Chicago Intellectual Property Alliance

Madrid Protocol:  A Few Comments
  • It is not  "one-stop" international registration system, BUT
  • It offers:

One-stop filing,

Use of English,

Payment of fees, all at the USPTO. 

  • To file an international application, a trademark owner must either be
    1. Domiciles in;
    2. Be a national of, OR
    3. Have a real and effective industrial or commercial establishment in a Contracting Party. 
  • Trademark owners obtain a bundle of national rights in member countries consistent with registering directly in the country.
  • Rights are "tied" to the basic application or registration for five years BUT transformation to a national application is possible. 
  • It offers cheaper and easier maintenance because renewals, assignments, and other maintenance activities are done through WIPO with a single filing for all extensions of protection. 
  • It does not require changes in substantive examination standards.
  • The U.S. will continue its requirement for narrow goods/services.
  • Protocol time limits are different than those allowed for similar activities at the USPTO. 
  • The U.S. will require a statement of bona fide intent to use the mark in commerce for REPs.
  • The U.S. will require affidavits of continued use to maintain granted extensions of protection. 
  • The U.S. will require affidavits of continued use to maintain granted extensions of protection. 
To learn more about how you can participate with the Chicago Intellectual Property Alliance, contact
Ms. Dolores K. Hanna by email or at 312-807-4403.
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