Section 44 & Madrid Protocol Filings
US Trademarks for International Brand Owners
You already own the mark at home. That registration stops at your border. If you are selling into the United States, or about to, your brand is unprotected here — and US law will not wait for you to notice.
We convert foreign trademark rights into US registrations for owners in the EU, the UK, Canada, Australia, India, and beyond. Flat fee, quoted upfront, in English.
US Trademark Filing
- Review of your foreign registration or application
- Confirmation of the strongest filing basis for you
- Priority claim filed if the six-month window is open
- Comprehensive US clearance search
- Goods and services rewritten to USPTO standards
- Certified copy and translation requirements handled
- Application prepared, filed, and monitored
- Office Action responses included
- US counsel of record, as USPTO rules require
Flat fee per class • quoted upfront • no surprise add-ons
Your foreign registration does nothing in the United States
Trademark rights are territorial. A mark registered with the EUIPO, the UKIPO, CIPO, IP Australia, or any other national office confers rights in that territory and nowhere else. There is no global trademark, and there is no treaty that makes your home registration enforceable against an American company.
What that means in practice is uncomfortable: while your foreign registration sits in force, someone in the United States can adopt your mark, apply to register it, and get there first. If they do, you are the one who has to fight — from abroad, in a US forum, usually at several times the cost of simply having filed.
The good news is that US law gives foreign owners a genuine advantage, and most owners never use it. You can reach US registration on the strength of your existing foreign rights, without ever proving you have sold a thing in the United States. A domestic applicant cannot do that.
You are legally required to have a US attorney
Since August 2019, USPTO rule 37 CFR 2.11 has required every applicant, registrant, and party whose domicile is outside the United States to be represented before the USPTO by an attorney licensed to practice law in the United States. Canadian filers are included. Your local trademark agent, however experienced, cannot sign or prosecute your US application.
“Foreign-domiciled” means an individual whose permanent home is outside the US, or an entity whose principal place of business — the headquarters where its senior officers direct and control it — is outside the US. A US mailing address or a registered agent does not change that.
The requirement bites even if you came in through the Madrid Protocol and never intended to hire anyone. The moment the USPTO issues a refusal on your extension of protection, you need US counsel to respond, and the response deadline is already running.
Three Routes Into the US Register
Which one is right depends on how long ago you filed at home, whether your foreign mark has actually registered, and how much of the world you are protecting at once.
Section 44(d) — Priority
You filed abroad within the last six months. Your US application claims the foreign filing date as its own, backdating you ahead of anyone who filed in the US during that gap. It is a priority claim, not a basis for registration on its own, so it pairs with intent to use or with the foreign registration once it issues.
Section 44(e) — Foreign Registration
Your mark is already registered in your country of origin. That registration becomes your basis for US registration. No specimen, no proof of American sales, no waiting to launch. You submit a copy of the foreign registration and a verified statement that you intend to use the mark in US commerce.
Section 66(a) — Madrid Protocol
You designate the United States through WIPO as part of an international registration. The USPTO examines it like any other application and either registers it or issues a provisional refusal. Efficient across many countries at once, but tied to your home mark for five years.
Direct Filing or Madrid?
The trade-off is cost across many territories versus durability in the one that matters.
| Consideration | Madrid Protocol — Section 66(a) | Direct US Filing — Section 44 |
|---|---|---|
| How you file | Through WIPO, designating the US | Directly with the USPTO |
| Tied to your home mark | Yes, for five years. If the home mark falls, the US extension falls with it | No. Independent from the day it is filed |
| Goods and services | Locked to the international registration. Cannot be broadened later | Drafted for the USPTO from the start |
| Adding classes later | Requires a new designation | File a new US application at any time |
| Assigning the mark | Restricted. The assignee must be eligible under Madrid | Assignable to anyone, like any US registration |
| Maintenance filing | Section 71 declaration | Section 8 declaration |
| Best when | You are protecting a dozen markets at once and the US is one of many | The United States is a market you intend to build in |
If your Madrid designation has already been refused, that is not a dead end — see below.
