Electronic Filing Systems for Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

Electronic Filing Systems for Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

DATES:

Madrid e-Filing will be available for filing on July 31, 2026.

SUPPLEMENTARY INFORMATION:

A. Background

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), administered by the International Bureau of WIPO (IB), became effective in the United States in November 2003. The Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regs. Rules) set forth the procedures regarding the administration of the Madrid Protocol, pursuant to Madrid Protocol Article (Article) 10(2)(iii). Under the Madrid Protocol, an owner of a U.S. trademark registration or pending application (basic application or registration) who is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States may file an international application originating with the United States, through the USPTO. ⁽¹⁾ 15 U.S.C. 1141a; 37 CFR 7.4(a); Trademark Manual of Examining Procedure (TMEP) 1902.01.

The Madrid Protocol registration process for U.S. office of origin applicants begins when an international application is filed through the USPTO. 37 CFR 7.4(a), 7.11(a); TMEP 1902. The minimum requirements for granting a date of receipt of an international application are set forth in § 7.11(a). Following receipt by the USPTO, if the applicant has made no changes in the electronic prepopulated international application form, the USPTO automatically certifies and forwards the international application to the IB. This action means the USPTO was able to verify that the information in the international application corresponds to the information in the U.S. basic application or registration. 15 U.S.C. 1141(b); 37 CFR 7.13(a).

If changes have been made in the electronic prepopulated international application form or if the international application was submitted on the free-text electronic form, the application is reviewed by the USPTO's Madrid Processing Unit (MPU). TMEP 1902.03. If the international application meets the requirements of § 7.11(a), the MPU certifies and forwards the application to the IB. 15 U.S.C. 1141(b); 37 CFR 7.13(a). If the requirements of § 7.11(a) are not met for any reason, including applicant error, the MPU notifies the applicant that certification of the international application is denied. 37 CFR 7.13(b). In such case, the USPTO retains its certification fee; however, any international application fees paid through the USPTO are refunded to the applicant. 37 CFR 7.13(b).

When certification is denied, the applicant's recourse is to either file a new international application or petition the Director, for a fee, to review the decision denying certification of the international application under § 2.146(a)(3). 37 CFR 2.146(a)(3); TMEP 1902.03(a). If the international application is ultimately certified on petition, the date of the international registration will be the date the international application was originally received by the USPTO, i.e., the filing date of the international application, but only if the international application is received by the IB within two months of the USPTO's date of receipt. 37 CFR 7.11(a); Article 3(4); Regs. Rule 15; see TMEP 1902.03(a), 1902.04. If more than two months have elapsed, the date of registration will be the date the international application is received by the IB. Article 3(4); Regs. Rule 15; see TMEP 1902.03(a), 1902.04.

Once the international application is certified by the MPU, it is then forwarded to the IB and reviewed for completeness. A complete international application that meets the requirements of Article 3 and Regulations Rule 9 is registered. See TMEP 1902.05. If the IB determines the international application is not complete, it will issue a notice to the applicant and the USPTO of the irregularity. Regs. Rule 11; TMEP 1902.07. The irregularity notice will specify whether the response must be provided by the USPTO or the applicant as well as the consequences for not providing a timely response. See 37 CFR 7.14; TMEP 1902.07; Regs. Rule 11. If the USPTO must respond, it will issue a copy of the response to the applicant as a courtesy. See TMEP 1902.07(a).

If the response must be provided by the applicant, the notice of irregularity will indicate whether the submission must be made directly to the IB or through the USPTO. See 37 CFR 7.14; TMEP 1902.07; Regs. Rules 11, 12, 13. For instance, any additional international application fees that are owed must be paid in Swiss francs directly to the IB by the applicant. 37 CFR 7.14(c); TMEP 1902.07(b)(i); Regs. Rule 35(1).

