Madrid Protocol International Filing Checklist: Extending Your Mark Abroad

By ·

This is the operational, start-to-finish checklist for taking a U.S. trademark across the border through the Madrid Protocol—the WIPO-administered system that lets one application, filed in one language and paid for in one currency, seek protection in well over 130 countries at once. It walks the whole arc in the order you live it: the strategic threshold question of Madrid versus direct national filing, getting the U.S. "basic mark" right because everything abroad depends on it, building and certifying the international application through the USPTO as Office of Origin, surviving WIPO's formality review, answering the provisional refusals that each designated country issues under its own law, and—most dangerously—nursing the basic mark through the five-year "central attack" window on which every extension silently depends. Each item carries a short Why note, a Trap warning where one lurks, and its controlling authority, from the Madrid Protocol itself (Articles 3, 5, 6, and 9quinquies) and the Common Regulations to the U.S. implementing statute (Lanham Act §§ 60-74, 15 U.S.C. §§ 1141-1141n), 37 C.F.R. Part 7, and TMEP Chapter 1900. A running worked example—a Brooklyn leather-goods maker extending into six markets—shows how the traps actually spring, and a flip-side section covers the inbound mirror (Section 66(a) extensions into the U.S. and Section 71 maintenance). Fees in Swiss francs and dollars drift constantly; confirm every figure with WIPO's Fee Calculator and the USPTO before you rely on it. Educational only, not legal advice.

Intellectual Property -> Trademark | Published 28 June 2026 | rightsy.io

What this checklist is for. This is a working, phase-by-phase checklist for taking a United States trademark abroad through the Madrid Protocol, the international filing system administered by the World Intellectual Property Organization (WIPO) that lets a single application—filed in one language, priced in one currency, and routed through one home office—seek protection in well over 130 countries at once. Follow it in order and you will file a clean international application, survive WIPO's formality review, manage the national examinations that follow, and avoid the quiet five-year trap (the "central attack") that sinks the unwary.

Who should use it. Founders and brand owners planning to sell, manufacture, license, or franchise outside the U.S.; in-house counsel and paralegals building an international portfolio; and any U.S. attorney who clears and prosecutes domestic marks and now needs to take one across the water's edge. It is written for the outbound filer—the U.S. owner extending a U.S. mark abroad. A short section near the end covers the inbound mirror (foreign holders extending into the U.S. under Section 66(a)), and the dedicated companion is Madrid Protocol: International Trademark Registration Through the USPTO.

What you'll need before you start. (1) A U.S. basic mark—an existing application or registration at the USPTO for the same mark, owned by the same party; (2) a settled list of target countries, each confirmed to be a Madrid member; (3) the mark depiction exactly as it appears in the basic mark (and the color, if claimed); (4) your goods and services already classified under the Nice system and within the scope of the basic mark; and (5) a budget that accounts for WIPO fees (in Swiss francs), a per-class USPTO certification fee (in dollars), and the local-counsel cost of any refusal you have to fight. Gather these first and the filing itself is mostly data entry.

This is education, not legal advice. Madrid practice sits at the intersection of an international treaty, U.S. implementing law, and the trademark law of every country you designate. Fees move constantly and membership grows every year. Confirm current law, fees, and membership with WIPO and the USPTO, and retain qualified counsel—at home and, when a refusal lands, in the country that issued it—before relying on anything here.

Trademark rights stop at the border. A United States registration, for all its Lanham Act muscle, is a purely domestic instrument: it confers exactly zero rights in Toronto, Tokyo, or Tallinn. This is the principle of territoriality, and it is the first thing a brand owner with cross-border ambitions has to internalize, because most of the world runs on first-to-file—whoever reaches the local registry first generally wins, regardless of who used the mark first or built it into something worth copying. The cautionary tales are legion: the U.S. company that spends a decade building a brand, expands into Europe, and discovers a local "squatter" already owns the name there, holding it for ransom. For the home-turf version of this idea, see where your trademark rights end; the international version is harsher, because abroad you may not even have the common-law fallback U.S. law gives you.

The Madrid Protocol is the most efficient answer the international system offers. Instead of hiring counsel in fifteen countries and filing fifteen separate national applications in fifteen languages with fifteen invoices, you file one international application, based on your U.S. mark, through the USPTO, which forwards it to WIPO in Geneva. WIPO records it, then notifies each country you designated, and each examines the mark under its own law. One filing, one renewal calendar, one place to record a change of address for the whole portfolio. It is elegant—and it has sharp edges that this checklist exists to help you avoid.

