Madrid Protocol Application Checklist

By Casey Scott McKay · 2026-01-15

A phase-by-phase working checklist for assembling and filing a Madrid Protocol international application through the USPTO, built around the fact that nobody examines it — the USPTO either certifies the application or refuses to certify it, with no office action and no chance to fix a defect on the record. It covers the entitlement screen under 15 U.S.C. § 1141a(b), the character-for-character reconciliation against the basic application or registration required by 37 C.F.R. § 7.11(a), the reproduction and color rules in 37 C.F.R. § 7.12 and [TMEP § 1902.02(d)](/search?q=TMEP+%C2%A7+1902.02%28d%29), the goods-and-services ceiling in [TMEP § 1902.02(f)](/search?q=TMEP+%C2%A7+1902.02%28f%29), the designation list and its country-specific add-ons, and the three-payee fee arithmetic under 37 C.F.R. §§ 7.6 and 7.7. It then walks certification, the two-month transmission window that sets the international registration date, and the International Bureau's notices of irregularity under Rules 11 through 13 and 37 C.F.R. § 7.14. One invented Chattanooga bicycle company runs through all eleven phases. It closes with the docket you must build the day the international registration issues, a deadlines table, and a current fee schedule.

IP and Technology > Trademarks | Checklist | Published 15 January 2026 - Updated 3 February 2026 | Casey Scott McKay - marksy.us

Summary. This is the pre-filing sweep for a Madrid Protocol international application filed through the USPTO — what you need in hand, what has to match the basic filing exactly, and what happens the moment you press submit. The organizing fact is that no one examines this application. The USPTO reviews it against a checklist in 37 C.F.R. § 7.11(a) and either certifies it or refuses to certify it. There is no office action, no six months to respond, and no negotiation. The checklist walks the entitlement statement under 15 U.S.C. § 1141a(b), the character-for-character reconciliation against the basic application or registration, the reproduction and color rules, the identification ceiling in TMEP § 1902.02(f), the designation list with its country-specific add-ons, the three-payee fee arithmetic, and the two-month transmission window that fixes your international registration date. It then covers the International Bureau's notices of irregularity and the docket you build the day the registration issues. One invented Chattanooga bicycle company carries the whole thing.

Keywords: madrid protocol · international application · wipo international bureau · basic application · basic registration · statement of entitlement · certification fee · 37 cfr 7.11 · notice of irregularity · designated contracting party · nice classification · five-year dependency · central attack · provisional refusal · madrid monitor · subsequent designation · individual fee · declaration of intention to use · trademark docketing

What this checklist is for

Use this checklist to make sure nothing is missed, because nothing else will catch it. Every other trademark filing you make in the United States gets read by a human being who will write to you if something is wrong. An international application does not. The USPTO's role as office of origin is certification, not examination: it confirms that the application contains the eleven elements listed in 37 C.F.R. § 7.11(a) and that what you typed matches the basic application or registration, then forwards the file to WIPO's International Bureau in Geneva. If it does not match, the Office refuses to certify, notifies you, and stops. There is no office action and no opportunity to amend — only a petition to the Director. TMEP § 1902.03(a); 37 C.F.R. § 2.146.

If you filed the prepopulated form and changed nothing, the Office does not even look; the system certifies and transmits automatically. Your typing is the last quality control in the process. That is the whole argument for doing this work in a fixed order, on paper, before you open the form.

Who should use it. Trademark counsel filing a first international application for a growing client; in-house counsel extending a house mark into eight markets on a budget; a paralegal assembling the file for attorney review; anyone who has been handed a market list and a deadline.

What you'll need before you start. The serial number and filing date of every basic application, and the registration number and registration date of every basic registration, pulled from TSDR the same day; the applicant's exact legal name, entity type, and jurisdiction of organization from the certificate of formation, not the letterhead; the applicant's domicile address; a working email address for the applicant and for any representative appointed before the International Bureau; the drawing file from the basic filing and, if color is claimed, a color reproduction; the identification of goods and services exactly as it now stands after any amendment; the Nice class numbers; the client's approved country list with a note on which markets are manufacturing or transit rather than sales; a fee estimate run through WIPO's Fee Calculator within the last week; and a decision, in writing, on whether you are filing now to catch the Paris priority window or waiting for the basic application to register.