With respect to the deadlines for irregularities that must be remedied by the applicant, unless the notice indicates "if no response, WIPO proceeds [with the proposal in the notice]," the irregularities must be corrected by the deadline indicated in the irregularity notice; otherwise, the international application may be abandoned by the IB. See TMEP 1902.07; Regs. Rules 11(2)(b), 12(7)(a)-(b).

Where an irregularity concerns the classification or indication (identification) of goods and/or services, the applicant must file a response through the USPTO. See TMEP 1902.07(f). To be considered timely, the response must be reviewed by the MPU and forwarded to the IB on or before the deadline in the irregularity notice. 37 CFR 7.14(e); TMEP 1902.07(f).

When a timely response to a notice of irregularity is received by the USPTO, the MPU reviews any amendments to the classification or identification of goods and/or services to ensure that the amendment(s) are within the scope of the identification in the U.S. basic application and/or registration. 37 CFR 7.14(b); TMEP 1902.07(c). If the amendment is acceptable, the MPU will forward the response to the IB.

If a timely response to a notice of irregularity identifies goods and/or services that exceed the scope of those listed in the U.S. basic application and/or registration, the MPU will notify the applicant that (1) the proposed amendment to the goods and/or services does not conform to the goods and/or services as identified in the U.S. basic application and/or registration and (2) the response will not be forwarded to the IB. TMEP 1902.07(c)(ii). As long as time remains in the IB response period, the applicant may submit a corrected response. Id. The MPU will forward a response to the IB only if (a) the corrected response amends the goods and/or services to those within the scope of the identification in the basic application and/or registration and otherwise resolves the identification issue and (b) time remains in the IB response period. Id. If the applicant does not submit an acceptable amendment that resolves the outstanding issue during the response period, the IB will proceed with the action indicated in the irregularity notice.

B. Designation of Electronic Filing System for U.S. Office of Origin International Applications and Responses to Notices of Irregularity

To improve the filing experience and expedite USPTO processing times, the Director now designates the WIPO Madrid e-Filing system as a trademark electronic filing system for submission of U.S. office of origin international applications and responses to notices of irregularity issued by the IB. The Trademark Electronic Filing System (TEAS) Application for International Registration form will remain available until at least September 2026 when Madrid e-Filing becomes the sole platform for filing U.S. office of origin international applications. After that time, TEAS will no longer be available for filing U.S. office of origin international applications. However, the TEAS Response to a Notice of Irregularity form will remain available until all international applications filed through TEAS have reached a final disposition.

Although Madrid e-Filing is anticipated to have little to no downtime, in the event of an outage an applicant may submit a petition to the Director under § 2.146(a)(5) and (c) to accept the international application or response to a notice of irregularity on paper. 37 CFR 7.4(d).

Applicants who file the international application through Madrid e-Filing may receive email communications from the MPU regarding any deficiencies in the international application and may have an opportunity to correct the application filed via Madrid e-Filing to avoid a formal denial of certification.

If the international application is certified by the MPU and forwarded to the IB for examination in accordance with 15 U.S.C. 1141(b), the applicant may subsequently receive email notices of irregularity from the IB. See TMEP 1902.05, 1902.07. For irregularities that require a response by the applicant through the USPTO, the applicant must submit amendments to resolve the irregularities via Madrid e-Filing. See TMEP 1902.07.

Madrid e-Filing is offered free of charge to member IP offices; thus, the USPTO will receive cost savings in significantly reduced IT expenditures for systems related to U.S. office of origin international application related filings. In addition, by migrating to Madrid e-Filing, the USPTO will be able to offer informal communications between the MPU and the international applicant, which the USPTO anticipates will significantly reduce the number of certification denials. This reduction is expected to result in cost savings for those applicants who will no longer need to file petitions to review the decisions denying certification. The USPTO will similarly realize cost savings by processing fewer petitions.