To keep every step concrete, one invented company runs through the entire checklist. Sorrel & Stone, LLC is a Brooklyn maker of small-batch leather goods—handbags, wallets, and tote bags in Class 18, plus leather jackets and scarves in Class 25—selling under the house mark SORREL & STONE. The brand has caught on, a Canadian retailer wants to carry it, a Japanese distributor is calling, and the founders want protection locked down in six markets before they expand: Canada, the European Union, the United Kingdom, Japan, South Korea, and Australia. Every decision Sorrel & Stone faces—which mark to base the filing on, how to classify, which countries to designate, how to survive a refusal in Japan, and how to keep a wobble in the U.S. basic registration from toppling the whole structure—is a decision you will face too.

The Madrid System in Ninety Seconds

Before the checklist, the mental model, because almost every Madrid mistake traces back to a misunderstanding of what the system actually is.

The Madrid System rests on two treaties—the Madrid Agreement (1891) and the Madrid Protocol (1989, in force 1996). The United States is party only to the Protocol, which it joined effective November 2, 2003 through the Madrid Protocol Implementation Act, codified at Lanham Act §§ 60-74, 15 U.S.C. §§ 1141-1141n. So for a U.S. filer, "Madrid" always means the Protocol. WIPO's International Bureau administers the system from Geneva; today it has well over a hundred members covering more than 130 countries, and the roster grows nearly every year.

Here is the architecture, and the single most important caveat in this entire document:

   U.S. BASIC MARK              YOU                 WIPO                 EACH DESIGNATED
   (application or              file ──►  USPTO  ──► International ──►    COUNTRY examines
    registration                          (Office   Bureau records       under its OWN law;
    at the USPTO)                          of        the international    grants protection
        │                                  Origin)   registration         OR issues a
        │                                  certifies & publishes          provisional refusal
        ▼                                  it matches                          │
   EVERYTHING ABROAD                       the basic                           ▼
   DEPENDS ON THIS                         mark                          A bundle of separate
   for FIVE YEARS                                                        national rights —
   (central attack)                                                      NOT one global mark

The Madrid Protocol does not create a "global trademark." There is no such thing. What you get is a single international registration that functions as a convenient administrative wrapper around a bundle of independent national rights—one in each country that grants protection. Each of those national rights lives or dies under that country's own law. The mark can be refused in Japan, sail through in Australia, and get opposed in the EU, all under the same international registration number. Madrid centralizes the filing and the housekeeping; it does not harmonize the substance. Hold onto that, and most of what follows will make sense.

Three more load-bearing concepts:

How to Read Each Item

Every checkbox below follows the same micro-format so you can scan it fast:

A note on citations. "Protocol" means the Madrid Protocol; "Common Regulations" means the Common Regulations under the Madrid Agreement and Protocol (WIPO's procedural rulebook, with "MM" form numbers); the U.S. statute is the Lanham Act as noted; "37 C.F.R. Part 7" is the USPTO's Madrid rules; and "TMEP Chapter 1900" is the USPTO's internal manual on Madrid practice. Verify every fee and membership fact against WIPO and the USPTO before filing.

Phase 0 — The Strategic Threshold: Is Madrid Even the Right Door?

Madrid is a tool, not a reflex. For some filers it is dramatically the cheapest path; for others it is a trap that locks them into a narrow U.S. specification and a five-year dependency they would have been wiser to avoid. Work this phase before you spend a franc.

Worked example. Sorrel & Stone runs the threshold. It qualifies (a Delaware-organized LLC, domiciled and operating in New York). All six targets—Canada, the EU, the UK, Japan, South Korea, Australia—are Madrid members, but the founders note two things: the UK must be designated separately from the EU, and they should clear the mark in Japan and South Korea, where a transliterated equivalent could lurk. Filing six direct national applications would cost more and scatter the renewal calendar, so Madrid wins. Because their U.S. registration issued eighteen months ago, the Paris six-month window is long gone—no priority claim—but that is fine; no competitor is sitting on SORREL & STONE in these markets, as their clearance confirms.

Phase 1 — Get the Basic Mark Right (Everything Abroad Stands on It)

The basic mark is the foundation, and a flaw here radiates outward into every country you designate. Spend real care on this phase.