The strategic questions behind this filing are answered next door. Read the International Trademark Toolkit: Madrid, Paris, and Country-by-Country Strategy for the route comparison, and Designating Countries Under the Madrid System when the question is where and how much. If the system itself is new to you, The Madrid Protocol: How International Registration Works is the ten-minute orientation and Filing an International Trademark via the Madrid Protocol is the narrative walkthrough. This checklist is the mechanics.

The phases at a glance

| Phase | What you accomplish | When | |---|---|---| | 1 | Confirm entitlement to file through the USPTO | Week -3 | | 2 | Choose the basic filing and price the dependency risk | Week -3 | | 3 | Reconcile the applicant record, character for character | Week -2 | | 4 | Fix the representation of the mark and its type | Week -2 | | 5 | Build the goods and services list under the U.S. ceiling | Week -2 | | 6 | Lock the designation list and the country add-ons | Week -1 | | 7 | Compute and stage the fees for three payees | Week -1 | | 8 | Choose the form and assemble the application | Filing week | | 9 | File, then watch the certification and transmission window | Day 0 to day 60 | | 10 | Clear the International Bureau's irregularity notices | Day 30 to day 180 | | 11 | Build the docket the day the registration issues | On issuance |

The worked example

Tallow Creek Cycles, Inc., a Tennessee corporation in Chattanooga, welds steel gravel-bike frames and runs a fitting-and-repair shop. European distributors signed in January; a Japanese importer signed in February. The client wants protection in eight markets and has approved roughly $9,000 in government fees and counsel time.

| Property | Mark | Class / status | |---|---|---| | Reg. No. 7,244,019 | TALLOW CREEK (standard characters) | Cl. 12 — "bicycle frames; bicycles; bicycle forks"; registered 11 June 2024 | | Ser. No. 98/661,205 | TALLOW CREEK (standard characters) | Cl. 37 — "bicycle repair; custom bicycle fitting services"; § 1(a), filed 4 Sept. 2025, published 20 Jan. 2026 | | Reg. No. 7,301,442 | Creek-bend device with TALLOW CREEK (special form, color claimed: slate blue and copper) | Cl. 12; registered 3 Dec. 2024 |

Target designations: the European Union, the United Kingdom, Switzerland, Norway, Japan, Australia, Canada, and the Republic of Korea. Taiwan is a real market for the company's components and is not a Madrid member, so it gets a direct national filing outside this program. Target filing date: 2 March 2026.

Phase 1 — Confirm entitlement to file through the USPTO

[ ] Establish that the applicant is a national of the United States, is domiciled in the United States, or has a real and effective industrial or commercial establishment in the United States — and write down which one and why.
- Authority. Madrid Protocol art. 2(1); 15 U.S.C. § 1141a(b); 37 C.F.R. § 7.11(a)(11). The statement of entitlement is a filing-date requirement, not a formality.
- Why. Entitlement is what makes the USPTO your office of origin. Get it wrong and the International Bureau can refuse the registration long after your money is spent.
- Trap. A foreign parent cannot ride on its U.S. subsidiary's presence. The presence of a wholly owned subsidiary does not by itself establish country of origin. In re Aktiebolaget Electrolux, 182 U.S.P.Q. 255 (T.T.A.B. 1974). Nor does a distributor relationship. Kallamni v. Khan, 101 U.S.P.Q.2d 1864 (T.T.A.B. 2012). "A mere office or storehouse is not sufficient." Ex parte Blum, 138 U.S.P.Q. 316 (Comm'r Pat. 1963).
- "Real and effective" in Section 61 and "bona fide and effective" in Section 44 mean the same thing; the divergence is a translation artifact from the Paris Convention's French text. 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:31.40 (5th ed.).
[ ] Where there are joint applicants, obtain a separate statement of entitlement from each. TMEP § 1902.02(j).
[ ] Confirm the applicant is the same entity that owns the basic filing — not an affiliate, not a newly formed holding company, not the founder personally.
- Trap. If the marks were assigned last quarter and the assignment has not been recorded and the owner of record has not been updated, you cannot file. Fix the record first; the sequence is in the Trademark Assignment Recordal Checklist.
[ ] If a restructuring is planned within five years, check now whether the successor will itself be eligible to hold an international registration. An international registration may be assigned only to a person entitled to file one. Madrid Protocol art. 9; Common Regulations Rule 25(2).

