Madrid Protocol Filings

Your brand deserves protection in every market where you do business. At the Schenk Law Firm, we help businesses file international trademark applications through the Madrid Protocol, a treaty-based system administered by the World Intellectual Property Organization (WIPO) that lets you seek trademark protection in up to 130 member countries using a single application. David Lizerbram, with over 23 years of trademark experience and more than 850 trademark filings, guides clients through every step of the Madrid System process.

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Services We Provide

International Trademark Applications

We prepare and file Madrid Protocol applications through WIPO, selecting the correct goods and services classifications under the Nice Classification system and identifying the member countries where you need protection. Each designation requires careful attention to local requirements, and errors at the filing stage can result in refused or narrowed registrations.

Basic Application Strategy

A Madrid Protocol filing must be based on an existing home-country trademark, called the basic mark. We assess whether your U.S. registration or pending application is ready to serve as the basic mark, confirm the goods and services descriptions align precisely, and advise on timing to avoid dependency problems if the U.S. application is still pending.

Office Action Responses

Individual countries retain the right to refuse a Madrid Protocol designation. When a national or regional office issues an office action or provisional refusal, you have a limited window to respond, typically 12 to 18 months depending on the country. We align with international counsel to draft substantive responses.

Subsequent Designations and Renewals

Once your international registration is established, you can add new member countries through subsequent designations without filing separate national applications. We also manage the 10-year renewal cycle for your international registration and any individual country maintenance requirements that arise over time.

Central Attack Monitoring

For the first five years after your international registration is granted, it remains vulnerable to cancellation if the basic mark is successfully challenged or abandoned, a risk known as central attack. We monitor the status of your foundational U.S. mark and advise on transformation strategies to convert individual country designations into national registrations if the basic mark is threatened.

Common Client Concerns

What countries can I protect my trademark in through the Madrid Protocol?

The Madrid System currently covers more than 130 member countries, including the United States, all European Union member states through the EUIPO, China, Japan, Australia, Canada, and most major commercial markets. You can designate as many or as few member countries as your business needs, and you pay a basic fee plus a country-specific fee for each designation.

How long does a Madrid Protocol filing take to get approved?

WIPO completes its formal examination within approximately two months of receiving a proper application. Each designated country then has 12 or 18 months, depending on whether it has declared an extended period, to examine the application and issue any refusal. If no refusal is issued within that window, protection is deemed granted in that country.

I already have a U.S. trademark. Can I use it to file internationally?

Yes. If you have a U.S. trademark registration, or even a pending U.S. application, you can use it as the basis for a Madrid Protocol filing. The goods and services in your international application cannot exceed what is covered in the U.S. basic mark, so the scope of your U.S. filing directly shapes your international coverage.

What happens if my U.S. trademark is cancelled in the first five years?

If your basic mark is cancelled, abandoned, or successfully opposed within five years of your international registration date, WIPO will cancel the international registration as well. This is central attack risk. One option to preserve your foreign rights is transformation, which converts each country designation into a separate national application carrying the original Madrid filing date.

How much does a Madrid Protocol filing cost?

WIPO charges a basic fee of 653 Swiss francs for applications in black and white, plus individual or complementary fees for each country you designate. Country fees vary widely. Certain countries, including the United States, require individual fees that can be substantial. We provide a transparent cost estimate for your specific target countries before filing so you can budget accurately.

Proven Results

23+ Years of Trademark Experience

David Lizerbram has been handling trademark matters, including international filings through the Madrid System, for more than 23 years. His experience spans brand clearance, prosecution, portfolio management, and cross-border strategy for businesses at every stage of growth.

850+ Trademark Filings

With over 850 trademark filings, the Schenk Law Firm brings a depth of practical knowledge to every Madrid Protocol engagement. That volume means we have encountered the full range of office actions, refusals, classification disputes, and procedural challenges that international filings can produce.

San Diego Business Law Since 2005

The Schenk Law Firm has served San Diego businesses from our North Park location since 2005. We combine hands-on familiarity with U.S. trademark procedure at the USPTO with the international filing protocols required by WIPO, giving clients a single team to handle both the foundational U.S. registration and the Madrid Protocol filing built on top of it.

Nationwide Service with Local Expertise

Based in San Diego, California, the Schenk Law Firm serves business clients across the United States who need international trademark protection through the Madrid Protocol. Whether you are expanding into Europe, Asia, or Latin America, we coordinate the WIPO filing process, monitor country-specific deadlines, and manage local counsel relationships so your global brand strategy stays on track.

Ready to Protect Your Brand Internationally?

A Madrid Protocol filing extends the strength of your U.S. trademark into global markets at a fraction of the cost of filing separate national applications in each country. The process has firm deadlines, strict classification requirements, and central attack risks that require careful planning. Contact the Schenk Law Firm today to speak with David Lizerbram about an international trademark strategy that fits your business.

Frequently Asked Questions

What is the Madrid Protocol and how does it work for trademark protection?

The Madrid Protocol is an international treaty administered by the World Intellectual Property Organization that allows trademark owners to seek protection in multiple member countries through a single application filed in their home country. A U.S. applicant files through the USPTO, which forwards the application to WIPO. WIPO registers the mark internationally and transmits it to each designated country for examination under that country’s local laws. If a country does not refuse the application within its examination period, typically 12 or 18 months, protection is granted there. The system simplifies multi-country filing significantly, but managing office actions, central attack risk, and renewal deadlines across jurisdictions still requires experienced legal guidance.

Do I need a U.S. trademark registration before filing under the Madrid Protocol?

You need either a registered U.S. trademark or a pending U.S. trademark application to serve as your basic mark before filing a Madrid Protocol application. If your application is still pending, any issues with the U.S. application, such as a refusal or abandonment, during the first five years of the international registration can affect your international rights. Many applicants choose to wait until the U.S. registration is confirmed before filing internationally to reduce that dependency risk, though filing on a pending application can preserve earlier priority dates in certain situations.

How many countries can I cover with one Madrid Protocol application?

You can designate as many of the 130-plus Madrid System member countries as you need in a single application. You are not required to designate all of them, and adding more countries increases your total fee. Major markets available include China, Japan, Australia, Canada, the United Kingdom, and all EU member states through the European Union Intellectual Property Office. You can also add new countries later through subsequent designations, so your international portfolio can grow as your business expands.

What is central attack risk in a Madrid Protocol filing?

Central attack risk refers to the vulnerability of your international registration during its first five years. Because your international registration is built on your basic mark in the home country, a successful challenge to that basic mark, whether through cancellation, opposition, or abandonment, can cause WIPO to cancel the entire international registration. To protect against this outcome, trademark owners can use a procedure called transformation to convert each country designation into an independent national application. Transformed applications retain the original Madrid filing date, preserving your priority position even if the international registration itself is cancelled.