The six-month priority window
This is the deadline foreign owners most often lose without knowing it existed. Under Section 44(d), a US application filed within six months of your first foreign application for the same mark and the same goods takes that foreign filing date as its US filing date.
You file your first application at home.
The clock starts here, on your earliest foreign filing — not on the date it registered.
You file in the US and claim priority.
The USPTO treats your US application as though it had been filed on Day 0. Anyone who filed in the US in between is now behind you.
Priority is gone permanently.
You can still file — under Section 44(e) or on intent to use — but your date is the date you actually file, and any US application filed before it outranks you.
If you filed at home in the last six months, this is time-sensitive. Send us the filing date.
What Section 44(e) gets you that a US applicant cannot have
A domestic applicant has two options. Prove current use of the mark in US commerce, or file on intent to use and then come back later with a specimen and sworn dates of first use before anything registers. Either way, no use means no registration.
Section 44(e) removes that. With a registration from your country of origin, you can obtain a US registration without ever having sold into the United States. You sign a verified statement of bona fide intention to use the mark here, and that is the requirement met.
The practical effect is that you can secure your US rights before you enter the market rather than after, at the point when the mark is cheapest to protect and no one has adopted it yet.
Three conditions attach, and each one has ended applications that ignored it:
- The registration must be from your country of origin
- The mark must be the same mark
- It must still be in force when the US mark registers
Country of origin means where you are domiciled, incorporated, or organized, or where you have a real and effective industrial or commercial establishment. A registration obtained in a convenient third country will not do.
Where these filings go wrong
The goods and services description. This is the single largest source of refusals for foreign applicants. Most trademark offices accept broad class headings — the USPTO does not, and requires a level of specificity that your home specification almost certainly does not have. At the same time, your US identification can never be broader than what the foreign registration covers. Getting caught between those two constraints, after filing, is expensive. Drafting for both at the outset is not.
Translation and certification. If your foreign registration is not in English, the USPTO needs a translation. The copy you provide has to be a true copy, a photocopy, a certification, or a certified copy issued or certified by the IP office in your country of origin. A screenshot of the online register is not that.
The owner name does not match. Foreign registers and the USPTO record entity names, legal forms, and addresses differently, and a mismatch between the applicant and the foreign registrant will be questioned. If the mark moved between group companies at home and the assignment was never recorded, that surfaces here.
The mark is not quite the same mark. A logo redrawn for the US market, a stylization dropped, a tagline added — any of these can break the Section 44(e) link and leave you with no registration basis at all.
Central attack on a Madrid designation. For five years from the date of the international registration, your US extension depends on the home mark. If the basic application or registration is cancelled, restricted, or successfully opposed in that period, the same fate reaches the US. There is a transformation remedy that converts the extension into a national US application, but it is time-limited and it is not automatic.
Assuming you will be reminded. USPTO correspondence goes to the attorney of record. If there is no attorney of record, or the address on file is stale, deadlines pass in silence and the application is abandoned without anyone telling you.
If the USPTO has already refused your Madrid designation
A provisional refusal on a Section 66(a) extension is not a rejection of your brand. Most are ordinary examination objections — the identification of goods is too broad for US practice, the mark is considered descriptive, a prior US application is cited against you, or a disclaimer is required.
All of them are answerable, and all of them require a US attorney to answer. The deadline runs from the date of the Office Action, not the date WIPO forwarded it to you, which is why these arrive with less time remaining than owners expect.
Send us the refusal and your international registration number. We will tell you what is actually being objected to, how long you have, and what a response costs, before you commit to anything. If you would rather see the full process, our Office Action response page sets it out.
Keeping the Registration Alive
You did not have to prove use to register. You do have to prove it to keep the registration.
Years 5–6
A declaration of use with a specimen. Section 8 for a Section 44(e) registration, Section 71 for a Madrid extension. A six-month grace period follows, with a surcharge. Miss both and the registration is cancelled.
Every 10 years
Renewal, combined with the declaration of use. Same grace period, same consequence for missing it.