Phase 2 — Choose the basic filing and price the dependency risk

[ ] Identify every live U.S. application and registration for the identical mark owned by the applicant, and decide which ones will serve as the basic filing.
- Why. An international application may rest on more than one basic application or registration — that is how you assemble classes that live in separate U.S. files.
- Trap. All basic filings must show the same mark and the same owner. TALLOW CREEK in standard characters and the creek-bend logo are two marks and need two international applications, two certification fees, and two sets of WIPO fees. Applicants discover this at the form.
[ ] Prefer a registration over a pending application where the calendar allows, and say in the file memo why you did not.
- Why. For five years from the international registration date, the international registration and every extension under it depend on the basic filing. Refuse it, abandon it, oppose it successfully, or narrow it, and the USPTO reports the change, the International Bureau applies it, and every designated office follows. Madrid Protocol art. 6(2)-(3); 15 U.S.C. § 1141c. Article 6(3) reaches proceedings commenced inside the five years even if they conclude afterward.
- Trap. A Section 1(b) basic application that never proves up takes the whole international registration with it. The escape hatch — transformation into national applications within three months of cancellation, claiming the international registration's date under art. 9quinquies — works, and costs roughly what filing nationally would have cost, all at once. Central attack is unpacked in the International Trademark Toolkit; the intent-to-use exposure is in Intent-to-Use Applications, From Notice of Allowance to Registration, and the Statement of Use Filing Checklist.
[ ] Resolve the priority-versus-dependency fork in writing before you go further.
- Authority. Paris Convention art. 4C(1) gives six months from the basic application's filing date to claim that date in the designated countries. The claim must be made in the international application; it cannot be added by amendment later.
[ ] Confirm the mark has been cleared in the markets you are about to enter, and that the U.S. file is not itself fragile.
- Why. A home-country loss during dependency is a loss everywhere. Clearance discipline is worth more here than domestically. See Trademark Clearance Searching: What a Knockout Search Can and Cannot Tell You, Running a Full Trademark Clearance Search, and the Trademark Clearance Search Checklist.
- Worked example. Tallow Creek's Class 37 application is published but not registered. It goes into the international application anyway — the client needs the March priority date in Japan — and the file memo records that the Class 37 designation is at dependency risk until 20 February 2031 and that a TTAB opposition must be treated as a portfolio emergency, not a domestic one.

Practice tip. Put the end of the dependency period on the docket as a hard entry with the words "central attack window closes" next to it. Five years is long enough that whoever inherits the file will not know why the date is there unless you say so.

