Madrid Trademark – US Office Action: How to respond – Section 66(a)

US Office Action in Madrid Protocol Trademark Application

Madrid Protocol trademark applications that enter the US through Section 66(a) will often encounter several issues. There may be substantive refusals and non-substantive issues. Substantive rejections may include a likelihood of confusion or merely descriptive refusal, or both. Non-substantive issues typically do not require an extensive response. Let’s discuss how to handle a US Office Action for your Madrid trademark application.

The USPTO provides a helpful timeline for Madrid Protocol applications based on Section 66(a) [see TMEP Section 1900].

Need to respond to a US trademark Office Action? Email Vic at or call (949) 223-9623 to see how we can help you file a proper Office Action response.

What is the cost of responding to a non-substantive Office Action for a Madrid trademark application?

If a US Office Action contains only non-substantive issues, then our firm estimates that a flat rate of $350 should be sufficient to prepare and file a response. In some cases, our flat fee may be higher if more time and effort will be required to address certain non-substantive issues (e.g., long identification of goods/services with a high number of items requiring revision). The following are non-substantive matters that may be commonly raised in a Section 66(a) Madrid Application designating the US.

Identification of goods and services

Madrid applications that originate outside the US tend to have long lists of goods and/or services. This common occurrence may be due to the fact that many Madrid countries other than the US do not require the applicant to use the mark on each product or service. If a Madrid Protocol application contains a high number of items, then there is a good probability that the US trademark examining attorney will require modifications to the identification of goods/services to conform to USPTO trademark standards. Keep in mind that the scope of the amended goods and services may not be broader than the scope of the original identification.

Description of Mark

If the Madrid application covers a design mark (i.e., not a word mark in typed standard character format), then the USPTO requires an accurate and complete description of the mark that specifies any design elements, graphic images, colors, shapes and wording [see TMEP Section 808]. In most cases, the USPTO examining attorney will propose a satisfactory description of the mark in the Office Action which the applicant can simply adopt in a response.

Type of entity of foreign applicant

Sometimes, the nature of the foreign entity is unclear. This is a simple fix where the applicant will clarify the type of entity (e.g., corporation).

Explanation of mark’s significance

It is not uncommon for Madrid trademark applications to contain foreign words or wording that sounds like a foreign language. In many cases, the Office Action may inquire as to whether the mark has any meaning in a foreign language. If an explanation is required, the applicant’s response must provide an English translation or indicate that the wording has no meaning in a foreign language.

Disclaimer of generic word(s)

If US examining attorney feels that certain words in the mark are generic, then a disclaimer may be required for that portion of the mark. In most cases, it would be more cost-effective to agree to the disclaimer rather than argue against it. In special circumstances, a mark might contain a verb, punctuation or prepositions to create a unitary phrase where a disclaimer should not be required (e.g., TIP YOUR HAT for hats; or MANGOES FOR THE EARTH for fresh mangoes).

Substantive refusals require more work and higher costs

If the mark is refused registration on substantive grounds such as likelihood of confusion or mere descriptiveness, the applicant must plan on filing a thorough response with intelligent and thorough arguments on why the rejections should be withdrawn.

A likelihood of confusion rejection may require, for example, arguments of the mark being weak due to a crowded field and high number of coexisting marks in the same class by different owners. A merely descriptive rejection may require a thorough analysis of the meaning of the mark and commercial impression of consumers.

What is the cost estimate for responding to substantive Office Action in a Madrid trademark application?

Substantive rejections require much more than copy-and-paste responses, which explains the higher cost. Our firm’s estimate for responding to substantive trademark Office Action may range from $1,500 to $3,000 depending upon the number of nature of the rejections.

There may be options for reducing the cost of responding to a US Office Action if the substantive refusal applies to less than all the goods or services in the Madrid trademark application. Where an Office Action contains a partial refusal, an applicant can simply delete the goods or services to which the refusal applies. That way, the applicant can eventually obtain a US trademark registration without expensive arguments.

Section 66(a) Trademark Opposition

Keep in mind that a Section 66(a) trademark application is seeking registration in the US not on the basis of actual use, but on the basis of a foreign registration. In opposing a Section 66(a) application, therefore, a claim of nonownership through lack of use will not succeed.

Need to respond to a US Office Action for a Madrid trademark application?

Reach out to US patent and trademark attorney Vic Lin at or call (949) 223-9623 to see how we can help you respond to a US Office Action and get your Madrid trademark registered in the US.

How useful was this post?

Click on a star to rate it!

Thank you for rating my post!

We want to do better.

Could you tell us what was missing in our post?

Innovation Capital Law Group
Ready to Slay Goliath?

What IP do you need?*

What IP do you need?*

(Check all that apply)

Your Name*

Your Name*

Your Email*

Your Email*

Your Phone Number

Your Phone Number

Design Patent Money-Back Guarantee
Get your design patent allowed or attorney's fees refunded. Call or email Vic to see if your design qualifies.

Not sure where to start? Email Vic at

Copyright © Vic Lin 2023