is real, but so is the need to use. In Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228 (9th Cir. 2022), the Ninth Circuit held that a Madrid registrant's constructive-use priority beats a later U.S. adopter, and that the registrant can enforce it once it begins bona fide U.S. use. Registrations that are never used are exposed to expungement under 15 U.S.C. § 1066a. See Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide.

For third parties: opposing a designation or mounting a central attack

A company that finds a competitor's international registration designating a country where it has earlier rights has two main options.

Oppose or object locally. Each designated office publishes the designation (or the international registration) and allows oppositions under its own rules. In the United States, oppositions to Section 66(a) requests are filed with the TTAB; the time to oppose is limited because the USPTO must notify WIPO of any opposition-based refusal within the treaty period, so extensions are tighter than for domestic applications. Use the TTAB procedures described in the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Attack the basic mark. During the five-year dependency period, a successful opposition or cancellation against the basic mark in its office of origin cancels the international registration for the affected goods everywhere. Central attack is efficient when the conflict exists in the home country and the attacker has standing there. It is not decisive, because the holder can transform, but transformation is expensive and the transformed applications are examined fresh. Factor in the holder's transformation rights when valuing settlement.

Watch. Neither tactic works without a watch that covers the WIPO Gazette and the national registers in the countries that matter. See the watch program specification in the Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs.

Timeline and cost table

Stage Typical timing Government fees (method) Professional fees (typical range)
U.S. basic application Day 0 USPTO per-class application fee under the current schedule Varies with clearance and drafting
International application filed Within 6 months (target 4) USPTO certification fee per class plus WIPO basic fee, complementary and supplementary fees, and individual fees (run the WIPO calculator) A few hours of counsel time
USPTO certification and transmission Days to weeks None beyond filing Minimal unless corrections
WIPO examination and registration Commonly several weeks to a few months; longer if irregular Additional fees if irregularity concerns fees or classes Response time for irregularities
Provisional refusals Within 12 or 18 months of notification to each office Some offices charge for responses or second-part fees Local counsel, from a few hundred to several thousand dollars per refusal
Grant statements 12 to 24 months, varying by office Second-part individual fees where applicable Docketing
End of dependency Year 5 None Docketing
U.S. Section 8 declaration for basic registration Year 5 to 6 after U.S. registration USPTO fee Modest
WIPO renewal Year 10, with 6-month grace WIPO renewal basic fee plus per-designation fees (run calculator) Modest
Local use defense Whenever challenged Varies Evidence collection and local counsel

All fee figures change. WIPO publishes its fee schedule in Swiss francs; the USPTO publishes its schedule in its fee rules. Confirm before quoting a client.

Worked example: BRINEWELL goes abroad

Facts. Tidewater Botanicals LLC, a South Carolina company, filed a U.S. intent-to-use application for BRINEWELL in standard characters on February 3 of Year 1, covering Class 3 (non-medicated skin scrubs, soaps, body oils) and Class 35 (online retail store services featuring skincare products). Dana Okafor wants protection in Canada, the EU, the UK, Japan, Korea, Australia, Mexico, and China. She also wants a logo protected.

Before filing. Counsel confirms the applicant's name matches the U.S. record and that Tidewater has no plans to convert its entity type before the filing. Counsel runs knock-out searches in each target country through local agents, finding a Japanese registration for BRINEWEL (one L) in Class 3 owned by a small cosmetics firm. Counsel advises that the Japanese conflict may draw a refusal and that a coexistence approach may be needed, and that China should be covered with a separate national filing in the relevant subclasses plus a Chinese-character name the company has chosen and cleared, because the Chinese name cannot ride on the U.S. basic mark.

Step 1 and 2. The priority deadline is August 3 of Year 1. Counsel targets June 1 for the international application. The logo has no U.S. application yet; counsel files one in April so that a second international application for the logo can also claim priority (its own six-month window runs from April).

Step 3. The U.S. Class 35 identification is narrow ("online retail store services featuring skincare products"). Counsel checks the MGS and finds the term accepted by most target offices. For the EU and the UK, Dana asks to add "wholesale" services; counsel explains that the international application cannot include them because they are not in the basic application, that a U.S. identification can be narrowed but never broadened by amendment, and that the practical options are a new U.S. application (with a new, later date) or national applications in the EU and UK for the extra services. Dana decides to file the EUTM and UK applications nationally for Class 35 only, while designating them in Madrid for Class 3.

Step 4. Designations: Canada, the EU, the UK, Japan, Korea, Australia, and Mexico. China is filed nationally. For the EU and UK, the Class 35 designation is limited out through a country-specific limitation, since the national filings will cover those services more broadly.

Step 5. Counsel runs the WIPO calculator for a black-and-white mark, two classes, seven designations (all charging individual fees), with the limitation, and adds the USPTO certification fee for two classes. Counsel adds a reserve for an expected refusal in Japan and for possible specification objections in Korea, and quotes the total in a range rather than a single figure.

Step 6. The TEAS international application is filed on May 28, with a priority claim to the February 3 U.S. filing. The USPTO certifies it in June.