Phase 3 — Reconcile the applicant record, character for character

[ ] Print the TSDR owner information for every basic filing and set it beside the certificate of formation. Reconcile the legal name, the entity type, and the jurisdiction of organization.
- Authority. 37 C.F.R. § 7.11(a)(2); TMEP § 1902.02(b). The applicant's name and entity type in the international application must be identical to the basic filing.
- Trap. "Tallow Creek Cycles, Inc." and "Tallow Creek Cycles Inc." are the same company and two different strings. The Office compares strings.
[ ] If the basic record is wrong, correct it at the USPTO first. You cannot use the international application to fix a domestic record, and the mismatch produces a refusal to certify, not a request for clarification.
[ ] Supply a current address for the applicant, and a domicile address where required.
[ ] Supply an email address for the applicant and, if you appoint one, for the representative before the International Bureau.
- Authority. 37 C.F.R. § 7.4 requires electronic filing of everything relating to international applications originating with the USPTO and a valid, maintained email address. Since February 2023 all communications among the International Bureau, designated offices, and holders are electronic.
- Trap. A missing email is a notice of irregularity from Geneva — a three-month detour that costs nothing but time.
[ ] Decide whether to appoint a representative before the International Bureau, and if so, do it on the application or by form MM12. No power of attorney and no legalization is required.
- Trap. A representative before the International Bureau is not a representative before any designated office. Most countries require a locally qualified agent to answer a provisional refusal. Get indicative fixed-fee quotes for a first response in each designated country before you file — agents quote very differently to a prospective client than to a client with a deadline in nineteen days.

Phase 4 — Fix the representation of the mark and its type

[ ] Match the representation to the drawing in the basic filing exactly. Standard characters stay standard characters; special form stays special form.
- Authority. TMEP § 1902.02(d).
[ ] Handle color deliberately. If color is claimed in the basic filing, claim it in the international application and name the same colors. If color is not claimed in the basic filing, you may not claim it in the international application.
- Authority. 37 C.F.R. § 7.12(a)-(b).
- Trap. This is a one-way gate and it closes behind you. A black-and-white basic registration cannot produce a color international registration, and the workaround — filing a new U.S. application with a color claim and using it as the basic filing — costs months.
- Note. Where the basic filing is black and white with a color claim, the TMEP has historically wanted both a black-and-white and a color reproduction; WIPO's 2023 amendments allow a single representation, in color. Supply what the form asks for and keep both files.
[ ] If the basic filing includes a description of the mark, copy it verbatim.
[ ] Declare the mark type where the basic filing shows a three-dimensional mark, a sound mark, a collective mark, or a certification mark. The type declaration is what routes the file correctly at each designated office.
- Trap. Non-traditional marks travel badly. Several Madrid members will not register a single-color mark, a scent, or a bare product shape at all, and a U.S. registration built on acquired distinctiveness carries no weight abroad. Fix the U.S. record first: the Non-Traditional Trademark Application Checklist and Registering a Non-Traditional Mark are the two to work before you internationalize a drawing or a description you are unsure of. Certification and collective marks bring a governance file that several offices will want in translation — see the Certification and Collective Mark Application Checklist and Certification and Collective Marks.
[ ] Add a transliteration of any non-Latin characters and a translation of the mark where it has meaning in another language. Both are optional at filing and expected by several offices; supplying them now is cheaper than an irregularity later.
[ ] Where the logo is doing real work, register it at the Copyright Office too. A device mark is usually a protectable work of visual art, and the U.S. registration is what buys statutory damages and the right to sue. See the Copyright Registration Checklist: From Deposit to Certificate.
- Worked example. Tallow Creek's creek-bend device goes into a second international application with the color claim carried over from Reg. No. 7,301,442, and into a Form VA copyright application the same week.