C. Filing and Certification of U.S. Office of Origin International Application Through Madrid e-Filing

As a result of the designation described above, U.S. office of origin international applicants may now file international applications using WIPO's Madrid e-Filing platform. Applicants can access the Madrid e-Filing version of the international application form from the USPTO's website at [URL]. The TEAS Application for International Registration form will remain available for filing until at least September 2026, at which time Madrid e-Filing will become the sole trademark electronic filing system for submitting a U.S. office of origin international application. ⁽²⁾

Documents submitted using Madrid e-Filing, including the international application and related examination records of the USPTO and the IB, will be viewable only in Madrid e-Filing. The assigned USPTO Reference Number and filing date of the international application will be the only information posted to and viewable in the USPTO's public-facing Trademark Status and Document Retrieval (TSDR) database.

To log into Madrid e-Filing, all applicants will be required to create a WIPO Account, which will be an applicant's personal online account for accessing WIPO's digital services. Payments, including the international application fees and the U.S. dollar equivalent of the USPTO certification fee, will be processed in Swiss francs and can be paid by a WIPO Current Account (an optional financial account for WIPO fee transactions), certain accepted credit/debit cards, E-Wallet (Apple Pay®, Google Pay®, Samsung Pay® and Alipay®), or PayPal®. 37 CFR 7.6, 7.7. Information about accepted forms of payment and how to pay fees can be found at https://www.wipo.int/en/web/paying-for-ip-services/. The certification fee is not currently changing, and it is the U.S. dollar equivalent of the amount listed on the USPTO fee schedule at https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#Trademark%20Fees based on the exchange rate at the time of payment. See 37 CFR 7.6. If the applicant pays with a WIPO Current Account, the certification fee will be charged at the time of filing; however, the international application fees are merely authorized at the time of filing and will not be charged until just prior to registration. If payment is made via credit card, E-Wallet, or PayPal®, the payment of both the certification fee and the international application fee will be transacted at the time of submission. Regardless of the payment method chosen, the applicant will receive an email confirming successful payment from WIPO Pay, WIPO's online payment service.

The filing date of any electronic correspondence related to the U.S. office of origin international application in Madrid e-Filing will follow the guidelines established by 37 CFR 2.195. Correspondence is considered to be submitted the date the USPTO receives the transmission, based on Eastern Time in the United States, regardless of whether that date is a Saturday, Sunday, or a Federal holiday within the District of Columbia. TMEP 303.

When using Madrid e-Filing to file an international application, the applicant will be presented with an editable international application form that is prepopulated with the information from one or more U.S. basic applications or registrations. See TMEP 1902.02(a). Once an international application is submitted, if the prepopulated version of the form is both based on one U.S. basic application or registration and is not edited by the applicant, it will be automatically certified and a notice of certification will issue to the applicant. If edits have been made to the prepopulated form or the international application is based on multiple U.S. basic applications and/or registrations, MPU will review the international application to determine if it meets the requirements of 37 CFR 7.11(a). If the requirements are met, the MPU will certify the international application, issue a notice of certification to the applicant, and forward the application to the IB for review. 15 U.S.C. 1141b; 37 CFR 7.13(a).

If the MPU determines that the international application does not meet the requirements of § 7.11(a), the application will not be certified. 37 CFR 7.13(b). Instead, the MPU will issue the applicant a pre-certification correction request stating the reason(s) the international application cannot be certified (informal communication). When this informal communication issues, an email notice will also be sent to the applicant that the informal communication has issued and will include instructions to log into Madrid e-Filing to view the communication and take corrective action on the international application. The MPU will issue an informal communication only if the international application is reviewed more than two weeks immediately prior to the two-month window for the USPTO to certify the international application (blackout period). The blackout period is established to give sufficient time for the applicant to petition the Director in the event the MPU issues a decision denying certification of the international application. See TMEP 1902.03(a).

If the international application cannot be reviewed more than two weeks immediately prior to the blackout period and the application is not in condition for the USPTO to certify it under § 7.11(a), the MPU then will issue a denial of certification. No informal communication will issue.