Worked example. Sorrel & Stone owns a U.S. registration for the standard-character mark SORREL & STONE in Classes 18 and 25, plus a separate, still-pending application for its stylized logo. The founders base the international application on the registration (stable, already examined—no central-attack jitters) and on the word mark (broadest, font-independent protection). They decide the logo can wait for a second international application once its U.S. application matures. They also notice their U.S. Class 18 identification reads "handbags, wallets, and tote bags made of leather"—narrower than the "leather goods" their UK counsel says Britain would allow. Madrid caps them at the U.S. wording; they accept the narrower scope rather than splinter off a direct UK filing, because their actual product line fits inside it anyway.

Phase 2 — Build the International Application

With a sound basic mark, you assemble the international application itself. U.S.-origin filings are prepared and submitted through the USPTO (not directly to WIPO), in English, using the USPTO's electronic system; the USPTO then certifies and forwards the file. The underlying WIPO form is the MM2.

Phase 3 — Fees and Filing Through the USPTO

Madrid's fee structure is genuinely confusing the first time, because it has two layers in two currencies. Get it right and you avoid the irregularity notices that hold up a file for non-payment.

Worked example. Sorrel & Stone's filing covers two classes and five designations (Canada, EU, UK, Japan, South Korea, Australia—six "designations" counting the EU as one and the UK as another). The USPTO certification fee is charged on its two classes. On the WIPO side, the basic fee is the black-and-white rate (their word mark claims no color), but the bill balloons because the EU, Japan, the UK, Australia, and South Korea all charge individual fees. The founders run the exact combination through WIPO's Fee Calculator, are briefly startled by the total, and confirm the number before wiring Swiss francs. They file a clean application; the USPTO certifies within the two-month window, so their international registration date is the date the USPTO received the application.

Phase 4 — WIPO Formality Review and the International Registration

Once the USPTO forwards the file, WIPO takes over for a formalities check. WIPO does not examine whether your mark is registrable or whether it conflicts with anyone—that is each country's job. WIPO checks the paperwork and the classification.

Phase 5 — National Examination and Provisional Refusals

Now the system fans out. WIPO notifies each designated office, and each examines your mark under its own substantive law—distinctiveness, prior conflicting marks, formalities, the works. This is where Madrid's "bundle of national rights" reality becomes concrete.

Worked example. Months after the international registration issues, the designations resolve one by one. Canada, Australia, and the EU send Statements of Grant of Protection—clean. The UK examiner raises a minor classification query that local counsel clears with a short letter. Then Japan issues a provisional refusal, citing a prior Japanese registration for a similar mark on leather bags. Sorrel & Stone retains a Japanese benrishi (patent/trademark attorney), who argues the marks differ in appearance and sound to a Japanese consumer and, in parallel, opens a quiet negotiation with the cited owner. South Korea's window is still running. The crucial point: Japan's refusal is sealed off—it does not touch the granted Canadian, Australian, EU, or UK rights at all. The "bundle" works exactly as designed.

Phase 6 — The Dependency Period and Central Attack (the Five-Year Shadow)

This is the phase that separates filers who understand Madrid from those who merely used it. For five years, your entire international registration hangs by a thread tied back to the U.S. basic mark.

Worked example, the cautionary alternate. Imagine Sorrel & Stone had been in a hurry and based its international registration on a freshly filed, unexamined U.S. application for the logo, to grab a priority date. Two years in, a senior brand petitions to cancel that U.S. application on confusion grounds and wins. Under central attack, the international registration is cancelled—and Canada, the EU, the UK, Japan, Australia, and South Korea all fall together. The founders scramble into transformation, filing six separate national applications within three months at six local-counsel invoices, salvaging the rights but at exactly the cost and complexity Madrid was meant to avoid. The lesson they actually heeded: base the filing on the stable, examined registration, and the keystone holds.

Phase 7 — Maintain and Manage the International Registration

A granted Madrid portfolio is a living thing with two layers of upkeep: the WIPO layer (centralized) and the national layer (local). Manage both.

The Inbound Mirror: When the Arrow Points the Other Way (Section 66(a) and Section 71)

This checklist is about a U.S. owner going out. The same machine runs in reverse when a foreign holder extends an international registration into the United States—and you should understand it, both because you may encounter it as a competitor's filing and because the maintenance quirk catches even seasoned U.S. practitioners.

For the dedicated inbound treatment, see the forthcoming Madrid Protocol: International Trademark Registration Through the USPTO, and for the U.S. maintenance mechanics generally, Keeping Your Registration Alive and the Trademark Maintenance and Renewal Toolkit.