Phase 5 — Build the goods and services list under the U.S. ceiling

[ ] Copy the identification from each basic filing as amended, then confirm the international application's list is identical to or narrower than it.
- Authority. TMEP § 1902.02(f). If the list is broader, the USPTO will not certify. There is no negotiation.
- Why. Your U.S. identification is the ceiling for every extension of protection that will ever issue from this basic mark. The United States has the narrowest identification practice of any major office, and an examining attorney who made you write "downloadable software for measuring dissolved oxygen" fixed your worldwide scope, not just your domestic scope.
[ ] Classify under the current edition of the Nice Classification and check every term against WIPO's Madrid Goods & Services Manager.
- Trap. The USPTO does not review classification. The International Bureau does, and disagreement produces a Rule 12 irregularity that suspends the file for months. The Goods & Services Manager will also tell you which designated offices accept a given term, which is the cheapest research you will do all week.
[ ] Where you are narrowing goods for particular countries, list the goods and services that pertain to each designated party separately in the application.
- Authority. TMEP § 1902.02(f).
- Trap. A country-specific limitation is permanent for that country. Form MM6 records a limitation; there is no un-limitation. If the goal is cost control, drop the designation, not the goods.
[ ] Count classes and ask, for each one, whether it is doing work in every designated country. Fees multiply by class nearly everywhere.
- The doctrine is in The Nice Classification System; the drafting manual is Drafting an Identification of Goods and Services; the pre-flight is the Goods and Services Identification Checklist.
[ ] Screen the goods for markets that will not take them. Cannabis-adjacent, alcohol, firearms, supplement, and medical-device terms are regulated differently in every jurisdiction and a term that cleared the USPTO may be refused outright abroad. Start from the Regulated-Industry Trademark Filing Checklist.

Phase 6 — Lock the designation list and the country add-ons

[ ] Designate at least one Contracting Party. This is a filing-date requirement.
- Authority. 37 C.F.R. § 7.11(a)(9).
[ ] Confirm every country on the client's list is actually a Madrid member. Roughly 115 Contracting Parties cover well over 130 countries; Hong Kong, Taiwan, Argentina, and most of Central America and the Andean states are outside the system, while Brazil, Mexico, Colombia, and Chile are in.
- Trap. You cannot designate the United States on a U.S.-origin international application. The office of origin is not an available designation, and a client who asks for "the U.S. plus Europe" is asking for two different filings.
[ ] Sort the list into three buckets — sales markets, manufacturing and transit countries, and squatting or counterfeiting hotspots — and price each bucket separately.
- Why. A registration in a manufacturing country is what lets customs stop a counterfeit run before it leaves the factory, with no sales in that country required. See the Anticounterfeiting and Border Enforcement Toolkit.
- The where-and-how-much analysis, including the China subclass problem and the EU-versus-national-states arithmetic, is worked in full in Designating Countries Under the Madrid System. Do not redo it here; import the answer.
[ ] Where the European Union is designated, select the second language before EUIPO from English, French, German, Italian, and Spanish, and decide whether to claim seniority from an earlier national registration on form MM17.
[ ] Identify any designated party that requires a declaration of intention to use under Common Regulations Rule 7(2), and prepare it. A designation of the United States requires form MM18; a handful of other parties require the declaration in the application itself. WIPO's Madrid Member Profiles Database is the authoritative list.
[ ] Note which designations you are deliberately deferring to a subsequent designation on form MM4.
- Authority. 37 C.F.R. § 7.21; TMEP § 1902.08.
- Trap. A subsequent designation takes its own date, not the international registration's. Speculative markets are fine to defer; markets with squatter risk are not.
- Worked example. Tallow Creek defers New Zealand and Mexico. Both are plausible in two years, neither has a distributor today, and neither has a squatting history in Class 12 that anyone can point to.

Phase 7 — Compute and stage the fees for three payees

[ ] Build the fee estimate from three separate lines: the USPTO certification fee, the WIPO basic fee, and the individual or complementary fee for each designated party.
- Authority. 37 C.F.R. §§ 7.6, 7.7.
[ ] Compute the certification fee per class, and check whether you are basing the application on one basic filing or more than one — the rate changes.
- Worked example. Tallow Creek is basing on one registration and one application, so the rate is $150 per class. Two classes: $300 to the USPTO.
[ ] Re-run WIPO's Fee Calculator within a week of filing and screenshot the result into the file.
- Why. Individual fees are set by each Contracting Party in Swiss francs, revised without much notice, and move with exchange rates. A quote from November is not a quote.
[ ] Decide where the WIPO fees are paid — with the application through the USPTO, or directly to the International Bureau — and confirm the client's payment mechanics before filing day.
- Authority. 37 C.F.R. § 7.7.
- Trap. Fees for correcting an irregularity are a different animal: they must always be paid directly to the International Bureau, never through the USPTO. 37 C.F.R. § 7.14(c). Every year somebody routes an irregularity fee through the wrong office and watches the three-month clock run out.
[ ] Reserve a contingency line for provisional refusals. Government fees are the small half of an international program; agent fees answering refusals in three countries will exceed the whole filing budget.
- Worked example. Tallow Creek's eight designations in two classes come to roughly 4,165 Swiss francs to WIPO — the 653-franc basic fee plus individual fees for the EU, the UK, Switzerland, Norway, Japan, Australia, Canada, and Korea — call it $5,200, plus the $300 certification fee. About $5,500 in government fees for eight jurisdictions in two classes, against roughly $13,000 to file the same eight nationally. The remaining $3,500 of the client's budget covers the Taiwanese direct filing and one anticipated refusal.