When the MPU is able to issue an informal communication before the blackout period, the communication will request correction(s) by the applicant and simultaneously unlock the international application in Madrid e-Filing for amendment. The applicant will be granted the following time period (correction period), as appropriate, to amend the application: (1) if more than two weeks remain prior to the start of the blackout period, two weeks from the issue date of the informal communication; or (2) if less than two weeks remain prior to the start of the blackout period, then the time that remains prior to the start of the blackout period. Unless the decision is made by the MPU to deny certification of the international application, WIPO will not refund any international application fees already charged and the applicant may not petition the Director because a final agency decision has not issued. See TMEP 1902.03(a).

If the applicant takes no action within the time period specified in the informal communication, the MPU will deny certification of the international application because it has not met the minimum requirements of § 7.11(a). See 37 CFR 7.13(b).

If the applicant submits corrections within the time period specified in the informal communication, the MPU will be notified. The applicant does not need to otherwise respond to the informal communication or contact the MPU.

Once the MPU reviews the correction(s), if the corrected international application meets the requirements of § 7.11(a), the international application will be certified and forwarded to the IB. See 37 CFR 7.13(a). If the submitted corrections do not permit certification of the international application under § 7.11(a), the MPU will issue a denial of certification to notify the applicant of the reason(s) the application could not be certified. See 37 CFR 7.13(b).

If certification is denied and the international fees have been paid to WIPO via credit card, E-Wallet, or PayPal®, the applicant must contact WIPO at https://www3.wipo.int/contact/en/madrid/to initiate a refund. If the fees have been paid with a WIPO Current Account, the international application fees are merely authorized at the time of filing and therefore no refund will be due. The USPTO certification fee will not be refunded regardless of the payment method. 37 CFR 7.13(b).

Following a decision to deny certification, the applicant's options are to file (1) a new international application with new fees or (2) a petition to the Director to review the decision to deny certification under § 2.146(a)(3), along with the petition fee. 37 CFR 2.146(c)(1); TMEP 1902.03(a). Consistent with existing procedure, the petition should be filed immediately following denial of certification. Applicants should include a copy of any correspondence with the USPTO regarding the denial of certification in the petition. See 37 CFR 2.146(c)(1). If the petition is granted but international application is not certified and forwarded within two months of the date of receipt in the USPTO, then the date of the international registration will be the date the IB receives the international application. Article 3(4); Regs. Rule 15; TMEP 1902.04.

D. Responding to a Notice of Irregularity Through TEAS

If the international application was filed through TEAS, an irregularity that requires an applicant's response through the USPTO must be filed via TEAS. The TEAS Response to a Notice of Irregularity form will remain available until all international applications originally submitted through TEAS are processed and have reached a final disposition, at which time the USPTO will retire the TEAS form.

E. Responding to Notices of Irregularity in Madrid e-Filing

Following the launch of Madrid e-Filing, if the international application was originally filed using Madrid e-Filing, an irregularity that requires an applicant's response to be filed through the USPTO must be submitted using Madrid e-Filing.

If the applicant must respond to the notice of irregularity directly to the IB, such as for underpayment of international fees, the notice of irregularity will provide instructions for responding. If the USPTO must respond, the MPU will continue to issue a copy of the response to the applicant as a courtesy. See TMEP 1902.07(a).

When a response to a notice of irregularity is submitted through the USPTO using Madrid e-Filing, the submission date is the date the USPTO receives the transmission based on Eastern Time in the United States, regardless of whether that date is a Saturday, Sunday, or a Federal holiday within the District of Columbia. 37 CFR 2.195; TMEP 303. The MPU will not review or forward the response to the IB if the USPTO receives it after the deadline established in the notice or if a timely response cannot be reviewed and forwarded by the deadline. 37 CFR 7.14(e).

