Madrid vs. US direct: Costs & non-monetary considerations

International applicants seeking to register their trademark in the US have a couple of options. If the applicant’s country is a member of the Madrid Protocol, the trademark owner can file either:

  1. a Madrid Protocol application that designates the US along with other Madrid member countries; or
  2. a separate US trademark application directly with the USPTO.

There are both financial and non-monetary considerations in deciding which option to pursue. If non-monetary considerations such as vulnerability to a Madrid “central attack” are more important, then filing separate applications in each desired country would make more sense.

If cost is the biggest factor for a non-US applicant, then the most cost-effective option will depend upon whether the mark is to be filed in multiple countries, or in only the US. For international applicants interested in the US only, our firm can file a US trademark application with greater benefits and lower costs than those of a Madrid Protocol application.

What is not included in a Madrid Protocol trademark application?

Trademark owners considering a Madrid application usually start off with a base application for the mark in their home country. Sometimes this base application is referred to as a “priority application” because subsequent trademark applications in foreign countries can claim priority to this base application if filed within six months. This base application is typically the first filing by the applicant for the mark.

If an applicant decides to file a Madrid Protocol application based on this base application, the Madrid application will automatically transfer certain information from the base application, such as the identification of goods and services. The following services are not provided by a Madrid filing:

  1. any modifications to the descriptions of the goods and services to comply with the local trademark law of each designated Madrid country; or
  2. any pre-filing search of registrations of similar marks in each designated country.

Why not apply directly in the US with similar benefits and lower costs than Madrid?

Some international trademark applicants do not require a pre-filing search or any modifications to the goods and services. For such applicants, filing a separate trademark application directly with the USPTO can save a substantial amount of money without sacrificing benefits.

Our firm offers a bare-bones trademark filing service at a flat rate attorney’s fee of $325 per class, plus the USPTO fee of $275 per class. So for a total of $600 per class, our trademark filing service would include a priority claim to the client’s priority application. This “as is” trademark filing would exclude a pre-filing knockout search and any revisions to the identification of goods/services, both of which would be omitted in a comparable Madrid filing.

How can non-US applicants save money by filing a direct US trademark application?

Before directly filing a US trademark application, anyone can search for similar pre-approved descriptions of goods and services in the USPTO Trademark ID Manual. Non-US applicants can then revise their desired goods and services to conform to US standards. If the US application will claim priority to a foreign application or registration, make sure the scope of the revised goods/services does not exceed the scope of the original foreign filing.

Would a direct US trademark application require evidence of use in the US?

Not necessarily. If the US application covers the exact same mark as registered in the applicant’s country of origin, then the applicant may bypass the submission of use evidence by submitting a copy of the foreign registration for the same mark.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.