Phase 8 — Choose the form and assemble the application

[ ] File electronically through the USPTO's trademark electronic filing system. Paper requires a petition to the Director under 37 C.F.R. § 2.146(a)(5) and (c) and is reserved for system outages and genuinely extraordinary circumstances.
- Authority. 37 C.F.R. § 7.4.
- Note. You never touch WIPO form MM2 as a U.S. applicant. The USPTO's system generates the international application and transmits it.
[ ] Choose between the prepopulated form and the free-text form deliberately. Use the prepopulated form unless the application is based on more than one basic filing, or unless you need a change beyond narrowing the goods or services, changing the classification, changing the applicant's address, or attaching a color reproduction where the basic filing is black and white with a color claim.
- Authority. TMEP § 1902.02(a).
- Worked example. Tallow Creek has two basic filings, so the free-text form is mandatory. Every field is retyped, which is exactly why Phases 3 through 5 exist.
[ ] Enter the priority claim now if you are claiming one. It cannot be added later.
[ ] Walk the eleven elements of 37 C.F.R. § 7.11(a) as a literal punch list before submitting: basic filing numbers and dates; applicant name, entity type, and address; reproduction of the mark; color claim; description; mark type; goods and services with Nice classes; designated Contracting Parties; the certification fee; the WIPO fees and an email address; and the statement of entitlement.
[ ] Proofread against the TSDR printouts one more time, out loud, with a second person. This is the last moment a mistake is cheap.

Trap. The prepopulated form's convenience is also its risk. Submit it unmodified and the USPTO certifies and transmits automatically, without a human reading it. The autopilot does not know that the client changed its name in November.

Phase 9 — File, then watch the certification and transmission window

[ ] Save the filing receipt, the full application as filed, and the fee confirmation to the matter file the same day.
[ ] Diary the certification. Check TSDR weekly until the application shows as certified and forwarded.
[ ] Understand what the two-month rule buys you. If the International Bureau receives the certified application within two months of the date the USPTO received it, the international registration takes the USPTO receipt date. Miss the window and the registration takes the date the International Bureau received it.
- Authority. Madrid Protocol art. 3(4); TMEP § 1902.04.
- Why. In first-to-file jurisdictions, weeks matter. This is the reason to file early in the priority window rather than on its last day.
[ ] If the USPTO refuses to certify, read the notice for what it actually says, then decide fast between a petition under 37 C.F.R. § 2.146 and a corrected refiling.
- Authority. TMEP § 1902.03(a).
- Trap. A refiling gets a new date. If the refusal lands in month six of the priority window, the priority claim may be gone. Budget the petition.

