Key points
- The Madrid Protocol lets you extend a home-country trademark to the United States and many other countries through one international application filed with your home office.
- A direct USPTO application is filed in the United States and stands on its own.
- Madrid is often efficient for multi-country filings. A direct filing usually gives more flexibility for the U.S. application.
How each route works
Madrid Protocol (a "Section 66(a)" application)
You file an international application through your home trademark office, based on your home application or registration, and designate the United States. The World Intellectual Property Organization (WIPO) records the international registration and forwards the U.S. designation to the USPTO, which examines it under U.S. law.
Direct USPTO filing
A U.S. attorney files an application directly with the USPTO. It can be based on use in U.S. commerce (Section 1(a)), a bona fide intent to use (Section 1(b)), or a foreign application or registration (Section 44(d) or 44(e); see our Section 44 guide).
Side by side
| Madrid Protocol | Direct USPTO filing | |
|---|---|---|
| Where you file | Your home trademark office, then WIPO | The USPTO |
| U.S. attorney needed to file | No, but one is required to respond to any Office Action | Yes, for foreign-domiciled applicants |
| Depends on your home filing | Yes, for five years from the international registration date | No |
| Goods and services | Limited to your international registration, then narrowed to U.S. standards | Written for the U.S. from the start |
| Changing the filing basis | Not allowed | Allowed (for example, from intent-to-use to use) |
| Supplemental Register | Not available | Available |
| Multiple countries | One application, many countries | One country per application |
Why Madrid filings often meet trouble in the U.S.
- Strict identifications. The USPTO requires goods and services to be described precisely. Broad class headings that are accepted elsewhere are often refused as indefinite, and a Madrid filing can only be narrowed, never broadened or rewritten beyond its original scope.
- Office Actions need U.S. counsel. When an Office Action issues, a foreign-domiciled holder must hire a U.S. attorney anyway, often under deadline pressure.
- Central attack. For five years, if your home application or registration is refused, cancelled, or narrowed, the U.S. extension falls with it. It can be transformed into a U.S. national application within three months, but that adds cost and work.
- No basis changes. A Madrid filing in the U.S. can't switch to another basis or move to the Supplemental Register if the mark is found descriptive.
When Madrid makes sense
- You want protection in many countries at once and manage it centrally.
- Your home registration is secure and your goods and services are described specifically.
- The mark is distinctive and unlikely to face descriptiveness objections in the U.S.
When a direct USPTO filing makes sense
- The United States is your most important market.
- Your home filing is new, contested, or could be narrowed.
- You want the U.S. description of goods and services written for U.S. examination from day one.
- You want the option to change basis or use the Supplemental Register.
Keeping the U.S. registration alive
Either way, the U.S. requires proof that the mark is in use in U.S. commerce. For a Madrid-based U.S. registration, a declaration of use under Section 71 is due between the fifth and sixth years after the U.S. registration date, and again every ten years. For a direct registration, a Section 8 declaration is due on a similar schedule. Missing these deadlines cancels the U.S. registration.
How we help
We review your mark, your home filing, and your goods and services, and recommend the route that fits your U.S. plans. If you've already filed through Madrid, we act as your U.S. attorney to respond to Office Actions and handle maintenance filings. For protection in other countries, we coordinate with trusted local counsel, with Solace Law as your single point of contact.
This guide is general information about U.S. trademark law, not legal advice, and reading it does not create an attorney-client relationship. Rules and fees change; contact us about your specific situation. We do not advise on foreign law.