The Whole Arc, in One Worked Timeline

It helps to see Sorrel & Stone's journey as a single sequence, because the phases above are lived as one continuous matter.

  1. Day 0 — Threshold and clearance. The founders confirm eligibility, settle on Canada, the EU, the UK, Japan, South Korea, and Australia (UK separate from the EU), clear the mark in each, and choose Madrid over six direct filings.
  2. Week 2 — Basic mark locked. They base the international application on their stable, examined U.S. registration for the word mark SORREL & STONE in Classes 18 and 25—deliberately not the shaky pending logo application—and accept the U.S. specification as their scope ceiling.
  3. Week 3 — Application built and filed. Through the USPTO, in English, they designate the six parties, classify with WIPO's Goods & Services Manager, claim no Paris priority (window long past), and pay the USPTO certification fee on two classes.
  4. Week 5 — WIPO fees wired. They run the exact country-and-class mix through WIPO's Fee Calculator, swallow the individual-fee sticker shock, and pay WIPO in Swiss francs.
  5. Month 2 — Certified in time. The USPTO certifies and forwards within two months, so the international registration date is the USPTO receipt date. The five-year dependency clock starts.
  6. Month 4 — International registration issues. WIPO records the mark, publishes it in the Gazette, and sends the certificate. The founders resist the urge to announce "worldwide registration"—nothing is granted yet.
  7. Months 6-16 — National examinations. Canada, the EU, and Australia grant protection; the UK clears a minor classification query; Japan issues a provisional refusal that Japanese counsel fights and negotiates; South Korea's window runs and then grants.
  8. Year 5 — Independence. The U.S. basic registration, carefully maintained, sails through its own Section 8 window. The international registration becomes independent of it; central attack is now impossible.
  9. Year 10 — Centralized renewal. One WIPO renewal covers all six markets at once. Along the way, a single MM9 updated the company's address everywhere when it moved offices, and an MM4 subsequent designation added Mexico when the brand expanded south.

One filing, carefully built, became a managed six-market portfolio—with exactly one real fight (Japan) and one structural discipline (protect the basic mark for five years) doing most of the work.

Common Mistakes

The errors below recur with enough regularity that naming them is a public service.

A Master Reference: Deadlines, Fees, and Forms

Treat every figure as a snapshot to verify; Swiss-franc and dollar amounts and membership all move.

| Item | Timeframe / amount | Authority / tool | |------|--------------------|------------------| | Paris priority window | 6 months from U.S. basic filing | Paris art. 4; 15 U.S.C. § 1141g | | USPTO certification clock (sets IR date) | WIPO must receive within 2 months of USPTO receipt | Protocol art. 3(4); 37 C.F.R. § 7.13 | | USPTO certification fee | per class (recently ~$100/class, single basis) | 37 C.F.R. § 7.7 (verify) | | WIPO basic fee | recently 653 CHF (B&W) / 903 CHF (color) | Common Reg. Schedule of Fees (verify) | | WIPO complementary fee (non-individual-fee countries) | recently 100 CHF each + supplementary per class over 3 | Schedule of Fees (verify) | | WIPO individual fee (e.g., EU, Japan, UK, Australia, Korea) | set by each country (usually higher) | WIPO Fee Calculator (verify) | | National provisional refusal window | 12 or 18 months (per country declaration) | Protocol art. 5(2) | | Dependency / central-attack period | 5 years from international registration date | Protocol art. 6(2)-(3) | | Transformation window after cancellation | 3 months | Protocol art. 9quinquies | | International registration renewal | every 10 years, via WIPO, all designations | Protocol art. 7; Common Reg. Rule 30 | | U.S. Section 66(a) extension fee (inbound) | $600/class (eff. Feb. 18, 2025) | 15 U.S.C. § 1141f (verify) | | U.S. Section 71 affidavit (inbound maintenance) | 5th-6th yr, then every 10 yr; recently $325/class | 15 U.S.C. § 1141k (verify) |

Key WIPO tools: the Madrid Goods & Services Manager (build a classification that survives in each country), the Fee Calculator (price your exact country-and-class mix), Madrid Monitor (track the registration and each designation), and the Member Profiles Database (country-by-country rules and declarations). All are free on WIPO's website.

Key WIPO forms: MM2 (international application), MM4 (subsequent designation), MM5 (change of ownership), MM6 (limitation), MM7 (renunciation), MM8 (cancellation), MM9 (change of name/address), MM18 (declaration of intent to use—required when the U.S. is designated).