Phase 10 — Clear the International Bureau's irregularity notices

[ ] Expect a notice of irregularity and calendar the three-month response period the day it arrives.
- Authority. Common Regulations Rules 11-13; 37 C.F.R. § 7.13.
- Why. Irregularities are routine, not a judgment on your work. The common ones are fee shortfalls, classification disagreements, vague identifications, representative details, priority-claim particulars, and the representation of the mark.
[ ] Sort the notice by who must respond. Some irregularities are the USPTO's to cure; classification and identification irregularities are routed through the USPTO, which checks that your response does not broaden the goods beyond the basic filing; the rest are yours to answer directly.
- Authority. 37 C.F.R. § 7.14(a)-(b); TMEP § 1902.07.
[ ] File any USPTO-routed response at least one month before the International Bureau's deadline.
- Authority. 37 C.F.R. § 7.14(e). What matters is receipt in Geneva, not mailing in Alexandria.
[ ] Pay any irregularity fee directly to the International Bureau.
- Authority. 37 C.F.R. § 7.14(c).
[ ] Confirm in writing that the response was received. An unanswered irregularity can be treated as abandonment of the international application.

Phase 11 — Build the docket the day the registration issues

[ ] Record the international registration number, the international registration date, and the date the mark published in the WIPO Gazette of International Marks. Save the certificate.
[ ] Explain to the client, once, in writing, that the certificate is not a registration anywhere. Each designated office still examines under its own law and issues its own grant of protection under Rule 18ter. What you own is a bundle of national rights on one renewal calendar.
[ ] Docket the refusal windows per country: twelve months from notification of the designation, or eighteen where the party has declared the longer period, with a later window for opposition-based refusals.
- Authority. Madrid Protocol art. 5(2)(a)-(c). Silence past the deadline means protection is granted.
- When a refusal arrives, WIPO Office Actions and Provisional Refusals explains the shape of the thing, and the Office Action Response Toolkit and Trademark Refusals and Statutory Bars Toolkit will let you classify it before you spend money briefing an agent. A well-classified refusal costs half as much to answer.
[ ] Docket the ten-year renewal from the international registration date, with the six-month grace period noted as a surcharge, not a safety net. Madrid Protocol arts. 6(1), 7(1), 7(4).
[ ] Docket the end of the dependency period and every U.S. deadline that could damage the basic filing inside it — the Section 8 window in particular, which lands almost on top of the five-year mark and can propagate a post-registration audit deletion abroad. See Filing a Section 8 Declaration of Continued Use and the Section 8 & 9 Renewal Checklist.
[ ] Docket the use deadlines abroad — five years in the European Union, three in China and Japan, three to five elsewhere — and tell the client now that a designation nobody uses becomes a cancellation target on schedule. Use It or Lose It is the domestic analogue, and the concept travels.
[ ] Track the registration in Madrid Monitor, assign a human owner to check it monthly, and confirm the correspondence address is one somebody reads.
- Trap. Provisional refusals arrive through WIPO at whatever address the international registration lists. A stale address is how a twelve-month window closes unnoticed.
[ ] Add the registration to the portfolio inventory and the watch program, and note the WIPO-only recordals — name and address changes on MM9, ownership changes on MM5, limitations on MM6 — that go to Geneva rather than the USPTO. See Building and Managing a Trademark Portfolio, the Annual Trademark Portfolio Review Checklist, Trademark Watch Services, and Docketing Deadlines.
[ ] Close the file with a one-page memo: what was filed, on what basis, the dependency date, what was deferred and why, and the next three dates.

Common Mistakes

Treating certification as examination. The USPTO checks a list and forwards the file. TMEP § 1902.03(a). Nobody is reading your application for sense.
Filing off two different marks. Every basic filing must show the same mark. A word mark and a logo are two international applications.
A one-character mismatch in the applicant's name. 37 C.F.R. § 7.11(a)(2). The comma in "Cycles, Inc." is load-bearing.
Claiming color that the basic filing does not claim. 37 C.F.R. § 7.12(b) forbids it, and the fix is a new U.S. application.
An identification broader than the basic filing. TMEP § 1902.02(f). Refusal to certify, no office action.
Assuming the USPTO checks Nice classification. It does not. The International Bureau does, months later, by irregularity notice.
Forgetting the priority claim. It cannot be added by amendment. Six months, once.
Limiting goods for one country to save a few hundred francs. The limitation is permanent for that country. Drop the designation instead.
Routing an irregularity fee through the USPTO. 37 C.F.R. § 7.14(c) requires payment directly to the International Bureau.
Answering a USPTO-routed irregularity on the last day. Receipt in Geneva controls. 37 C.F.R. § 7.14(e) wants it a month early.
Building the program on a Section 1(b) application nobody has stress-tested. Central attack is not theoretical; the transformation bill arrives in a single quarter.
Letting the correspondence address on the international registration go stale. Provisional refusals do not resend.
Promising the client that the international registration is a registration. It is an entitlement to be examined in eight places.
Designating where you sell and nowhere else. Manufacturing and transit countries are usually where enforcement actually happens.

