1. Why US Trademark Rights Do Not Automatically Extend Abroad
A US trademark registration does not create enforceable trademark rights worldwide. Protection is territorial, and foreign countries apply their own rules to registration, use, and infringement.
Selling through Amazon, eBay, or a company website does not automatically establish registered trademark rights in every market reached by those platforms.
US Federal, State, and Foreign Trademark Rights
The Lanham Act governs federal trademark rights, while state laws may provide additional domestic protection. Neither creates worldwide rights, and state registrations cannot serve as the US basis for Madrid filing through the USPTO.
In Abitron Austria GmbH v. Hetronic International, Inc., the Supreme Court limited certain Lanham Act infringement claims to domestic infringing uses in commerce.
Businesses developing a trademark protection strategy must distinguish US enforcement rights from protection available under foreign law.
Choosing Countries Based on Commercial Risk
Businesses should prioritize markets where sales, manufacturing, distribution, or licensing create meaningful exposure. Counterfeit activity and competing trademarks may also influence the decision.
Before filing, a trademark clearance search can identify earlier registrations or pending applications that could lead to refusal or opposition.
An EU trademark may cover all EU member states through one registration, although a conflict arising in one part of the EU can affect the entire application.
2. Choosing between Madrid and Direct National Filing
The Madrid System allows eligible applicants to request protection in multiple member jurisdictions through one international application. Each designated office independently examines the mark under its domestic law.
Madrid System Eligibility and Filing Requirements
Applicants using the USPTO as their office of origin need a pending US application or registration. They must also be US nationals, have a US domicile, or maintain a real and effective industrial or commercial establishment in the United States.
The international application must identify the same mark and owner, with goods and services no broader than the US basis. The USPTO recommends considering the first office action before filing internationally, although waiting may affect a six-month priority claim.
Since October 1, 2026, new outbound applications based on US marks use WIPO Madrid e-Filing rather than TEASi. The USPTO certifies eligible applications before forwarding them to WIPO. This differs from Section 66(a), which concerns protection requested in the United States.
Priority Claims and Five-Year Dependency
A Madrid application may claim priority from an earlier US filing if it meets the six-month deadline. The international registration date follows separate rules.
If WIPO receives the application within two months after the USPTO receives it, the international registration generally uses the USPTO receipt date. Otherwise, WIPO's receipt date generally applies. Missing essential information may change that date.
The international registration depends on its US basis for five years. Loss of the basic mark's effect can lead to corresponding cancellation, including where qualifying proceedings began during that period. Following central cancellation, eligible owners generally have three months to file transformation applications.
The comparison below shows why direct national filing may be preferable when the US basis is uncertain.
| Madrid System | Direct National Filing |
|---|---|
| One international application | Separate national or regional applications |
| Requires an eligible basic mark | Independent filing requirements |
| Five-year dependency | No Madrid central dependency |
| Centralized international renewal | Separate renewals |
| Examination by designated offices | National or regional examination |
One international application
- Direct National FilingSeparate national or regional applications
Requires an eligible basic mark
- Direct National FilingIndependent filing requirements
Five-year dependency
- Direct National FilingNo Madrid central dependency
Centralized international renewal
- Direct National FilingSeparate renewals
Examination by designated offices
- Direct National FilingNational or regional examination
3. How Much Does International Trademark Filing Cost?
International filing costs depend on the selected jurisdictions, trademark classes, and examination requirements. Madrid filing consolidates certain administrative steps, but foreign prosecution may still require separate legal expenses.
WIPO Fees and Additional Filing Expenses
WIPO's basic fee is CHF 653 for a mark without color or CHF 903 for a mark in color. Standard charges generally include CHF 100 per designated member without an individual fee and CHF 100 per class beyond three. The supplementary fee does not apply when all designated members require individual fees.
USPTO electronic certification generally costs $100 per class for one US basis or $150 per class for multiple bases. Madrid e-Filing collects applicable fees through WIPO in Swiss francs.
Foreign attorney fees, translations, provisional refusals, and opposition proceedings may increase the total beyond the initial quote.
Examination Timelines and Provisional Refusals
WIPO checks formal requirements, while each designated office examines whether the mark qualifies for protection under local law.
Offices generally have 12 or 18 months to notify provisional refusals, subject to special rules for certain opposition-based refusals. Without a timely refusal, protection generally has the effect of a national registration from the relevant international registration or subsequent designation date.
A timely refusal may lead to further examination, local attorney involvement, or opposition proceedings. The notification period is not a guaranteed completion date.
4. Maintaining International Trademark Protection after Registration
International registration simplifies administrative management, but each designated country controls the protection granted within its territory. Renewal fees and local use requirements must be reviewed separately.
Madrid Renewal and Local Use Requirements
Madrid registrations last ten years and can be renewed through WIPO for successive ten-year periods. A six-month grace period follows expiration, subject to a surcharge.
Renewal fees depend on the designated countries and applicable fee schedules. Owners should check WIPO's current Fee Calculator before renewal.
Centralized renewal does not replace local use requirements. Some countries permit cancellation after a statutory period of nonuse, while others require declarations or evidence of commercial use.
Owners should retain commercial records and verify each designated country's maintenance requirements.
Monitoring Registrations and Expanding Protection
Owners can add Madrid members through subsequent designations, but they cannot expand the goods and services beyond the existing international registration. Additional product categories may require new applications.
Ownership changes, refusals, limitations, and renewal deadlines also need attention.
A review of the company's intellectual property portfolio can identify gaps between existing territorial protection and current sales or licensing activities.
5. Frequently Asked Questions
Can I Use the Madrid System If My US Trademark Application Is Refused?
A refusal of the US basic application can jeopardize an international registration that depends on it.
The consequences depend on whether the refusal becomes final, the scope of the affected goods or services, and the status of the international registration.
Businesses should evaluate whether the refusal can be overcome and whether direct national filings offer a viable alternative.
What If a Target Country Is Not a Madrid System Member?
Madrid protection cannot be extended to a nonmember jurisdiction.
The applicant must consider direct national filing or another available regional route, subject to the relevant jurisdiction's requirements.
6. Assessing International Trademark Filing Risks before Market Entry
A business preparing to launch products abroad may face conflicts with earlier marks, restrictions in its US basic application, or an approaching priority deadline.
An attorney advising on trademark filing requirements can assess the proposed mark, identify risks in target jurisdictions, and compare Madrid designations with direct national applications before the business commits to a filing strategy.
13 Oct, 2026