Frequently Asked Questions

Does a Madrid international registration give me a worldwide trademark? No. There is no worldwide trademark. You get one international registration that bundles independent national rights, one per country that grants protection, each governed by that country's own law. Madrid centralizes filing and housekeeping, not substance.

Do I need a U.S. registration before I can file through Madrid? You need a U.S. basic mark—either a pending application or a granted registration—for the same mark and owner. You cannot use Madrid to register only abroad while skipping the U.S.; the basic mark is the required anchor. See From Filing to Registration: A USPTO Application Checklist.

What is "central attack," and how do I survive it? For five years, your international registration depends on the U.S. basic mark; if a challenger kills the basic mark (a single U.S. cancellation or opposition), every foreign extension falls with it. You survive it by basing the filing on a stable, examined—ideally incontestable—U.S. registration, by guarding that mark obsessively for five years, and, if the worst happens, by transformation within three months. See Cancelling a Registration at the TTAB.

Can I claim broader goods abroad than my U.S. registration covers? No. The international application can be narrower than, but never broader than, the basic mark—and U.S. identifications run unusually narrow. If broad coverage in a particular market is essential, file directly in that country instead of (or in addition to) using Madrid. See Goods, Services, and the Nice Classes.

How much does it cost? Two layers: a per-class USPTO certification fee in dollars, plus WIPO fees in Swiss francs (a basic fee plus a per-country fee, with the valuable markets charging higher "individual" fees). Add local-counsel cost for any provisional refusal. Run your exact country-and-class combination through WIPO's Fee Calculator, and budget for at least one refusal.

Is Madrid always cheaper than filing directly in each country? Only when your filings are clean and uncontested across several member countries. A single provisional refusal pulls in local counsel and erodes the savings; a non-member target is unreachable through Madrid entirely; and the scope ceiling and dependency risk are real costs. For one or two countries, or where you need broad tailored specifications, direct national filing is often better.

What happens after my mark is granted in a country—am I done? No. A granted designation is protected "as if registered nationally," which means it is subject to that country's use requirements and vulnerable to non-use cancellation. You must renew the international registration at WIPO every ten years and satisfy each country's national use obligations (for the U.S., the Section 71 affidavit). Two layers, both mandatory.

A foreign company just extended its mark into the U.S. under Section 66(a). How do I challenge it? It is examined and published like any U.S. application, so you can oppose it at the TTAB on the usual grounds, and it remains exposed to central attack on its own home basic mark for five years. See Filing a Notice of Opposition at the TTAB.

Related Resources

Closing: Build the Foundation, Then Manage the Bundle

The Madrid Protocol is one of the highest-leverage moves in international brand strategy: a single, well-built application can become protection in dozens of markets, managed from one place, renewed in one transaction. But the leverage cuts both ways. Because everything abroad is built on the U.S. basic mark, a flaw at home—an unexamined application, a missed maintenance deadline, an abandonment for non-use—can radiate outward and, during the five-year dependency window, topple the entire structure through central attack.

So the discipline is twofold, and this checklist is built around it. First, build the foundation right: base the filing on a stable, examined, ideally incontestable U.S. registration; match the mark and the owner exactly; respect the scope ceiling; and guard that basic mark like the keystone it is for five full years. Second, manage the bundle: treat each designation as the independent national right it is, fight the refusals that come on their own local deadlines through local counsel, renew at WIPO on the ten-year clock, and satisfy each country's national use obligations separately. Do those two things and the system rewards you with exactly what it promises—global reach without global chaos.

Sorrel & Stone got there by making one quiet, correct decision early (base it on the solid registration, not the shaky application) and one disciplined commitment after (protect the basic mark for five years). Your marks are among your most valuable assets, and the markets you are entering are first-to-file races you cannot afford to lose. Extend your mark abroad—but build the foundation before you do, and manage the bundle once you have.

This checklist is for general information only and is not legal advice. Madrid Protocol practice depends on an international treaty, U.S. implementing law, and the trademark law of every country you designate; fees in Swiss francs and dollars change frequently, and Madrid membership grows nearly every year. Confirm current fees with WIPO's Fee Calculator and the USPTO fee schedule, verify membership on WIPO's official list, and consult qualified counsel—at home and, when a refusal lands, in the country that issued it—before relying on anything here. For help building the U.S. basic mark or planning an international filing strategy, Rightsy's virtual trademark attorneys are one option; the right move is always to get real advice on your real facts.

Read this article on Rightsy