Deadlines at a Glance

| Deadline | Length | Runs from | Authority | |---|---|---|---| | Paris priority window | 6 months | Basic application filing date | Paris Convention art. 4C(1) | | Transmission window that back-dates the registration | IB must receive within 2 months | USPTO date of receipt | Madrid Protocol art. 3(4); TMEP § 1902.04 | | Response to a notice of irregularity | 3 months | Date of the IB notice | Common Regs. Rules 11-13; 37 C.F.R. § 7.13 | | Internal deadline for USPTO-routed irregularity responses | 1 month before the IB deadline | Same | 37 C.F.R. § 7.14(e) | | Provisional refusal, standard period | 12 months | Notification of the designation | Madrid Protocol art. 5(2)(a) | | Provisional refusal, declared longer period | 18 months | Same | Madrid Protocol art. 5(2)(b) | | Opposition-based refusal after the 18-month period | As declared by the party | Publication in that country | Madrid Protocol art. 5(2)(c) | | Dependency on the basic filing | 5 years | International registration date | Madrid Protocol art. 6(2)-(3); 15 U.S.C. § 1141c | | Transformation after central attack | 3 months | Cancellation of the international registration | Madrid Protocol art. 9quinquies; inbound U.S. analogue, 15 U.S.C. § 1141j(c); 37 C.F.R. § 7.31 | | Renewal of the international registration | 10 years, renewable | International registration date | Madrid Protocol arts. 6(1), 7(1) | | Renewal grace period | 6 months, with surcharge | Expiry | Madrid Protocol art. 7(4) | | Non-use vulnerability, European Union | 5 years | Registration of the designation | Reg. (EU) 2017/1001 arts. 18, 58 | | Non-use vulnerability, China and Japan | 3 years | Registration | National law | | U.S. § 8 declaration on the basic registration | 5th to 6th anniversary; 6-month grace | U.S. registration date | 15 U.S.C. § 1058 | | § 71 affidavit, inbound § 66(a) registrations | 5th to 6th anniversary, then each 10-year window | U.S. registration date | 15 U.S.C. § 1141k |

Fees. Confirm the USPTO schedule and re-run WIPO's Fee Calculator before quoting.

| Item | Amount | Authority | |---|---|---| | USPTO certification, one basic filing, electronic | $100 per class | 37 C.F.R. § 7.6(a) | | USPTO certification, more than one basic filing, electronic | $150 per class | 37 C.F.R. § 7.6(a) | | Same, on paper (petition required) | $200 / $250 per class | 37 C.F.R. §§ 7.4, 7.6(a) | | Transmitting a subsequent designation, electronic | $100 | 37 C.F.R. § 7.6(a) | | WIPO basic fee, mark in black and white | 653 CHF | Madrid Schedule of Fees | | WIPO basic fee, mark in color | 903 CHF | Madrid Schedule of Fees | | Complementary fee, per designation with no individual fee | 100 CHF | Madrid Schedule of Fees | | Supplementary fee, each class beyond three | 100 CHF | Madrid Schedule of Fees | | Individual fees | Set by each Contracting Party | Madrid Schedule of Fees | | Subsequent designation, basic fee | 300 CHF | Madrid Schedule of Fees | | Change of name or address (MM9) | 150 CHF | Madrid Schedule of Fees | | Change of ownership (MM5) | 177 CHF | Madrid Schedule of Fees |