If the IB determines that an international application is unacceptable, the applicant will receive an irregularity notice from the IB and may view the irregularity notice by accessing the corresponding international application in the applicant's Madrid e-Filing portfolio. See Regs. Rules 11(2)(b), 12(7)(a)-(b). This notice will not be viewable in the TSDR database.

When the applicant must respond to the irregularity notice through the USPTO, the timely response must be provided directly within the "Answer" section of the irregularity notice. The international application itself is not editable. If the applicant does not provide a timely response to the irregularity notice, the IB will proceed with the action indicated in the irregularity notice.

Similar to current practice, the MPU will review timely responses to irregularities. TMEP 1902.07(c)(i), (ii). If the MPU determines that the proposed amendment is acceptable and there is time remaining in the response period, the response will be forwarded to the IB. Id. The applicant will be notified that the response has been forwarded. Id.

If the MPU determines that the applicant's response to the notice of irregularity proposes an unacceptable amendment, the MPU will notify the applicant that (1) the proposed amendment is not acceptable and (2) the response will not be forwarded to the IB. TMEP 1902.07(c)(ii). The notification from the MPU will issue via email and will be viewable in Madrid e-Filing.

As long as time remains in the IB response period, the applicant may continue to submit responses in the "WIPO irregularities" section of the international application following the issuance of a new notification from the MPU until the proposed amendment is determined to be acceptable by the MPU. Although the MPU will review all responses received by the IB deadline, this does not ensure an acceptable response can be forwarded to the IB by the deadline indicated in the irregularity notice. Therefore, applicants should continue to submit their response as soon as possible and at least one month prior to the IB's deadline to ensure it can be reviewed and forwarded to the IB by the response deadline. 37 CFR 7.14(e).

Ultimately, if the MPU cannot forward the response by the response deadline, the IB may proceed with the action indicated in the irregularity notice and will notify the applicant and the USPTO accordingly.

F. Subsequent Designation in TEAS

Outside of the U.S. office of origin international application process, the holder of a U.S. Office of origin international registration who is a national of, is domiciled in, or has a real and effective business or commercial establishment in the United States will continue to have the option to submit a subsequent designation through the IB or the USPTO using the TEAS Subsequent Designation form, which is scheduled to move into the trademark electronic filing system, Trademark Center, in 2027. See 15 U.S.C. 1141d; 37 CFR 7.21(a)-(b). Therefore, TEAS and/or Trademark Center will remain the trademark electronic filing systems designated by the Director for the purpose of filing a subsequent designation directly through the USPTO, and the U.S. transmittal fee will continue to be required by 37 CFR 7.6 when filed through these designated systems. 37 CFR 7.21(b)(7). No transmittal fee is owed if the subsequent designation is filed directly with the IB at https://madrid.wipo.int/. 37 CFR 7.21(a); TMEP 1902.08; Article 3 ter (2); Regs. Rule 24.

⁽¹⁾  The USPTO requires all correspondence be filed through the trademark electronic filing system, unless an exception to the requirement to file electronically applies. 37 CFR 7.4(a); TMEP 1902.02. If the applicant is a national of a country that has acceded to the Trademark Law Treaty but not to the Singapore Treaty on the Law of Trademarks, the international application may be filed using a printed version of the official MM2 form issued by WIPO. See 37 CFR 7.4(c). If the trademark electronic filing system is unavailable, or in an extraordinary situation, the applicant may submit a petition to the Director under 37 CFR 2.146(a)(5) and (c) to accept the application on paper. 37 CFR 7.4(d).

⁽²⁾  Applicants who are nationals of a country that has acceded to the Trademark Law Treaty but not to the Singapore Treaty on the Law of Trademarks may continue to file international applications using a printed version of the official MM2 form issued by WIPO after Madrid e-Filing is implemented. See 37 CFR 7.4(c). If the trademark electronic filing system is unavailable, or in an extraordinary situation, the applicant may submit a petition to the Director under 37 CFR 2.146(a)(5), (c) and 2.147(a) to accept the application on paper. 37 CFR 7.4(d).