Tips for filing an outbound Madrid Protocol application

If your international application is based on a pending basic application, we strongly recommend that you wait until you’ve received and reviewed the first office action or, less commonly, a notice of publication before filing your international application.  

The first office action tells you if there are reasons that your trademark can’t be registered in the United States, which can range from major legal obstacles to minor technical issues. You must be able to address or correct these problems. If not, the trademark in your basic application likely won’t be registered. If your trademark isn't registered, your international registration and all related designations will be canceled.

If you want to claim priority, be sure to check our current wait times to make sure that there's enough time. To claim priority, you must file your international application within six months of filing your basic application.

When we receive your international application, we certify that the following information in it matches your basic application or registration: 

• Applicant or owner names and entity type 
• The trademark (including any colors) 
• Color claims 
• Trademark description  
• Indication that the mark is a three-dimensional mark, a sound mark, a collective mark, or a certification mark

We compare the information word for word. It must be identical. Any difference, even a misspelled word or extra punctuation mark, can result in a denial of certification.  

We compare the information in your international application to the information in our Trademark Status and Document Retrieval (TSDR) system for your basic application or registration on the day we do our certification review.  

An error could be as simple as: 

• Including a middle initial in the owner name for the basic application or registration but not in the international application.  
• Including the entity designation, such as “Inc.” or “LLC,” in the owner name in the international application when it wasn’t included in the owner name in the basic application or registration. 
• Making minor changes to the trademark description in a pending basic application after you have already filed the international application. 

Use the prepopulated form option 

The easiest way to ensure your information matches is to use our prepopulated form that fills in the form with information directly from your basic application or registration. If you do not change any prepopulated text, we’ll automatically certify your application. Making any change to the prepopulated text will trigger a manual review by USPTO staff.   

You can't use the prepopulated form if:

• You are using more than one U.S. trademark application or registration as basics for your international application.  
• Your basic application has not been fully loaded into USPTO systems yet. It may take up to 10 days for a newly filed U.S. trademark application to be loaded into our computer systems.
• You recently filed a new assignment that is not yet reflected in the record.

If any of these apply to you, you must file using the free-text form and manually enter your information into your international application.

Use TSDR for gathering application information

If you’re not using the prepopulated form, copy the information from your basic application or registration in the TSDR system. Do not use the information in trademark search as it is formatted differently and does not reflect how it should be entered into the international application.

Correct ownership information

The owner information in your international application must be identical to the owner in your basic application or registration on the date we review your international application. All names must be spelled exactly the same.  

If there are errors in the ownership information in your basic application or registration, you must correct them before you file your international application. 

If there’s been a change of ownership in your basic application or registration, you should file an assignment to update the ownership information so that it matches your international application. Ensure that the USPTO’s Assignment Recordation Branch has recorded the assignment and the information is accurately reflected in your basic application or registration record by checking TSDR. 

Correct other information in your basic application

If you need to correct an issue in your basic application, see common problems in applications to determine if the mistake is fixable or not. 

If your basic application isn’t yet assigned to a USPTO examining attorney, you may be able to correct some issues by filing a voluntary amendment. Use the Voluntary Amendment Form Not in Response to USPTO Office Action/Letter to request your changes. 

If your basic application is already assigned to an examining attorney, you may contact the examining attorney directly by phone or email to request changes, but some changes might not be possible. 

Correct minor errors in your basic registration

If you need to request a correction in your basic registration, file a Section 7 amendment. Be aware that certain changes are not acceptable, such as material alterations to your drawing or altering the identification of goods and services to expand their scope. Use the TEAS form Section 7 Request for Amendment or Correction of Registration Certificate and be prepared to pay a fee for this form.

Using multiple basic applications or registrations

If your international application is based on multiple basic applications or registrations, the owner information, the trademarks, the trademark descriptions, and color claims (if the mark is in color) must be identical for all of them. You should correct all inconsistencies before filing your international application. 

Color drawings

If your basic application or registration has a color drawing of your trademark, you're also required to include a written claim of color as a feature of the trademark. To avoid denial of certification, make sure that your basic application includes the claim of color before you file your international application. Make sure that your international application contains the same color drawing of the trademark and the same claim of color as those that appear in your basic application.

If you need to file your international application immediately but have not yet included a color claim in the basic application, don’t use the prepopulated option when filing your international application. The prepopulated international application form generates only a black and white drawing when the basic application does not include a color claim. If this happens, the drawing in the international application won’t match the drawing in the basic application, resulting in a denial of certification.

Before you file your international application, you must do one of the following:  

• Amend the drawing in your basic application to a black and white drawing.  
• Amend your basic application to provide a color claim that lists all colors in the trademark. 

To request to amend the drawing in your basic application or registration to a black and white (non-color) drawing, or to add a color claim to your basic application or registration, follow the instructions above for making corrections to your basic application or registration. Your amendment will only be accepted if it doesn’t materially alter the trademark. Learn more about the requirements of the drawing of your mark.  

Special kinds of marks

If your U.S. application or registration is for a three-dimensional mark, sound mark, collective mark, or certification mark, your international application must be for the same type of mark. 

List of goods and services

We closely review the scope of goods and services as part of the certification process. Any goods or services in your international application must be within the scope of the identification in your basic application or registration but do not have to be a word-for-word match. For example, you can list fewer goods or services in your international application as long as the identification remains within the scope of your basic application or registration.

International classification of goods and services

If you need to file your international application before you receive the first office action for your basic application, use the International Bureau’s Madrid Goods and Services Manager to make sure that the goods and services in your international application are classified in the correct international class.

We don't review the classification of your goods and services when we certify your international application.

Once the international application has been certified and sent to the International Bureau, you cannot reclassify the goods and services unless the International Bureau requires you to.

During examination of your basic application, if goods or services are reclassified to classes that are not included in the international registration, those goods or services will be deleted from the international registration and from all extensions of protection when your basic application registers. 

Claiming a priority filing date can help you secure an earlier effective date for your international registration. However, you must be attentive to filing deadlines, because your international application must be certified and sent to the International Bureau within certain timeframes. 

Depending on our current wait times, you may need to file your international application before you receive your first office action to claim priority. If so, consider the risks of filing your international application before you know whether your trademark can be registered in the U.S.

To claim a priority filing date based on your U.S. application, you must:

• File your international application within six months of filing your basic application.
• Act quickly if your international application is denied certification—your international application typically must be certified and sent to the International Bureau within two months of when you filed it to claim priority. See the Petition to review denial of certification page to learn how to overcome a denial of certification.