Section 15, optional
After five continuous years of use you can file for incontestability, which narrows the grounds on which anyone can later challenge your mark.
We track these dates for marks we file. See trademark renewals for what each filing involves.
International Filing Questions
Does my foreign trademark registration protect me in the United States?
No. Trademark rights are territorial. A registration in the EU, the UK, Canada, India, Australia, or anywhere else gives you no rights in the United States. Someone in the US can register your mark while your foreign registration sits there doing nothing about it. The only way to hold US rights is a US registration or genuine use of the mark in US commerce.
Do I need a US attorney to file?
Yes, if you are foreign-domiciled. Since August 2019, USPTO rule 37 CFR 2.11 requires every applicant, registrant, and party whose domicile is outside the United States to be represented by an attorney licensed to practice in the United States. That includes Canadian filers. It applies to a Madrid extension of protection the moment the USPTO issues any refusal. It is not optional, and the USPTO will not process your filing without it.
Do I have to be using the mark in the United States before I can register?
Not if you file under Section 44(e) or Section 66(a). Both let you reach registration on the strength of your foreign rights, without ever submitting a specimen of US use. You do have to sign a verified statement of bona fide intention to use the mark in US commerce. This is the single biggest advantage foreign owners have over domestic applicants, who must prove actual use before anything registers.
What is the six-month priority window?
Under Section 44(d), if you file your US application within six months of your first foreign application for the same mark and the same goods or services, the USPTO treats your US filing date as though it were the foreign filing date. That backdating can put you ahead of anyone who filed in the US during those six months. Miss the window and the priority claim is gone for good.
What is the difference between filing directly and going through the Madrid Protocol?
A Madrid designation of the United States is administered through WIPO and stays tied to your home registration for five years, so if the home mark falls the US extension falls with it. A direct Section 44 filing is a standalone US application from day one, independent of what happens at home, and it is examined without the extra layer of WIPO correspondence. Madrid is often cheaper when you are designating many countries at once. Direct filing is usually the better choice when the United States is the market that matters.
What does the $1,500 cover?
It covers a full clearance search, the correct US classification of your goods and services, preparation and filing of the application, monitoring, Office Action responses, and the USPTO filing fee for one class. If your mark covers more than one class, the fee is $1,500 per class. There is no separate charge for handling the foreign registration certificate, the translation requirement, or the priority claim.
Why does the USPTO object to my list of goods and services?
Most trademark offices accept broad class headings. The USPTO does not. It requires goods and services to be identified with a level of specificity that many foreign registrations never contemplated, and your US identification can never be broader than what your foreign registration covers. Reconciling a broad European or Asian specification against the US Trademark ID Manual is the most common reason these applications receive an Office Action, and it is work best done before filing rather than after.
My Madrid extension was refused by the USPTO. Can you help?
Yes. A provisional refusal on a Section 66(a) extension is handled the same way as any US Office Action, and you will need US counsel to respond. Send us the refusal and the international registration number and we will tell you what is being objected to, what the deadline is, and what it will cost to answer.
What happens after the mark registers?
You have to prove use eventually, even though you did not have to prove it to register. A Section 44(e) registration requires a Section 8 declaration of use between the fifth and sixth anniversary of registration, then a combined Section 8 and Section 9 renewal every ten years. A Section 66(a) extension follows the same schedule but uses a Section 71 declaration instead. Miss either one and the registration is cancelled.
Can you work with my trademark attorney at home?
Yes, and we often do. Foreign counsel stay on the file, we act as US attorney of record, and correspondence runs whichever way suits you. We are equally happy working directly with the brand owner.
How long does it take?
USPTO examination timelines move, so we will give you a current estimate rather than a number that ages badly. Expect several months to a first examination decision, longer if an Office Action issues. A priority claim under Section 44(d) does not speed up examination — it protects your place in line, which is a different and more valuable thing.
Protect the brand in the market you are entering.
Send us your foreign registration or application number. We will tell you which filing basis you qualify for, whether your priority window is still open, and what it costs.