Step 7. WIPO issues an irregularity notice proposing to move "body oils" to a more specific wording. Counsel accepts the Bureau's wording through the USPTO within the three-month time limit.

Step 8. The international registration is recorded with the date of May 28 of Year 1, and the priority date of February 3. Counsel dockets refusal windows by office, the five-year dependency end (May 28 of Year 6), and the renewal (May 28 of Year 11).

Step 9. Japan issues a provisional refusal citing BRINEWEL. Local counsel in Tokyo advises that Japan's consent system, introduced by a 2024 amendment, can allow registration with the earlier owner's consent, but only if the examiner is also satisfied that confusion is unlikely, and that a narrowing to "sea-salt body scrubs" alone may not overcome the citation. Tidewater approaches the Japanese owner, which agrees to a written consent and coexistence agreement for a modest fee, and local counsel files the consent with a narrowed specification. Korea issues a refusal objecting to the wording of "skin scrubs"; local counsel amends the term. Canada, the EU, the UK, Australia, and Mexico issue statements of grant.

Step 10. In Year 2, the USPTO issues an office action on the basic application asserting that BRINEWELL is merely descriptive of salt-water-based products. Counsel recognizes that a final refusal would bring down every designation. It argues the refusal with evidence that "brine" is not used in the trade for skin scrubs and that the coined combination is suggestive, and it prepares contingency transformation instructions for each country. The examining attorney withdraws the refusal. Tidewater files its statement of use in Year 2, and the basic registration issues.

Step 11. In Year 4, Tidewater adds Singapore and Switzerland by subsequent designation through WIPO. Those designations take the Year 4 date.

Step 12. Tidewater dockets its U.S. Section 8 declaration for Year 7 to 8 (based on its Year 2 U.S. registration) and its WIPO renewal for Year 11. Its local use files record sales and advertising by country.

What would have gone wrong without the guide. Filing in Year 1 after August 3 would have lost the U.S. priority date everywhere. Basing the international application on the U.S. application without arguing the Year 2 descriptiveness refusal would have cost the entire international registration. Designating China only through Madrid would have left the Chinese name unprotected.

Common mistakes

  • Mismatched owner details. The international application names a different entity than the U.S. record. Fix the U.S. record first.
  • A broader specification than the basic mark. The USPTO will not certify it. Use national filings for extra goods.
  • Waiting for U.S. registration and losing priority. Usually the wrong trade.
  • Assuming the WIPO certificate means protection. It means examination has started in each designated office.
  • No local counsel plan. Refusal deadlines are short and some cannot be extended. Pre-select local counsel in the major designations.
  • Abandoning or narrowing the U.S. basic mark carelessly during the first five years. Every foreign designation depends on it.
  • Missing the three-month transformation window after a central attack.
  • Forgetting the U.S. Section 8 declaration for the basic registration because the international renewal is "handled by WIPO." The two are independent after year five, and the U.S. registration still needs maintenance.
  • Recording assignments only at WIPO. Record them with the USPTO for the basic mark and in national registers where required.
  • For foreign owners designating the United States: no plan to use. An unused Section 66(a) registration invites expungement and cannot support infringement claims until use begins.

FAQ

Can I file a Madrid application before my U.S. application is examined? Yes. The basic mark can be a pending application. That preserves priority but exposes the international registration to central attack if the U.S. application fails in the first five years.

Can I designate the United States in my own Madrid application? No. A U.S.-based applicant uses the USPTO as its office of origin and protects the mark in the United States through the basic mark itself.

What if I want protection in a country that is not a Madrid member? File nationally in that country, ideally within the six-month Paris priority window so the filing can claim the U.S. date.

Can I add countries later? Yes, by subsequent designation. The added countries take the date of the subsequent designation and expire with the international registration.

How long does the process take? Filing to international registration usually takes weeks to a few months. Designated offices then have 12 or 18 months to refuse. Most owners know where they stand within about 18 to 24 months of filing.

Do I need a lawyer in every designated country? Not to file. You will usually need one to respond to a provisional refusal, and in many countries a foreign holder cannot respond without a local representative.

Does the Madrid registration let me sue infringers abroad? The protection in each country is a national right enforceable under that country's law and in its courts. A U.S. court will not hear a Lanham Act claim based on infringing use that occurs entirely abroad after Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023).

Does foreign registration help me in the United States? Not for a U.S. owner, and for a foreign owner only through the treaty mechanisms (Section 44 or Section 66(a)). Foreign use does not create U.S. priority; see Person's Co. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990).

Takeaways

  • Fix the owner and the specification in the U.S. record first; the international application must mirror the basic mark.
  • File within the six-month Paris window, early enough to fix certification issues within the two-month rule.
  • Run WIPO's fee calculator for every filing, and budget for refusals as well as filing.
  • Designate deliberately: the EU and the UK are separate, China often needs a national filing and a Chinese-character mark, and non-members need national filings.
  • Line up local counsel before refusals arrive.
  • Protect the U.S. basic mark for five years, and know the three-month transformation rule.
  • Keep three calendars: WIPO renewals, U.S. maintenance, and local use.

This document is general information, not legal advice for any particular situation; fees, membership, and local practice change, and the facts matter.

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