Miriam Trudell wrote an article for the International Trademark Association’s INTA Bulletin, which explores the question who qualifies for Madrid Protocol filings. The article outlines the multiple factors that influence the decision whether to file a national or a Madrid Protocol application, including some unique requirements of U.S. trademark law.
Before November 2, 2003, applicants domiciled outside the United States had only one option for seeking registration of a trademark in the United States: a national trademark application filing with the U.S. Patent and Trademark Office (USPTO). As of that date, however, when the United States implemented the Madrid Protocol, applicants domiciled outside the United States gained an alternative filing option for seeking registration of a trademark in the United States. Most practitioners recognize that a Madrid Protocol filing is tied to the basic application or registration for five years. This is a significant difference from a national U.S. filing, which is not tied to any prior filing; this difference is usually considered when a trademark holder is choosing between a Madrid Protocol filing and a national filing.
To read the full article, click on this link to the INTA Bulletin.